Apple and Microsoft’s dispute over Apple’s efforts to trademark the term app store continues to get more absurd. Microsoft is of course challenging the trademark on the grounds that the phrase app store is merely a generic designation.
In one of its filings with the US Patent and Trademark Office, Apple argued that generic terms can warrant trademark protection if they take on a particular and unique meaning in the vernacular. Pointing the finger directly at Microsoft, Apple cited Microsoft’s trademark of the term ‘Windows’ as an example.
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’s filing reads. “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.”
Since then, Microsoft has said that the font used in Apple’s legal filings was too small, and now the folks at Redmond have taken to hiring a linguist to challenge Apple’s trademark application. In Microsoft’s most recent filing with the USPTO, the company employed the testimony of linguist Robert A. Leon to refute Apple’s claims.
In the nine-page document (PDF), Microsoft takes aim at Apple’s defense of the trademark, which made use of testimony from Robert A. Leonard to show that “App Store” was in fact a proper noun and had proven itself to be tied to Apple ahead of competitors.
Microsoft struck back in a separate declaration filed today by linguistic expert Ronald R. Butters that attempts to poke holes in Leonard’s claims, saying “the compound noun ‘app store’ means simply ‘store at which apps are offered for sale,’ which is merely a definition of the thing itself–a generic characterization.
Butters, who is a Professor Emeritus of English at Duke, not to mention the former chair of Duke’s Linguistics Program, also called into questions Apple’s use of online dictionaries to back up their trademark claim. Butters notes that these online dictionaries “were not written by established lexicographers and are without scientific authority.”
Apple sure is working extremely hard to secure its “app store” trademark. Last week the Cupertino-based company sued Amazon over their Amazon App Store initiative.
via CNET
March 31st, 2011 at 12:27 pm
I did a little research on the history of this trademark, and found this out:
“App Store” was trademarked (yes, officially trademarked) by SalesForce way back in 2006.
See this article:
http://www.i-cio.com/blog/april-2010/marc-benioff-interview
Quoted from the article:
“The trademark was passed as a gift to Apple’s Steve Jobs from Marc Benioff, CEO and founder of Salesforce.com, whose unreserved admiration for Jobs and Apple (he spent a summer there as a programmer in the mid-1980s when he was a student) persuaded him to give away the rights to Salesforce’s own use of “AppStore” – a platform it had announced in late 2006 and designed for the “trying, buying and deploying of [third-parties’] applications” as a service over the internet.”
“By the time Apple’s App Store hit the web, Salesforce had not only opted to use the term AppExchange for its store, but had already shown just how successful that model could be. ”
This will work in Apple’s favor when they defend their right to trademark the “App Store” name again. They have every right to use a previously trademarked name which they officially own.
Remember that in 2006 the word “app” was not considered to be “generic”, but has become so popular since then that it is now part of our lexicon. The same goes for the word “Kleenex”, which was not “generic” in 1924 but has become part of our lexicon since then. If you look up “Kleenex” in the Dictionary, in addition to the notation that it is a trademark, you will find a generic definition of “an absorbent disposable paper tissue.”.