Terms & Technology: Trademarking “App Store”

Written By Asher Kest

Reviewed By Cynthia Amis

Apple is suing Microsoft over the use of the term “App Store,” insisting that they should own a valid trademark on the term despite its seemingly generic and descriptive meaning. Apple argues that they were the first to use the phrase,[1] and that it is most commonly associated with them. Indeed, generic phrases may be trademarked if applied in an uncommon way. The mark was approved for comment by the patent and trademark office, and Microsoft has since objected to the trademark as a generic and descriptive term, going so far as to hire a linguist[2] to contest Apple’s insistence of the word’s unique value. Of course, Apple already has a linguist on hand to argue that although “App Store” may contain generic words, when put together it becomes a proper noun. Apple has extended their defense of the term, suing Amazon[3] over their use of the similar phrase “appstore.”

Trademark law generally applies to terminology used in business in order to distinguish enterprises for both producers and consumers. Trademark law is a commercial application, not an innovative one. As such, a trademarked term must have distinctiveness. Marks fall along a spectrum of distinctiveness from arbitrary to descriptive; the more arbitrary a mark is, the more distinct it will be, whereas the more a mark merely describes a product, the less protection trademark law offers, since it is therefore something that should not be limited to one particular business, and may be unable to be used in a distinctive manner. In addition, accused infringers may properly defend themselves by showing that the mark has become or is in fact generic, and should not be subject to protection.

As mentioned above, however, even a mark that does not have particular distinction may be trademarked when applied in a novel way, for example by acquiring a secondary meaning. The concept of secondary meaning recognizes that words with an ordinary and otherwise primary meaning of their own may, after long use with a particular product, come to be known by the public as specifically designating that particular product. In order to establish a secondary meaning for a term, a plaintiff must show that the primary significance of the term in the minds of the consuming public is not the product but the producer. The term “Chap Stick,” for example, has long been associated with the eponymous brand produced by Pfizer, and as such is a trademarked brand name.

While this war of words takes place, it is important to note that it is very common for technology companies to zealously pursue their proprietary rights in naming products and services, often beyond the bounds of the reasoning behind trademark protection laws. The Wall street journal explains that “Nearly all mobile-device makers are actively suing or defending themselves in legal battles against one another.”[4] Furthermore, Apple is at the center of the storm, perhaps to be expected given their success and in the tech and mobile device market. Is it just market maneuvering by companies in a competitive market trying to hold on to their piece of the pie? It certainly isn’t an adherence to legal principle that motivates; one Apple representative noted that Microsoft trademarked the term “windows” in 2004.[5]

It would appear that the terms “App” and “store,” combined or otherwise, are indeed too generic and descriptive to be trademarked. Apple’s motion for a preliminary injunction against Amazon’s use was recently denied[6] in that case, and Amazon will continue to use the term in the interim, although as of now a trial will be held.[7]

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