Is “App Store” too generic to be a trademark? Microsoft starts a battle against the trademark “App store”

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“App Store” is the name of the well known Apple’s online store where people can search, view, buy and download the so called “applications” for their iPods, iPhones and iPads.
In 2008, Apple filed a trademark application for the term “App Store” for “retail store services computer software provided via the internet and other computer and electronic communication networks”, “retail store services computer software for use on handheld mobile digital electronic devices and other consumer electronics” (class 35) as well as other related services (classes 38 and 42) according to its application with the U.S. Patent and Trademark Office (USPTO).
On 10th January 2011, Microsoft filed an opposition against Apple’s application with the Trademark Trial and Appeal Board of the USPTO, on the grounds that the term is too generic to be registered as a trademark.
A term is generic when it refers to the class, genus or category of goods and/or services on or in connection with which it is used and, as a consequence, no one can trademark it and its registration has to be denied.
Microsoft holds that “app” is a common term for mobile software applications, and “store” is a common term for a “place where goods are sold.” The words together represent a generic term for a primary service.
In its opposition Microsoft affirms that the expression “app store” is generically used by the trade, the press, and the consumers to refer to the entire category of online stores that allow consumers to download applications for their mobile phones.
Microsoft also reports an interview of the Apple’s CEO, Steve Jobs, in which he used the phrase generically to criticize the proliferation of similar stores from competing companies. In this interview of the last October, Jobs argued that “Amazon, Verizon and Vodafone have all announced that they are creating their own app stores for Android.”
Microsoft recognizes that Apple is the pioneer and the leader of the app store marketplace, but the term has became too generic, so Apple can not usurp a generic term preventing competitors from using it. Competitors should be free to use “app store” to identify their own stores and the services offered in conjunction with those stores.
Microsoft reports in its motion, the US case “Eastern Airlines v. New York Airlines” concerning the term “shuttle”. In that case, the Court held that even if consumers associate “shuttle” with Eastern Airlines it does not mean that this generic term is protectable as a trademark. Such evidence is called “de facto secondary meaning” and it has no legal impact on the status of generic term. Due to the fame of Apple “App Store”, the term is a de facto secondary meaning and consequently not protectable as a trademark.
Apple also applied for registration under classes 38 and 42. These classes refer to services ancillary to and in connection with its retail store services. In class 38 Apple claims accessing its online store and downloading applications from its store. In class 42 Apple claims updating its applications, offering information about its applications, allowing users to search for applications offered through a search tool and allowing users to organize applications purchased at its store.
When a term is generic, the registration for ancillary or incidental services must also denied because registration for those services prevent competitors from using the generic term to describe their own services.
It’s interesting to see who will win in the end and if the trademark registration will be granted.
Undoubtedly, the USPTO’s decision will have a big impact on the mobile community, where numerous brands and tech giants have either already launched app stores of their own or continue to actively develop them.
After all, why Microsoft even cares? why Microsoft is concerned about this matter? Does Microsoft want simply fight back Apple, or it is looking to start an “App Store” of its own.
Let’s wait and see!

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Anna is an intern in the IP/IT department of Gianni Origoni Grippo and Partners, Milan. In 2010 she got her degree in Law from Bocconi University of Milan. In 2009 she attended an IP intensive course at the London School of Economics (Summer School). She was also the editor-in-chief of the Bocconi School of Law Student-Edited Papers (2009-2010). Her main interests include Intellectual Property, Information Technologies, Telecommunications and Media, Advertising Law and Privacy.

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