
Judge Denies Apple Request To Stop Amazon From Using "App Store" - tathagatadg
http://mashable.com/2011/07/07/apple-amazon-lawsuit/
======
grellas
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).

The 18-page decision is well-reasoned and may be found here:
[http://www.scribd.com/doc/59494852/Apple-v-Amazon-Order-
Deny...](http://www.scribd.com/doc/59494852/Apple-v-Amazon-Order-Denying-
Motion-for-Preliminary-Injunction). Also, my prior comments on the case:
<http://news.ycombinator.com/item?id=2351910>.

~~~
anigbrowl
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&t=weekly),
[http://correlate.googlelabs.com/search?e=app+store&t=wee...](http://correlate.googlelabs.com/search?e=app+store&t=weekly&filter=app+store),
and
[http://www.google.com/insights/search/#q=app%20%2Ciphone%2Cp...](http://www.google.com/insights/search/#q=app%20%2Ciphone%2Cprogram&cmpt=q)
\- 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._

~~~
wnight
> 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.

~~~
msbarnett
> 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?

~~~
wnight
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.

------
dreamux
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.

~~~
rcfox
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...

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.

~~~
danneu
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.

Kleenex is the staple case.

~~~
eropple
Q-Tips are another one, IIRC.

Or, of course, Spam (but Hormel has been enlightened on the topic so it hasn't
been a legal issue AFAIK).

~~~
dmbass
Another classic one is Band-Aid.

~~~
chopsueyar
thermos.

~~~
deepakshenoy
kerosene.

~~~
joshwa
xerox. (fedex?)

------
skawaii
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?

~~~
TobbenTM
They trademarked "280".

~~~
jws
This is not true.

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".

~~~
rubinelli
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.

~~~
tzs
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?

------
hvs
This looks like the judge just denied the preliminary injunction. It's a good
first step, but this battle is far from over.

------
comex
Try as I might, I couldn't get this text from Apple's Back to School promotion
to sound non-weird:

> 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[...]

------
Derbasti
I like Apple, but sometimes, they do really strange things…

~~~
Urgo
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.

~~~
burgerbrain
...Good?

Are we really happy with not having alternatives to the walmarts of this
world? I would wager that most consumers _appreciate_ alternatives.

~~~
Urgo
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.

~~~
burgerbrain
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.

------
mbrzuzy
Apple needs to sit back down. People have been getting way to carried with
trademark suits over the years.

------
Hisoka
I don't think naming your store the App Store is good for branding anyway if
you're Amazon.

------
bhartzer
"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).

------
mcritz
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.

~~~
statictype
How would one's mom buy an app from Amazon's android store without doing it
through an Android Phone?

~~~
mechnik
Like so: [http://www.gadgetsdna.com/how-to-install-
android-2-2-froyo-o...](http://www.gadgetsdna.com/how-to-install-
android-2-2-froyo-on-iphone-3g/3501/)

~~~
burgerbrain
Yes, that looks exactly like something my mother might accidentally do.

~~~
eavc
First thing I've seen on the internet today to actually make me laugh out
loud.

