Apple Sues Amazon.com, Seeks Order to Stop Use of 'App Store'
bloomberg.com
bloomberg.com
The mark granted to it is for "App Store". Under relevant trademark law, a mark cannot be registered if it consists solely of a generic or purely descriptive term. "Store" is generic. So too is the word "application" - which is commonly thought of as being what the word "app" refers to. Therefore, no trademark could ever be registered for the word "store" or for the word "application" and certainly not for "application store" (no trademark can be registered when all of its constituent elements are generic). A trademark identifies the origin of goods or services and no one vendor can claim that a whole generic category of goods or services can be set out as a domain for which it and it alone is the origin. The question is, does any of this change because Apple's claim is for the word "app" as opposed to "application."
Apple claims that "app" in this context is a word that refers uniquely to Apple in the public mind - that is, when a typical consumer hears of an "app," that person immediately associates that word with "Apple app" and not with the generic term "application." In legal parlance, then, Apple is arguing that the word "app" here has an "arbitrary" meaning and is therefore registrable to Apple alone. If Apple prevails on this claim, it will be able to sue anyone in the future who tries to sell "apps" through any form of "app store."
Of course, many other vendors are using the "app" designation for selling online applications and there is thus vigorous opposition to Apple's application. Indeed, once the trademark examiner granted the application, Amazon immediately filed a proceeding contesting it. To date, then, Apple does not have any definitive determination in its favor on this issue. By continuing to push the trademark application, and by filing this lawsuit, Apple hopes to pave the way to have exclusive use going forward of "App Store" as against all competitors.
I think Apple is overstepping it on this one. If it should be granted what it seeks, how will other vendors be able to refer even generically to what they are offering? Trademark law is intended to protect a company's distinct offerings and to prevent others from pawning off a vendor's good will by passing their goods or services off as that of their real owner. I doubt that anyboday will believe that what Amazon or Google or any of a number of other vendors offer is an attempt to trade on Apple's goodwill. On the other hand, trademark law is not intended to give anybody any form of exclusivity in describing generic categories of goods or services. That appears to be precisely what Apple is here attempting to do.
Apple has one more obstacle to overcome as well. A term that is at some point a distinctive identifier of a vendor's goods or services can become generic over time (consider "yo-yo,"aspirin," "escalator," and many others that have suffered this fate). If "app" was at one time distinctive to Apple a few years back, I seriously doubt that the public today thinks of it as anything other than a generic indicator of what you can download from a wide variety of sources.
Other well-known secondary-meaning marks: "Holiday Inn," Subway's "Footlong" sandwich, many others.
http://en.wikipedia.org/wiki/IOS_version_history#2.x:_Second...
such that the public comes to identify the relevant term with one vendor and not as a primarily descriptive term, then that item is said to acquire "secondary meaning.
It is not clear that the public identifies "app" as something from Apple only.
Note that they can't/don't sue products like wxWindows, even though it refers to windows on computer screens, because it refers to the generic usage and not in terms of a OS. Thus they sued Lindows (and lost?) because it was an OS and with a similarly sounding name and settled.
No doubt there was both a carrot and a stick, but who knows whether the stick would have held up in court. Trademark law could also well be different in the UK.
>So then, possibly an "app store" doesn't just mean a store on Main St, that happens to have applications on its shelves, but a novel concept worthy of a trademark?
Well, store doesn't really mean only physical stores right? There are a bunch of online shops calling themselves stores from the 90s.
http://www.pcworld.com/article/222464/amazons_android_app_st...
Isn't the case of "aspirin" a bit different, though? It's still a valid trademark in Canada and the UK. My understanding is at the US government vacated the "aspirin" trademark in 1918 or so because Bayer is a German company.
What about www.containerstore.com? Is there a principle in law that would permit The Container Store to defend their trademark while preventing Apple from doing the same with their App Store?
Not necessarily disagreeing with your take on the issue, just pointing out that this issue is grayer than you're making it sound.
Yes, it is, but as far as I can read from the Bloomberg article, the question at hand is about the combination of "App" with "Store" (if 'App' were the claim, they would have to go after Google, too). I haven't read Apple's claim, but I am fairly sure that Apple will argue that "App Store" is not solely a purely descriptive term. Also, there are many trademarks on more generic terms. For example, "Jaguar" is a trademark of Linotype (http://www.linotype.com/3228/jaguar.html)
If it should be granted what it seeks, how will other vendors be able to refer even generically to what they are offering?
"a place where you can buy software", or even "a place to buy apps" (if, as I assume, they are granting that 'apps' has become or always has been generic)
Counter-argument: if someone invents a new category of item and spends money to establish a name for it, why should everybody be allowed to go along with the ride? Should an inventor immediately come up with two terms, even before knowing that others want to copy them? [Two not-so-good-examples of this I can think of are Royal Mail and KLM. Both have almost generic names (KLM = Royal Air Line Company), British stamps do not even have a country designation on them.]
I do think Apple may be too late to claim the term is specific for their store, but I think it will be a close call.
Apple = Trademark Troll
Microsoft = Patent Troll
AT&T = Monopoly
If Amazon fights this they could win and it could be good news for everyone, except Apple.
p.s. Yes I know Amazon is a patent troll as well.
These names are so common and apple fighting over is lame.
Their agreement was pretty mild-- cisco wanted apple to support its VPN technology on the iPhones which they did.
Apple generally, if it finds someone else owns a name it wants that doesn't already infringe on one of Apple's names, buys the name from them.
It doesn't just copy the name and wait to be sued, as Amazon did here.
It reminds me of the Crayon story. Seems simple: wax drawing tool. But wooo! Crayola had to give up the name.
Personally, it's a tough call. They are all Crayons, they are all App Stores. Not sure what the solution is.
So what name did they have to give up?
http://en.wikipedia.org/wiki/Crayon
Better examples from Wikipedia are:
Aspirin, originally a trademark of Bayer AG
Butterscotch, originally a trademark of Parkinson's
Escalator, originally a trademark of Otis Elevator Company[4][5][6]
Heroin, originally a trademark of Bayer AG
Kerosene, originally a trademark of Abraham Gesner
Phillips-head screw, named after Henry F. Phillips
Pogo for the toy Pogo stick[6][7]
Sellotape, a brandname of The Sellotape Company
Thermos, originally a trademark of Thermos GmbH
Tipp-Ex, originally a trademark of German manufacturers Tipp-Ex GmbH & Co. KG
Yo-yo, originally a trademark of Duncan Yo-Yo Company
Zipper, originally a trademark of B.F. Goodrich[6][8]
Certainly an interesting way to negate the fees...
For Amazon's part, they're attracted to the phrase "app store" because:
a. due to Apple's efforts, the phrase has gained an amount of familiarity and also b. it's simply a good name.
If only Apple products have this "app store" thing, they have another unique offering. But if you can access an "app store" from any device, there's less incentive for the consumer to specifically buy an iPad (over a Kindle, for example).
For Apple's part, they know right well that they're pushing it by contesting their exclusive right to the generic phrase "app store". But for the reasons outlined above, it's very much in their interests to prevent others from using it and they have relatively little to lose by going to court to attempt to do so.
+1 glad to see someone's paying attention :)
The term 'App Store' is being used by a lot of vendors operating in the cloud/mobile space. It's familiar and when you use it people have an idea of what the offering is.
If Apple can keep the association of 'App Store' an Apple exclusive that gives their brand more value. That's why they're going after a big company instead of a small one. If they can win this against Amazon they almost automatically crush all other uses of the mark by smaller companies.
If they lose they only lose a few million. That's not going to make a dent in their budget. Small risk / big payoff.