Apple is here making an ultra-aggressive attempt at a land grab in the world of application software.
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.
"Windows" is a trademark (http://www.microsoft.com/about/legal/en/us/IntellectualPrope...), so how do you explain that? If windows is not a generic word, it must be because it's applied in a specific context (a window manager). 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?
Your question is a very good one. A term that is primarily descriptive cannot be registered as a trademark on the primary register with the USPTO. However, if a vendor spends a lot in advertising over a substantial time 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." Once a primarily descriptive term acquires secondary meaning of this type, it can be registered on the primary register. Context matters here as well because marks are registered in revelant "classes" of goods or services. Thus, for Microsoft, "Windows" eventually acquired secondary meaning in the world of computer software (but not as applied to window installation in the building industry). Others can freely use "windows" in most any category of goods or services they want in the building trades but, given that the term "Windows" is now exclusively associated with a product from Microsoft in that class, not in the class of computer goods to which "Windows" belongs.
Other well-known secondary-meaning marks: "Holiday Inn," Subway's "Footlong" sandwich, many others.
Would the fact that "app" has been used as a shortened form of "application" in "web app"/"web application" have any bearing on it's ability be trademarked? Is it specifically for the combination "app store"? It would seem to me that its primary meaning is what they're trying to trademark, because it's bluntly self-descriptive.
How did Facebook manage to acquire secondary meaning for the the name, when the term "face book" existed as a descriptive term for the exact same thing that sucker-borg created a variation of?
If Facebook sues people making face books, then you'll have a point. It's about co-opting naturally occurring words and then preventing people from using them to describe things naturally.
Apple has been very inconsistent on their use of it though. Originally you just searched for apps in iTunes Store. Then I believe it changed to iTunes App Store. And now they have a Mac App Store. the other point is that apple refers to them as 'apps' in a generic sense and not something like 'App Store applications'
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.
I've definitely had a few encounters where it seems there's a good chance the average, non-technical user, considers 'app' to refer explicitly to iOS applications. I remember somebody wanting to work on a project asking if I had written any 'apps', I assumed he meant applications and I listed off some of the more interesting projects on various platforms. He seemed utterly confused that I was talking about things that were not running on an iphone.
It's a biased selection but, Google's Page Rank certainly says that the public tends to "link" the term 'App Store' to 'Apple' in a pretty consistant manner
On the other hand, half of the "related searches" on that page are "nokia app store", "android app store", "samsung app store", etc., which are not the official names of any of those brands. Its possible that the public uses more formal names when linking but less formal names when searching.
The "there's an App for that" campaign by Apple has definitely helped cement that as a possibility. I'm pretty sure when folks use / mimic / parody that phrase, they're always referring to Apple's use, not some generic "app".
As long as they've not been SO successful, that consumers now consider "App Store" to be "The thing you get stuff for your phone from" where phone could be WinMo or Android or Symbian.
I don't know if that should matter. If Facebook spends billions promoting it's brand and then sues people making books with faces who called it, lets say Staunch's face book, I don't see how they deserve to win.
> Thus, for Microsoft, "Windows" eventually acquired secondary meaning in the world of computer software (but not as applied to window installation in the building industry). Others can freely use "windows" in most any category of goods or services they want in the building trades but, given that the term "Windows" is now exclusively associated with a product from Microsoft in that class, not in the class of computer goods to which "Windows" belongs.
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.
Windows is a branding of an OS based on one specific element. It isn't like Microsoft sues Apple for any references to a window in Mac documentation. App Store is a branding of an application store. The operating system equal would being someone trying to trademark Operating Sys or something of the like, not trying to brand a generic word.
You probably couldn't trademark the name of a company that made glass windows as "Windows". Nor could you name a product that was a glass window as "Windows". That's the difference.
First of all "Windows" itself doesn't mean an OS. You can argue that OSes have generic GUI windows, but Microsoft is not suing to prevent Gnome from calling itself a window manager with application windows. "Windows" is a trademark for an operating system.
>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.
One problem Apple has is that Jobs has used the term "app store" to refer to non-Apple app stores. The point being that its such a generic term that even Apple uses it generically.
"In addition to Google's own app marketplace, Amazon, Verizon, and Vodafone have all announced that they are creating their own app stores for Android -- so there will be at least four app stores on Android, which customers must search among to find the app they want,"
Isn't this akin to saying "EA is creating its own Call Of Duty"? Jobs wasn't using the term in a generic fashion ("app stores"), rather using it as a comparative ("equivalents to the App Store").
And when he said "find the app they want" he meant "find the generic, non-Apple equivalent of an iOS app whatever that might be called on their platform"?
Apple has a loooong history of not respecting other trademarks and "name and likeness" (eg: Beatles, Carl Sagan/BHA, Cisco's iPhone) that it's pretty rich that they're trying to stuff the "Kleenex™ back in the box" (so to speak) with the term "app store".
a mark cannot be registered if it consists solely of a generic or purely descriptive term. "Store" is generic.
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.
Judging from the word usage of my not-so-techie friends, an "app" is a "program on a smartphone". A "program on the desktop/laptop" is just a "program", not an "app". When someone says "i have an app, which does X", she surely is talking about her mobile.
Not to argue too deeply with you on this one—I think that the term wasn't in general use until Apple called it's store that; I certainly don't remember calling Handango or PalmGear "app stores".
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.
Grellas, I want to thank you for yet another insightful post. I always look forward to your posts because they explain legal terms in language a non-lawyer can understand. Please keep up the great work.
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).
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.
Maybe they were thinking they could buy the name from cisco, which is what happened pretty soon after. Have you considered the possibility that Apple had talked to cisco quite a bit prior to announcing the iPhone, and knew they were going to be able to acquire the name, and the subsequent "noise" cisco made about suing apple was a negotiating tactic?
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.
Wikipedia claims the word Crayon goes back to the 1600s, and has photos of boxes with the word "crayon" from 20 years before the company that became "Crayola" existed.
AMZN's P/E of 65 is historically massive, especially when others like Apple are at 19. You flip 65 upside down to get .0154, or 1.54% if you want to compare it to a bond. Steep price to pay, market must expect them to quadruple or so profit in the near future.
Common words or not, nobody was using the term 'App Store' before Apple made it popular (after popularizing smartphone apps). Suddenly everyone wants to have their own App Stores (after making their own iPhone clones). Please, let Apple have its App Store and come up with something original. Cannot be so hard.
Both Apple and Amazon are run by two of the smartest businessmen in the world.
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.
> a. due to Apple's efforts, the phrase has gained an amount of familiarity and also b. it's simply a good name.
+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.
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.