This is the third in a multi-part series.  If you have not read Part 1 or Part 2 yet, you may want to read those parts of the Apple App Store trademark saga first.

Microsoft’s Opposition to Apple’s Trademark Application

After clearing out pending trademark applications and making a convincing argument at the trademark office, Apple’s App Store mark published for opposition on January 5, 2010.  After taking an extension to oppose Apple’s application, on July 6, 2010 Microsoft formally filed its opposition papers with the Trademark Trial and Appeal Board (TTAB).

Microsoft’s opposition argues simply,

the combination of the generic term “app” with the generic term “store” is nothing more than the sum of its parts and is not capable of identifying and distinguishing a single source. An “app store” is plainly a store that sells apps.

The opposition identifies several retailers using the name as well as examples from the press using the term app store as a generic term for an online retailer of mobile phone applications.

In Apple’s answer, it argues that other retailers using the term app store are simply trying to trade off of Apple’s goodwill and that use of the term app store by the press is primarily a reference to Apple’s extraordinarily well-known App Store mark.

Microsoft’s Motion for Summary Judgment

On January 10, 2011, Microsoft filed a motion for summary judgment in the TTAB proceeding asking the board to reject Apple’s trademark registration.  Microsoft argues,

Apple was an early and successful entrant into the app store marketplace. Competitors are rushing to develop smartphone products to compete with Apple’s iPhone, and with those products to offer their own app stores. Any secondary meaning or fame Apple has in “App Store” is de facto secondary meaning that cannot convert the generic term “app store” into a protectable trademark. Apple cannot block competitors from using a generic name. “App store” is generic and therefore in the public domain and free for all competitors to use.

Microsoft even catches Steve Jobs using the term app store in a generic sense.  Apparently in an October 18, 2010 conference call with financial analysts,  Steve Jobs, used “app stores” to identify Android app stores:

“In addition to Google’s own app marketplace, Amazon, Verizon and Vodafone have all announced that they are creating their own app stores for Android. There will be at least four app stores on Android which customers must search through to find the app they want and developers will need to work to distribute their apps and get paid.” — Steve Jobs

Ouch.  That’s pretty strong evidence.  (As a trademark attorney who tries to coach clients on proper use of their trademarks, this happens all the time.)

Apple’s Response Brief

In Apple’s opposition to Microsoft’s summary judgment motion, Apple attacks Microsoft’s evidence as “out-of-context and misleading snippets of material” and argues that Microsoft has not met its burden to prove that that a majority of the relevant public understand the term “app store” in a generic sense.

In response to Steve Job’s generic use of the term app store, Apple argues that barley anyone even head that,

Microsoft fails to provide any evidence as to whether such statements, which in fact were made during an earnings call to the investment community, were even heard by any sizeable number of consumers of mobile applications. Given the limited audience for such earnings statements, the most reasonable inference is that they could not possibly have had any meaningful impact on consumer perception of the term APP STORE.

Not really the best comeback, but it goes along with Apple’s general theme in the brief that Microsoft has not put forth sufficient evidence to make its case.

As counter-evidence, Apple puts forth a declaration from its expert, Dr. Robert A. Leonard, Chair of the Linguistics department at Hofstra University.  Dr. Leonard looked for instances of “app store” from various written sources including Google and concluded that more often then not, the source using “app store” was talking about Apple’s app store.  This is hardly surprising as Apple has the biggest and best known app store.  Dr. Leonard does not discuss whether these references to Apple used the term as a proper noun or in a generic sense.  Dr. Leonard also does not answer the ultimate question, i.e. do most people understand the term “app store” as a generic term or as a source identifier for Apple’s app store?

Microsoft’s Reply Brief

On March 29, 2011, Microsoft filed its reply brief, Microsoft argues that when people talk about stores selling applications for mobile phones, they call them “app stores.”

Apple strains to keep “App Store” for its exclusive use, even claiming that its online stores are not real stores, only metaphorical ones. But Apple cannot escape the hard truth: when people talk about competitors’ stores, they call them “app stores.” You don’t have to look far to find this generic use – The Washington Post, The New York Times, The Wall Street Journal and even Apple’s CEO Steve Jobs. And generic use of “app store” is not obscure or occasional as Apple would have us believe. It is prominent, ongoing and, by Apple’s own measure, hundreds of times more frequent than the thin generic use in the cases upon which Apple relies.

Microsoft further argues that all Apple’s opposition brief shows is that Apple gets lot’s of press, including press about its app store.

[T]allying press articles to show that the majority are about Apple’s App Stores, as Dr. Leonard did, is not probative. (Butters Decl. ¶¶ 4, 25). It shows that Apple is successful and newsworthy, but little else. For example, Dr. Leonard found over 335 articles in one month (39% of the total articles discussing Apple) about the new Mac App Store. (Durrance II Decl. ¶ 4(b)). A search of the same Lexis database for articles in the last month found 333 articles about the new Amazon Appstore, even though the Amazon Appstore is only a week old.

Current Status

The Trademark Trial and Appeal Board is now considering Microsoft’s motion.  A decision is likely within the next sixty days.  Even if Microsoft is successful at the trademark office, an appeal to a United States District Court or to the Federal Circuit Court of Appeals by Apple is likely.

Next up in this series:  Part 4, Apple vs. Amazon

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.

– – –

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.

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 Amazon.com 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.

Salesforce.com, Inc.

The next company to apply for an app store trademark was Salesforce.com.  On June 14, 2006, two years before the Apple App Store debuted  Salesforce.com 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.

Salesforce.com, 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 Salesforce.com, 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 Salesforce.com, Inc. which had a two year head start on its trademark application.  In September 2008, before Salesforce.com, 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, Salesforce.com, 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