Microsoft Wants Everyone to Use “App Store”

Microsoft Corporation would like for everyone, including its competitors, to use “App Store” for the retail of electronic device applications (commonly known as “apps”).  We are not talking about Microsoft’s own app store, but the name in general.  Apple Inc., on the other hand, believes it is entitled to exclusive use of the name “App Store” as a trademark; and so the battle is on.

Apple, the maker of the immensely popular iPhone, iPod Touch, iPad and other products, has filed an application to register the trademark “App Store” for, as you might imagine, retail stores wherein consumers can obtain applications for their mobile devices.  Of course, anyone with an iPhone, including myself, is very familiar with that that blue and white icon, dubbed “App Store,” which gives us access to useful applications such as mobile banking and the LA Times, and the not-so-useful, but entertaining applications such as Facebook, Angry Birds, Doodle Jump, and Shazam.

Apple first launched its “App Store” on July 10, 2008, and, just one week later, filed an application seeking to register “App Store” as a trademark.  When the application went to publication, Microsoft filed what is known as a Notice of Opposition, seeking to prevent Apple’s registration of the “App Store” trademark.  However, Microsoft isn’t claiming that it was using “App Store” as a trademark before Apple.  So, what is the issue?

Microsoft is claiming that the phrase “App Store” is too generic to be a trademark.  In order to be registered, a mark must indicate the source of goods or services.  When a mark is generic and does not indicate a source, then it is not entitled to registration.  One way a mark can be deemed generic is when people come to use a phrase to describe a general category of goods or services, such as “computers,” “potato chips,” or “clothes.”

Microsoft’s argument is that “App Store” is generic because so many people in the electronics industry use the term “app” to refer to software applications and that the word “store” is a generic term for retail store services.  Thus, Microsoft contends that Apple cannot prevent others from combining the generic terms “app” and “store” to refer to a retail location for software applications.

Interestingly, the same mark could be deemed generic on some products but not on others.  Apple’s own trademark APPLE is illustrative of this point.  APPLE, as used on computers and related products, is a longstanding and probably famous trademark that indicates Apple Inc. as the source of the goods and services.  However, should someone seek to register the trademark APPLE for apples (the fruit), the application would be denied as generic.  The policy behind all of this is that the United States Patent and Trademark Office does not want companies to have a monopoly on generic terms and descriptions for goods and services that would stifle competition.  Assuming someone did have a registration and, therefore, the exclusive right to use the trademark APPLE to sell apples, how would all of the other apple sellers advertise their product?

So, is “App Store” merely a generic term for retail location for software applications or should Apple be entitled to registration and exclusive use of the phrase?  The case is still pending before the Trademark Trial and Appeal Board.  However, Microsoft has thrown down the gauntlet in the case, filing a Motion for Summary Judgment in which it argues there is no question of fact and that the Board should rule on the matter without having to look at evidence from the parties.  Microsoft, essentially, is arguing that “App Store” is so obviously generic that the Board should just end the case now and deny Apple’s application.

In its Motion for Summary Judgment, Microsoft points to many sources to show just how generic the term “App Store” is.  However, there is one source in particular that stands out.  Microsoft quotes Apple’s own CEO, Steve Jobs who, in a recent interview stated:

In addition too Google’s own app marketplace, Amazon, Verizon and Vodafone have all announced that they are creating their own app stores for Android.  There will be at least four app stores on Android which customers must search through to find the app they want and developers will need to work to distribute their apps and get paid.

As you might expect, evidence that plaintiff uses a term in a generic manner is strong evidence that the term is generic.  So, did Steve Jobs unintentionally sabotage his own company’s efforts to register “App Store” as a trademark?  Only time will tell.  Apple’s response to the Microsoft’s Motion for Summary Judgment is due in mid-February and the Board could take sometime thereafter to rule.  Check back here for updates.

Nicholas D. Myers, Esq.