Judge Denies Apple Request To Stop Amazon From Using "App Store"
mashable.com
mashable.com
To get a preliminary injunction, Apple needed to convince the judge that it is likely to win at trial and also that it will be irreparably harmed if Amazon is not blocked from using the mark during the time leading up to trial. The judge said no to the preliminary injunction, not on grounds of lack of irreparable harm (that issue was never reached) but on the ground that Apple was not likely to win on the merits of its claims at trial.
Marks are classified as generic, descriptive, suggestive, arbitrary, or fanciful. Any mark that is suggestive, arbitrary, or fanciful is protectable. A generic mark is never protectable and a descriptive mark normally is not either - but the latter can become protectable if it acquires distinctiveness in the public mind through what is called "secondary meaning" (which generally means that a company has advertised a product or service to such a degree that the public comes to associate the mark with the producer of the goods or services as opposed to seeing the mark as descriptive, e.g., "Holiday Inn").
Apple claimed that the "app store" mark is suggestive because its meaning is "not inherently obvious" and because Apple was required to devote a lot of resources to educate consumers about the service.
Amazon claimed the mark is generic in merely describing a store where software apps are sold.
On this key issue, the court ruled as follows in assessing whether Apple was likely to succeed with its claim: "The court assumes without deciding that the 'App Store' mark is protectable as a descriptive mark that has arguably acquired secondary meaning. The court does not agree with Amazon that the mark is purely generic . . . but also does not find that Apple has shown that the mark is suggestive, as there appears to be no need for a leap of imagination to understand what the term means."
So far so good for Apple (with its major advertising, it may well be able to prove secondary meaning at trial).
But Apple got sunk by the second factor it will need to show if it is to win at trial and that is the "likelihood of confusion" factor. On this point, the court weighed eight factors as required by governing precedent but, in effect, really boiled it down to the fact that consumers buying apps for Android devices will not really believe that they are buying them from Apple or from an Apple-authorized source when they see the term "app store" at Amazon's site.
The court also rejected Apple's dilution claim as a basis for granting preliminary relief, basically finding that "App Store" did not constitute a "famous mark" on the evidence shown by Apple to date (it is here that the generic references to "app store" by Mr. Jobs and others come back to bite Apple).
All this suggests that Apple will have an uphill fight at trial on this one (as it should, in my view).
The 18-page decision is well-reasoned and may be found here: http://www.scribd.com/doc/59494852/Apple-v-Amazon-Order-Deny.... Also, my prior comments on the case: http://news.ycombinator.com/item?id=2351910.
It is such a joy reading good, clear, expressive English in a public discussion thread on the internet! Thank you, George Grellas!
EDIT: I suppose judges also are all certainly qualified to tell whether some situation is confusing, but understanding patents often requires expert knowledge and judgement that is hard to acquire.
I do not believe the purpose of trademark law is to protect consumers from confusion.
I didn't care for the term, because I'm old-fashioned enough to dislike contractions such as 'app'. But at the same time, I thought it was a fantastic bit of brand management, because the shortened word reflected not only the parent brand (App[le]), but the miniaturized computer that the iPhone actually was, and also managed users' expectations about what an individual app would do - rather less than something as grand sounding as an 'application', but still handy. If Microsoft had been first to market with such a device, I feel sure they'd have called the apps 'programmettes' or something equally unwieldy :) The 'store' part was also shrewd branding - it made it clear from the outset that apps had a value and that users were expected to invest in extending the device's features. This was a bold move on Apple's part, but one that paid off in spades. If anything, it reinforced the idea in my mind that 'app store' was an Apple thing. I am astonished to find that they did not have a trademark registration in place, or at least an active claim. 'App' was not a new word, as such - the phrase 'killer app' had been around since the 80s - but outside of the software industry, few referred to programs as 'apps' on a regular basis. See http://correlate.googlelabs.com/search?e=app&t=weekly, http://correlate.googlelabs.com/search?e=app+store&t=wee..., and http://www.google.com/insights/search/#q=app%20%2Ciphone%2Cp... - hardly conclusive, but strongly suggestive.
The problem stemmed from Steve Jobs' habit of talking about the Apple 'lifestyle' as if Apple products were ubiquitous and were the only technology platform people used - true enough for many of the firm's devoted fans. This reflected in the deliberately generic naming patterns for Apple offerings - iTunes, iPhone, iMovie and so on. But Jobs got into talking about apps and the app store as generic items, because he was preaching to the converted; if he had kept emphasizing 'the app store' then maybe it would have reinforced the term as 'the specific software distribution service offered by Apple, Inc.'. It's a fine line to walk, of course; ubiquity and inevitability are usually good connotations for a brand to have, but so are freedom and exclusivity. In Apple's case, they were running up against the limits of their famous 1984 Think Different ad, and trying to balance the actuality of vendor lock-in with the feeling of openness and user-centricity. If they had sought a trademark for 'appstore' or variations thereon at the same time they launched the iPhone, it would probably have attracted little notice, but it seems as if they took a gamble on the strength of their secondary meaning, and lost.
