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 Apples 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. Microsofts motion for summary judgment should be granted and Apples 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 Microsofts 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.