Tuesday, May 24, 2011

Has “App Store” Become a Generic Name?

On March 22nd, Amazon.com launched Appstore for Android, where it offers for sale and download games and other applications available for Android smart phones. Apple Inc., the maker of iPhones, iPod media players and iPad tablet computers, sued Amazon.com Inc. over the use of the term “Appstore” claiming the exclusive right to the term. It is true, the term “App Store” has been in process of registration with the USPTO since 2008; Apple filed the original trademark application in 2008 in three separate classes: class 35 (retail online store), class 38 (transmission of data via Internet, etc.) and class 42 (a whole host of services relating to computer software). However, Amazon.com claims it is not required to obtain a license from Apple to use the term because the term “App Store” has become generic and Apple is not entitled to its exclusive use.

The general rule in trademark law is that a word cannot be trademarked if it serves as a generic term for the products or services offered by that company. A trademark must be unique. If it loses its distinctiveness, it can no longer be identified with the source of the goods or services being provided, which defeats the whole purpose of having a trademark. Over the years of popular use, many labels have become generic. Examples include words like aspirin, cellophane, cola, dry ice, lite beer, matchbox toys, monopoly game, superglue, thermos, and yo-yo. Is “App Sore” about to join the pack? Is the name also merely descriptive? For example, an “app store” can mean a store that is offering applications for smart phones. Do the first three letters “App” stand for the first letters of the word Apple, pointing to the company that invented the concept? Does the term “App Store” refer to a store that offers software applications or to a store that only offers app[le] applications (ie, apps for iPhone, iPod and iPad)?

Review of “App Store”” trademark application file, available at www.uspto.gov, shows that the examining attorney originally refused the application because each word was descriptive and because the mark App Store merely “combined descriptive terms without creating a new non-descriptive meaning”. Apple overcame this refusal by showing acquired distinctiveness. Currently, however, the mark is in publication, and is being opposed by Microsoft.

I look forward to following the progression of the lawsuit and the registration process of “App Store” mark with the US PTO. Stay tuned to find out.

The case is Apple Inc. v. Amazon.com Inc., 11-1327, U.S. District Court, Northern District of California (Oakland).

No comments:

Post a Comment