
Apple Sues Amazon.com, Seeks Order to Stop Use of 'App Store' - jarquesp
http://www.bloomberg.com/news/2011-03-21/apple-sues-amazon-com-over-use-of-app-store-trademark.html?cmpid=yhoo
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grellas
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.

~~~
alain94040
"Windows" is a trademark
([http://www.microsoft.com/about/legal/en/us/IntellectualPrope...](http://www.microsoft.com/about/legal/en/us/IntellectualProperty/Trademarks/Usage/Windows.aspx)),
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?

~~~
grellas
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.

~~~
staunch
Apple has successfully promoted the heck out of name "App Store" and spent a
fortune doing so. If that's the criteria they have a solid case.

~~~
brown9-2
You are overlooking the second part of this:

 _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.

~~~
atlbeer
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

[http://www.google.com/search?sourceid=chrome&ie=UTF-8...](http://www.google.com/search?sourceid=chrome&ie=UTF-8&q=app+store)

~~~
jcl
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.

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gs8
Today's News Summary:

Apple = Trademark Troll

Microsoft = Patent Troll

AT&T = Monopoly

If Amazon fights this they could win and it could be good news for everyone,
except Apple.

p.s. Yes I know Amazon is a patent troll as well.

~~~
JoeCortopassi
How the heck is AT&T a monopoly?

~~~
aphexairlines
The only GSM carrier left in the US?

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dhughes
'App' is short for application I guess that's the problem so Amazon should
come up with their own shortened version I suggest 'appl'

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SriniK
Wonder what were apple thinking when they used iphone which clearly belonged
to Cisco. [http://gizmodo.com/#!227504/cisco-is-expecting-signed-
agreem...](http://gizmodo.com/#!227504/cisco-is-expecting-signed-agreement-on-
iphone-trademark-today)

These names are so common and apple fighting over is lame.

~~~
nika
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.

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Jabbles
Could there be hope in arguing that "app store" is now a generic term for an
online software shop?

~~~
Cococabasa
Apple did the "App Store".

It reminds me of the Crayon story. Seems simple: wax drawing tool. But wooo!
Crayola had to give up the name.

Personally, it's a tough call. They are all Crayons, they are all App Stores.
Not sure what the solution is.

~~~
ZeroGravitas
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.

So what name did they have to give up?

<http://en.wikipedia.org/wiki/Crayon>

Better examples from Wikipedia are:

Aspirin, originally a trademark of Bayer AG

Butterscotch, originally a trademark of Parkinson's

Escalator, originally a trademark of Otis Elevator Company[4][5][6]

Heroin, originally a trademark of Bayer AG

Kerosene, originally a trademark of Abraham Gesner

Phillips-head screw, named after Henry F. Phillips

Pogo for the toy Pogo stick[6][7]

Sellotape, a brandname of The Sellotape Company

Thermos, originally a trademark of Thermos GmbH

Tipp-Ex, originally a trademark of German manufacturers Tipp-Ex GmbH & Co. KG

Yo-yo, originally a trademark of Duncan Yo-Yo Company

Zipper, originally a trademark of B.F. Goodrich[6][8]

<http://en.wikipedia.org/wiki/Genericized_trademark>

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radley
Isn't this a parry to Amazon's One Click patent?

Certainly an interesting way to negate the fees...

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rch
AMZN: Buy

~~~
sahillavingia
Why (in relation to this)? Curious, because I just bought some.

~~~
gcheong
Perhaps because the suit is a signal that Apple fears competition from Amazon?

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Yaggo
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.

~~~
nooneelse
But plenty of people were talking about "web apps" before the iPhone. Which
shows that "app" is not distinctive or unique. Nor is "store" distinctive.

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kluivers
"People thinking 'app store' was in use before Apple's have bad memories -
<http://www.google.com/trends?q=app+store> ", @treestman

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geekfactor
The Apple "App Store" trademark:

[http://tess2.uspto.gov/bin/showfield?f=doc&state=4009:jg...](http://tess2.uspto.gov/bin/showfield?f=doc&state=4009:jgea6f.4.1)

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wildmXranat
On bad day for patents and law suits - when it rains, it pours.

~~~
rbritton
Unlike a patent, you have to actively defend a trademark for it to remain
valid.

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kleptco
Everyone knows the "App" in "App Store" is short for "Apple".

~~~
thomasz
So, how many Apple computers can I buy in the Apple App Store?

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Garbage
Are they trying to trademark "jobs" as well?

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entrepreneurial
Can't they just change it to App Market?

~~~
eoghan
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.

~~~
mpk
> 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.

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dpcan
I was wondering when this would happen.

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teyc
They should just call it Amazn Store.

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vacri
Apple said 'No'.

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Cococabasa
I saw Amazon pull this stunt a few days ago. No respect for software
developers? I think that's it!

