Trademark Wars: Better Know an App Store -Part 2, Apple vs. the USPTO

This is the second in a multi-part series.  If you have not read Part 1 yet, you may want to read that part of the Apple App Store trademark saga first.

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Not long after Apple filed its trademark application, it received a rejection from the U.S. Trademark Office.  The reason– you cannot get the trademark “APP STORE” for a store that sells apps.  In trademark lingo that’s called a Section 2(e)(1) refusal, which means that the applied for mark has been refused because it is “merely descriptive” of its services.  As evidence — and as a possibly unintentional jab at Apple — the Examining Attorney used the definition of “app” from Microsoft’s Encarta English Dictionary.

Apple filed its response to the Office Action in February 2009.  It argued in its response to the trademark office that,

The term “APP” is not merely descriptive. In fact, it is completely arbitrary. . . The term “APP” may, arguably, sometimes be used as a slang abbreviation for the word “application”, but this term has many other incongruous meanings. . . .”APP” is an abbreviation for a number of app-formative words, such as apparatus, apparent, appendix, applied, appointed, approved and approximate . . .

Or maybe “app” actually does mean “application,” which is exactly what everyone understands the term “app” to mean in the context of an “app store.”

Apple also tried arguing that the term APP STORE is actually a double entendre.  The Trademark Office will accept a descriptive trademark which has multiple meanings if at least one of the meanings is not descriptive.  Here, Apple argued that it’s mark APP STORE might be short for Apple Store.

“APP” will be immediately recognized as an abbreviation of the applicant’s well-known APPLE name and mark, and the mark as a whole, APP STORE, will be immediately recognized as a variant of the applicant’s well-known APPLE STORE mark.

Or… maybe “app” is simply short for application.  And when you use iTunes you click the button “App Store”  to browse and download apps, just like you click the buttons Music, Movies, TV Shows, Podcasts, and Audiobooks to browse and download those items.

Well, the Trademark Office wasn’t falling for the idea that “app” could have another meaning to a consumer other than “application” (such as “Apple” or perhaps “appendectomy”). A month later in March 2009, the Examining Attorney issued a Final Office Action, rejecting Apple’s arguments with a much simpler argument.

The term APP is defined as “a computer application.” Encarta World English Dictionary [North American Edition]. Copyright 2009 by Microsoft Corporation. (See attachments).

The term STORE is defined as “a place where merchandise is offered for retail sale to customers.” Encarta World English Dictionary [North American Edition]. Copyright 2009 by Microsoft Corporation. (See attachments).
. .
In this case, the mark APP STORE merely combines descriptive terms without creating a new nondescriptive meaning.
. . .
The examining attorney respectfully disagrees with the applicant’s assertion that the mark is arbitrary and/or that it creates a double entendre.

So that was that.  But Apple was not ready to give up.  On September 18, 2009, Apple submitted its request for appeal along with a response to the trademark office’s final office action.  This time, Apple had a new argument.  In fact, a billion arguments.  On April 23, 2009, Apple had delivered its one-billionth app.  That’s a billion reasons right there that Apple owns the term app store.  All of you Apple competitors out there need to come up with your own name like “application store.”

Basically, what Apple argued was the because of the huge success of its app store, people have come to associate the term app store with Apple.  Thus the originally descriptive term “app store” has now acquired “secondary meaning” with consumers.  As evidence, Apple touted the success of its app store, the iPhone and its advertising and marketing expenditures promoting both.

And the trademark office agreed.  Apple’s trademark application was approved under Section 2(f) of the Trademark Act. Due to Apple’s commercial success and advertising efforts the initially descriptive mark had “acquired distinctiveness” or “secondary meaning” with consumers.  And that was that.  At least temporarily.

Next up in this series:  Part 3, Apple vs. Microsoft.

Trademark Wars: Better Know an App Store -Part 1, Apple vs.

This is the first in a multi-part series.

As has been widely reported, Apple is claiming the exclusive right to use the term APP STORE for an online store which sells apps.  Apple recently sued for using the term and is currently in a fight with Microsoft over at the trademark office.  This multi-part series will review and analyze the history, the proceedings, and the players involved in the latest trademark wars.

Sage Networks, Inc.

Our story of the APP STORE trademark begins at the United States Patent and Trademark Office long before the iPhone was even a gleam in Steve Job’s eye.

In 1998 Sage Networks, Inc. of Cambridge, Massachusetts was the first company in the U.S. to apply for the trademark APPSTORE.  In it’s application Sage Network’s APPSTORE services were described as  “providing computer software application hosting services by means of a global computer information network, where such services allow multiple users to rent software applications developed by applicant or third parties.”  Sounds a lot like an app store.

