This ruling involved Apple's attempt to block Amazon's use of the term "app store" pending trial in this case. Apple claims infringement and dilution of its mark. To win on infringement, it must ultimately show that it has a legally protectable mark and that Amazon's use of the term "app store" to describe where it sells apps for use on Android devices will likely confuse consumers about the origin of the goods being sold. To win on dilution, it must show that the mark is protectable, that it is "famous," and that Amazon's use of it dilutes its value.
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).
Thank you for that lucid summary. I've always been struck by the extent that I tend to find find the issues involved in trademark disputes to be very reasonable, even if I would occasionally wish that the results would turn a different way. Perhaps its the extent to which the law behind trademarks is directly based on its purpose (protecting consumers from confusion), whereas with patents and copyrights the link between the laws involved and the social good they ostensibly promote is much less direct.
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 feel a little sorry for Apple on this (and I don't care much for the company in general). When they introduced the term 'app store' it came across as very much part of their branding - much as iNoun and iVerb do.
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.
What comes to mind for me are the commercials emphasizing the number of 'apps' as a differentiation over the competition rather than simply saying, "Only we have a phone with apps."
> but outside of the software industry, few referred to programs as 'apps' on a regular basis.
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.
I share most of your feelings about trademarking policy, and find the linguistic land grab aspect of it disturbing. However, my feeling (very slightly) sorry for Apple is because of their ill-fortune with the trademark system that we have now, as opposed to the idealized trademark system of my dreams that would have clear and unambiguous standards on what could or could not be trademarked.
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.
> Why do we care how much time, effort, or money was spent to brand a generic term? That's not useful to the people.
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?
It'd be wonderful if those weren't trademarks. What if someone asks my to get them an all-bran cereal, then bring it to their holiday inn, the Hilton Beachside, for breakfast before a conference discussing network solutions, where we pitch CRM technology to window developers who make transparent building panels?
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.
I think its good for users to associate "App Store" with a generic place to find and download applications on any platform; like the terms "program" and "browser" it helps to have standard ways of communicating basic concepts of computer/device use. Its a benefit to _everyone_ (Apple, Android, Microsoft...) that users can more easily interact with their systems sans training.
Trademarks and branding are strange things. One would assume that giving a term wide-spread use would be beneficial to everyone, but it seems that it's bad for companies. I still don't quite get it myself...
Because you can lose legal muscle behind your name if it becomes such common use that users might use the word without knowingly referencing your company's brand.
It would be an interesting case if Google ends up becoming a legally generic term for search engine. Would the company end up changing it's name? Would there be Microsoft Google (formerly Bing) and Google Google?
Finally! An American judge with some common sense!
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?
It is important to note that copyright law and trademark law, while both considered "intellectual property", differ quite a bit. Copyright was originally enacted to "promote the progress", while trademark law is intended to protect consumers (to be brief). Further, trademarks are enforced as long as the owner of the mark continues to defend it, while copyrights last _only_ 70 years after the death of the author.
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.
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.)
A bit of history: when AMD and Cyrix started gaining market share selling their x86 chips, Intel went to court to try to trademark "486" and failed, so the 586 became Pentium.
If the drug company that made the morning after birth control drug had not been able tom trademark RU-486, I wonder ifbtheymwould have called it Preventium?
There's a similar story that the Porsche 911 was originally going to be called 901, but that Peugeot had claimed all 3-digit numbers with a zero in the middle and forced Porsche to rename their model.
>Before I switched to OS X, I've never heard of any software being called "apps" on any other platform I used
Maybe you didn't use the TI-83+, which has an "Apps" button on it, and was designed in 1999.
And though I agree that Apple has put a lot of effort into its app store, I feel like saying that they should have sole access to the term is comparable to AOL suing anyone who uses "instant messenger" to refer to something other than AIM.
There's a lot more to an operating system than how it manages non-fullscreen applications. "Windows" is obviously a related term, but I don't think it's generic--when I boot up Linux on my laptop, I don't say, "This Linux/Xorg/Openbox combination sure is a great windows!" But I might say, "This collection of software for my smartphone compiled and sold by Amazon sure is a great app store."
Edit: See also: MS Office, MS Word, MS Security Essentials, and arguably MS Internet Explorer and Windows Explorer (I browse the internet and manage/browse files--there's not much literal "exploring" going on)
> I don't think it's generic--when I boot up Linux on my laptop, I don't say, "This Linux/Xorg/Openbox combination sure is a great windows!"
You never 'open a window', or 'close a window', or 'change a window'? You might be younger than me (I'm 30) but I've been doing that since having an Atari ST in the last 80s.