[Edit: Apple has applied for trademarks on 'appstore' in many countries but no registrations have been granted. Foolishly, I referred back to my comment in the other paragraph instead of to the judgement, and confused myself in the process.]
Lovely work by Amazon's lawyers, at least to my amateur eyes - the blend of reason, case law and statute makes Apple's overreach look all the more strained, and the longer the Amazon appstore stays up and the sky in Cupertino fails to fall, the weaker Apple's arguments look. At least, weaker by comparison - they still made a good case. If nothing else, I'm grateful for discovering the existence of Interstellar Starship Services Ltd. v. Epix, Inc.
So? Of those who did, nobody did it in a branded way. It's a generic term - an obvious shortening of an existing word and one many people had come up with.
Why do we care how much time, effort, or money was spent to brand a generic term? That's not useful to the people. Trademarks should be used (and thus given) to help differentiate companies. Letting a generic word be turned into a trademark should, if at all possible, be very hard.
If you want a trademark make up a word, like Google, or use a fanciful word for the context, like Apple.
Isn't it? If you told someone you got food poisoning from the All Bran at the free breakfast at Holiday Inn while representing Network Solutions at a conference on Windows development, are you really asserting that people wouldn't be able to recognize the brands involved despite the generically descriptive trademarks?
Mightn't I get confused by all those stupid companies who term-squat on otherwise useful parts of our language?
Trademark law pays off well when we allow for names like 'Google'; it's new (not stepping on existing terms or usage) and thus also unique. But names like Network Solutions are actively harmful. They do cause some confusion. In fact, a low-level imperceptible bias is what they're counting on.
Trademark law would lose 92.4% of its complexity (and burden to society) if we simply stopped allowing generic terms or combinations of generic terms.
It seems to me that they really thought they were following the necessary steps to build a distinct brand. I can understand why this would seem very important to them, because titles can be strangely personal things, notwithstanding the existence of the naming/branding businesses and so on. I used to work in the film business, and surprisingly enough, you can't (in general) get copyright or trademark protection for movie titles. This is a problem for any writer or producer without the backing of a studio, so in the trade you'll often see references to 'untitled Paul Producer project' - Paul Producer probably has a great title, but doesn't have the resources to stop someone else with more money from from pinching it and launching a marketing campaign year ahead of release. You'd be surprised how often this happens.
If you're interested, here's a good article on that issue, though not without a few minor errors: http://troygould.com/layouts/50/graphics/handel_la_lawyer.pd...
Can we cite examples to the court and have them toss the case out?
Is there anything to classifying marks with regard to location? Does that fall into one of the classifications you mentioned above?
Here is some more trademark info, too:
http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm
For example, "Google" as a verb:
http://googleblog.blogspot.com/2006/10/do-you-google.html
I assumed that "Google" as a verb is a good thing for Google. It would imply that they've managed to get a huge mindshare. Google's lawyers disagree.
Kleenex is the staple case.
Or, of course, Spam (but Hormel has been enlightened on the topic so it hasn't been a legal issue AFAIK).
http://www.collegehumor.com/video/5072264/googling-with-bing
Honestly, though, I think this is a good first step. I enjoy some Apple products, but I'll be more than happy to see them lose this. If they can trademark "app store", then what's next? They trademarks the term "app(s)", as well?
They trademarked a very specific icon which happens to contain the digits 2, 8, and 0 in that order. (If you have an iOS device, it is your "Maps" icon.)
They did not trademark "280".
EDIT: Grammar, and to add that what I've written is only the tip of the iceberg as to how these concepts differ in law.
> Where can I use my Back to School Card or code?
> You can take advantage of this unique offer to purchase apps from the Mac App Store and the App Store[...]
Are we really happy with not having alternatives to the walmarts of this world? I would wager that most consumers appreciate alternatives.
This is a good thing.
Consumers should not be in the habit of trusting a single self-interested commercial vendor to look out for their best interests.
Instead, people should get accustomed to being skeptical of vendor claims and cautious about what they install in their computers.
And yes, there are examples of this today already, but that doesn't make it a good idea.
See: http://en.wikipedia.org/wiki/Computer#History_of_computing
seriously, what a comment!