In 1999 Sage subsequently bought Interliant, Inc. and then changed its name to Interliant, Inc.  And then in 2003 Interliant, Inc. sold substantially all of its assets to NaviSite, Inc. Somewhere along the way the APPSTORE application was lost in the shuffle.  The application was approved, but the company never filed a statement of use to show they were using the trademark.  The company tried to revive the application, but the request for revival was denied and the application went abandoned in 2002 prior to ever issuing., Inc.

The next company to apply for an app store trademark was  On June 14, 2006, two years before the Apple App Store debuted filed for the mark APPSTORE for the services, “Operating on-line marketplaces for buying, selling and exchanging computer software and on-demand applications.”  Sounds a lot like an app store.

The application was initially rejected for being merely descriptive of — well — an app store., Inc., however, also filed APPSTORE for other services including, “Application service provider (ASP) featuring computer software in the field of business project management, business knowledge, information and asset management, customer relationship management, sales, marketing, e-commerce, electronic messaging, and web site development.”  Which sound far less like an app store.

After some back and forth with the trademark office, Inc. deleted the descriptive services, namely “Operating on-line marketplaces for buying, selling and exchanging computer software and on-demand applications.”

With the removal of the most descriptive services, the application was approved.  The application published for opposition in August 2008, one month after Apple’s app store debuted on July 10, 2008.

Trinidad and Tobago

After launching its app store Apple quickly filed its trademark application for APP STORE. But wait.  There was a surprise in the U.S. trademark application.  According to the application back on March 7, 2008, Apple  filed for APP STORE in TRINIDAD AND TOBAGO and was using that application as a basis for the U.S. Application under an international trademark treaty (the Paris Convention).  Why file in Trinidad and Tobago first?  Beautiful weather?  The location of Steve Job’s secret base?  Probably not. Most likely it is quick and easy to get a trademark issued in the Caribbean nation and by filing pursuant to the Paris Convention, Apple’s application in the U.S. can use the Trinidad and Tobago March 7, 2008 filing date, rather than its later July 17, 208 filing date.  Most importantly, however, the Trinidad and Tobago trademark office does not have any online search capabilities making it difficult, if not impossible for pesky bloggers to learn of the new Apple trademark prior to the launch of the App Store.

Apple also used its Trinidad and Tobago trademark under the Paris Convention for other parts of the world including the European Union.  Apple’s EU App Store trademark has already issued.

The First Skirmish

Back in the U.S., Apple began harassing, Inc. which had a two year head start on its trademark application.  In September 2008, before, Inc.’s APPSTORE trademark issued,  Apple filed a request with the trademark office for additional time to file an opposition proceeding.  In what is most likely a confidential settlement to the dispute, in December 2008,, Inc. expressly abandoned their APPSTORE trademark, clearing the way for Apple’s U.S. APP STORE trademark application.  At least temporarily.

Next up in this series:  Part 2 Apple vs. the Trademark Office

EU: Google Adwords Trademark Bidding may be Trademark Infringment

The Advocate General of the European Union issued a written opinion in the Interflora Inc v. Marks & Spencer case finding that the defendant’s bidding on the keyword “interflora” through Google Adwords may amount to trademark infringement.

The Applicant, Interflora operates a network of independent florists who provide flower delivery in the UK and across Europe.  The defendant, Marks & Spenser provides flower delivery services in competition with Interflora in the UK.

The opinion finds that advertisers who choose keywords identical to a trade mark of another may obscure whether the goods or services referred to originate from the  the advertiser or the trade mark owner.  In a radical departure from case law in the United States, the EU’s Advocate General found that, at least in the case of the Interflora trademark, it is immaterial whether the resulting ad displays the trademark or not (see Paragraph 42).

The Advocate General distinguished the Interflora case from other trademark bidding cases based on the fact that the “Interflora” mark represents a network of independent florists.  Searching for “Interflora” and having the Marks & Spencer ad pop-up could lead a consumer to believe that Marks & Spenser was part of the Interflora network.

The Advocate General concludes that, Interflora should be allowed to block Marks & Spenser from bidding on its Interflora trademark in Google Adwords.

The Advocate General’s opinion is preliminary and will now be considered by the European Union Court of Justice which will issue a final judgment.

Redskins tell Washington Post to Cease and Desist using Redskins Name

In what must be one of the stranger cease-and-desist requests in recent memory, the Washington Redskins have reportedly demanded that its home-town newspaper the Washington Post cease and desist using the name “Redskins” as part of its blog.  What?

A blog about the Redskins being told that they cannot use the name Redskins in their blog title?

The webcast and blog which was originally called “Redskins Insider” has since been named to “Football Insider.”

Did the Post have to change the name of its blog and webcast? Maybe.  That hypothetical case would hinge on whether readers of the Post believed that the Redskins organization was somehow sponsoring the blog and webcast.  (Although it seems doubtful that a jury made up of those in the D.C. area would believe that the Redskins organization was sponsoring anything in the Post which can be critical of the team and its management.)

The newly named Football Insider can be read here.