As far as I know, MSFT doesn't have a trademark on the term "window" as used to describe objects in a GUI. They have a trademark on the term "Windows" as a whole system.
Same reason you can buy "linux" laundry detergent.
I'm going to flat disagree that windowing systems and window UI elements are separate fields of endeavor, in the same way that laundry detergent and computer Operating Systems are. I think most lawyers would too.
Google Books also has a lot of uses in the early 1990s of the phrases "Windows apps", "Mac apps", "DOS apps", and "Unix apps". They appear to be used in a way that's pretty similar to how the terms "iPhone apps" or "Android apps" are used today.
Steve Jobs has been trying to popularize the word 'app' for several decades. At the very least since the 1989 launch of NeXTSTEP, an OS that used the word all over. For instance, watch this 1992 demo of NeXTSTEP 3.0: http://hivelogic.com/articles/classic-steve-jobs/
Because of its NeXTSTEP heritage, Mac OS X uses a lot of NeXTSTEP lingo, like 'app', 'dock' and 'plist'.
Who did anything first doesn't really matter. Ask Hoover. Or the original maker of the Yo-yo.
The point is that 'apps' have entered into common usage to refer to applications on all mobile platforms. 'App' is a generic term, that isn't attached to a brand. So, if you agree that 'Store' is also generic, then 'App Store' can't really be anything but.
All of the words in the English language are gone for naming purposes. If you want to alter the laws to prevent protection of novel phrases then you doom us all to a future of Xobni, Loopt, Wufoo, Weebly, Buxfer, Zenter, Zecter, Fuzzwich, Fliggo, Voxli, Nambii, Olark, Mertado, Movity, and other companies drawn as Scrabble™ hands. (Ok, you can't draw Fuzzwich.) Names that don't function as names because you can't say them to someone and have that person later use them to identify the entity because they can't spell it, don't know what it means, and will forget it before they need it.
Yeah, I realised after I posted that a combination of two generic words can be a unique name. My bad. But any combination of two generic words doesn't automatically make it a unique name, which I guess is why this got to court.
Shack isn't a usual term for store, so it's less generic.
Allowing generic words to be trademarked too easily causes problems. International Business Machines seems like a fine name right up until there are many multi-nationals making business machines. At that point IBM starts to sounds more like a descriptive (It's an IBM, it's got English and German on the keys...)
Selectric on the other hand, seems like a name the public benefits by protecting.
App is now a generic name, and thus it cannot be trademarked and existing trademarks are invalid. That's just how trademarks work. It doesn't matter that it didn't use to be a generic name (and I recall hearing app used generically for a long time, so I don't think it was ever Apple specific).
I dislike apple, and am happy on this ruling, but still think the amazon app store, though good in theory for price competition, hurts the "one place to find all" mentality for consumers.
I know what you mean its just not really the same thing here.. if every store had their own 'app store' then whats the point of an app store anyway? Again as someone who has lived through a world before app stores, as long as the app store is fair its really the way to go.
I have yet to see a "the app store" that is fair, and I have a rather hard time imagining one even existing in the real world. As long as they have exclusion policies, I want as many different "app stores" competing with each other as possible.
As long as the app stores aren't walled gardens it doesn't matter if there are a bunch - likely they'll all have 95% of the apps. It's only a problem when every second app is exclusive to a specific store.
"app store" should be a generic phrase. We all know that Apple's App Store is THE app store, so it should be referred to as "the app store" not just an 'app store' (which there could be many of).
I think this ambiguity of terms is bad for consumers. My mom might buy Apps through the Amazon "App Store" and expect it to run on her iPhone. I think Amazon is coat-tailing on Apple's branding in a deliberate attempt to create a false sense of equivalency.
Apple chose a name with that ambiguity when they gave it the generic-sounding 'App Store' instead of a more brandable alternative. (Quick test on the name: What is the App Store? It's a store for apps.) The quote of Steve Jobs himself using "app stores" in a generic manner really highlighted this point and effective killed Apple's chance of success in this case.
This is not a good argument. To me, protecting a name like "App Store" would be as silly as protecting the word "Computer" before commonplace in society. Can you imagine the ads for such a company? "Don't be fooled by those other microcomputer systems! We're the real Computer^tm^!"
And yes, there are examples of this today already, but that doesn't make it a good idea.
Computer was a generic term even before computer devices. "Computer" was used to refer to people that performed computations. If you paid someone to perform busy-work computations all day, then they were a 'computer.'
Have you tried trying to get something from there? You'll need to have the Amazon App Store App on your phone. It's pretty much impossible to accidentally buy Android apps from that store without an Android phone.
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.