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Apple Responds to Microsoft Opposition of 'App Store' Trademark

Apple Responds to Microsoft Opposition of 'App Store' Trademark

Posted March 2, 2011 at 12:05am by iClarified · 14527 views
Apple has responded to Microsoft's opposition of its 'App Store' trademark filing, according to a Politico report.

After an initial overview of Apple's application, the Trademark Office refused registration of the mark APP STORE on the basis that it was merely descriptive of the services rendered. Apple then tried to claim that 'app' was a shortform for 'Apple'. This didn't fly either and was also rejected. Finally, Apple admitted 'app' was descriptive but said it should get the registration because the public would recognize APP STORE as belonging to Apple (and only Apple) because of the extraordinary success of the iTunes App Store, its extensive marketing and promotion of the APP STORE mark, and the unsolicited media coverage of Apple’s services.

Microsoft then filed an opposition saying, "App store" is a generic name that Apple should not be permitted to usurp for its exclusive use. Competitors should be free to use "app store" to identify their own stores and the services offered in connection with those stores. Microsoft’s motion for summary judgment should be granted and Apple’s application to register APP STORE refused.

Now Apple has responded calling out Microsoft for being hypocritical.

"Having itself faced a decades-long genericness challenge to its claimed WINDOWS mark, Microsoft should be well aware that the focus in evaluating genericness is on the mark as a whole and requires a fact-intensive assessment of the primary significance of the term to a substantial majority of the relevant public," Apple wrote.

"Yet, Microsoft, missing the forest for the trees, does not base its motion on a comprehensive evaluation of how the relevant public understands the term APP STORE as a whole," the filing continued. "What it offers instead are out-of-context and misleading snippets of material printed by its outside counsel from the internet and allegations regarding how the public allegedly interprets the constituent parts of the term APP STORE, i.e., 'app' and 'store.'"

"Recognizing the many issues of fact raised by its motion and trying to sidestep them, Microsoft also concocts the argument that all 'store' formative marks such as APP STORE should be per se generic," Apple wrote. "Microsoft's proofs, and its attempt to create a new genericness standard from whole cloth, do not warrant an award of summary judgment in Microsoft’s favor."

The hole in Apple's argument would seem to be that while Windows is a generic architecture term for a hole in a wall nobody is going to confuse Windows the software application with the windows in their home. The 'App Store' term on the other hand is an exact generic description of Apple's App Store, Microsoft's Windows Marketplace, and Google's Android Market.

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Apple Responds to Microsoft Opposition of 'App Store' Trademark
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matrixmaniac - March 2, 2011 at 8:29am
Not easy to come to conclusions here. And I agree: The world has other issues to resolve... But one thing in the article is not correct: "Windows" is not only a generic term for some sort of holes in walls (which wouldn't be confused with a SW product), but it's also a generic term for objects GUIs use to present their dialogs and content etc. There are windows on OS-X, Linux, UNIX... Why should MS have a right to trademark "Windows" but Apple not to do it for "App Store" ???
Frank - March 2, 2011 at 3:35pm
Didn't Microsoft coin the term on that? Even if they didn't, 'Windows' is not descriptive of any other software product. Now if Microsoft tried to trademark the term 'operating system'. That would be the same as apple trying to trademark app store.
T.C. - March 2, 2011 at 7:24am
REALLY ?! This is the kind of shit our world is worried about these days? We need to waste court documents and time on this kind of crap? Just another example of how this country has lost all sense of priorities.
DacksMac - March 2, 2011 at 1:04am
Apples pays 100's or millions if not billions of dollars a year in taxes. If it weren't for corps like them then our economy would be shit... Let them call it "store" if they want to, who cares. But then again if I were to create a application selling store for mobile phones then I guess I would be pisses too!
matty - March 2, 2011 at 12:52am
Look, I understand why Apple would like the trademark. But, I think its way to generic for them to claim copyright on.
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