Apple strikes back at Microsoft’s action against App Store


7 Mar 2011

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Apple has hit back at Microsoft’s request to deny it the trademark of the ‘App Store’ name, pointing out that Microsoft has trademarked a similarly generic term – Windows.

At the start of the year, Microsoft requested a summary judgment to stop Apple from trademarking the term ‘App Store’ as it said the term was far too generic for Apple to claim as its own.

However, Apple hit back, claiming Microsoft is “missing the forest for the trees” by ignoring that the public identifies the term ‘App Store’ with Apple.

“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,” read the document.

“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.”

Apple’s argument

Apple’s opposition states that many competitors have opened stores with similar content with a different name before, such as the Android Market.

Apple even brings in the testimony of a linguistics professor, Dr Robert Leonard, who said “the predominant usage of the term APP STORE is as a proper noun to refer to Apple’s online application marketplace.”

The company also notes that Microsoft searched for references to the “app store” using Westlaw’s case-sensitive search setting in Westlaw’s USNEWS database for the period between January 1 2010 and November 10 2010.

While they found that 80pc of the results for app store included results for other online retailers which sold apps, Apple retorted that his methodology was flawed because he only searched in lower case.

Branding

David Brophy and Shane Smyth of FRKelly believe that the dispute highlights the problems for companies selecting a descriptive brand name.

“A descriptive trademark is liable to fail the fundamental requirement that to be registrable, a trademark must be distinctive – that is, must be capable of distinguishing the company’s goods and services from those of its competitors,” they said.

Regardless, they point out that such descriptive names are not necessarily impossible to trademark.

“As Apple points out, a descriptive trademark can acquire distinctiveness, and you may end up with a registrable trademark if a sufficient number of consumers exclusively associate the mark with your goods or services.”

However, they note that the downside to this is that it’s a more uncertain move which can take more time and money to ensure that it pertains exclusively to the company.

Brophy and Smyth recommend that companies should choose a trademark which is not too common or loosely descriptive, in order to make it an individual title for the brand.

“Deep down, both Apple and Microsoft know that the best trademark is an inherently distinctive one, of course. This is why most of their brand names are not descriptive – think iPad, Macintosh and Quicktime, or Xbox, Bing and Vista.”