Apple trademarked the term "App Store" nobody thought much of it.
Smartphone applications at the time were a niche market either highly
targeted at small groups of professionals, or were tools used by handset
makers/carriers to sell their devices. In months Apple transformed the
mobile applications industry into a huge market that
lured personal computer developers into the world of ultra-mobile computing.
All of a sudden, the term "App Store" was a household name.
Now "App Store" is a somewhat generic term. Google, the
market's biggest player has long remained silent on this issue. But in
recent months Microsoft, in the midst of a major
smartphone push, decided to press the point, filing suit
against Apple in January, claiming the U.S.
Patent and Trademark Office (USPTO) erred when granting Apple
"ownership" of the term "App Store".
Now Apple's legal team has fired back in a response to Microsoft's claims.
They argue that the diversity of smartphone OS maker's various store
names offers some proof that the term "App Store" is not overly
generic (Google uses "Android Marketplace", Windows uses
"Windows Phone Marketplace", and Palm uses the term "Palm App
Catalog"). They say that Microsoft fails to prove that the term
"App Store" is overly generic.
Further, they level a stinging accusation back at Microsoft. They argue
that Microsoft's ownership of the operating system trademark
"Windows" is illegal.
Apple legal writes [PDF]:
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. 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 San Jose federal court where the case was filed must now rule whether to
grant a motion (instant decision) or put the case before a jury trial
(prolonged court process).
Ultimately both Apple and Microsoft raise valid points. On the one hand,
the term "App Store" (with no company name included) does seem overly
However, the case merely serves to illustrate the broader issue of the USPTO
increasingly granting ownership of increasingly broad and generic trademark
names to large companies. In this respect, Microsoft's claims are
certainly a case of the pot calling the kettle black. Operating systems
have used windows-based GUIs since before the days of Windows, and every major
personal computer OS today uses a windows-driven interface.
quote: Obviously so. What do you buy at the App Store? Apps. If someone new to a smartphone were looking to buy an app, they would probably first think of going to some sort of store for those apps. The abbreviation App was used form application software long before Apple repurposed it to mean iOS App.
quote: Windows is entirely different. Yes, windows is a common word, but Windows in relation to computer operating systems is pretty specific. It's not like Microsoft named their OS "Operating System" and then starting suing people who used the term.
quote: I slightly disagree with your second point. Before Windows 3.1 or even 95 to a slightly lesser extent, a "window" as a GUI element surely existed, but it was VERY niche.Apps have existed for a long time before Apple trademarked App Store.
quote: Before the App Store maybe a few million people in the U.S. used apps on a regular basis. The App Store launched the movement that led to as many as a hundred million people using apps on a regular basis (be it on iPhones, Android phones, Windows Phones, etc.).
quote: Redefine the word app did we? Since we're already arguing semantics lets get literal...
quote: I find it surprising that you're defending a tool for junk litigation and restriction of free trade...
quote: Exactly where did I do that?
quote: And they should sue. There would be a substantial risk of customer confusion, exactly what trademarks are intended to avoid. This is PRO competition, because it gives customers more information. Do you want your grandmother sifting through 10 different types of 'Windows'? Interestingly enough, Microsoft's brief mentions that the USPTO rejected an application for a trademark on 'the computer store'.
quote: What on earth does our country gain by forcing every customer to conduct additional research
quote: It actually IS the job of government to do exactly that sort of regulation of the marketplace
quote: Err... people should have freedom to buy what they choose. With that freedom comes the responsibility to research your decisions.
quote: People should be free to choose what they choose and should be knowledgable about what they buy before they put their money down, but companies do not and should not have the right to dupe consumers by using product names and descriptions that are similar to the real thing.
quote: Let the market decide, don't implement artificial trade barriers. I think generic trademarks ALL need to be removed, allowing free competition without the threat of lawsuits.
quote: It's not the job of big brother government to help poor confused customers make their buying decisions for them.
quote: people should have freedom to buy what they choose. With that freedom comes the responsibility to research your decisions. If you blindly purchase something you have no idea of the quality of, that is NOT the fault or responsibility of the government. The government is not here to be your daddy and tell you what you can and can not buy. It's here to provide for basic functions like defense, transportation, and, arguably, education.
quote: Except that Windows is no longer a generic term, in regards to software anyway. If you ask anyone what Windows is on a computer, they will say it is Microsofts OS. Period. While you may argue that Windows should not have been granted as a copyright in the first place, it is now beyond argument.
quote: I don't think you really understand copyright law.
quote: The terminology "window" as you are using it became generic and the popular term BECAUSE of Microsoft Windows popular and adoption. The same is not true of Apple. It didn't pioneer the terminology, users did and long before Apply became popular. I think its important enough.
quote: While I agree with you somewhat, I think the term "app" was used far less colloquially than "program" on the PC side prior to Apple's smart phone success.
quote: Nowhere did I defend the term "App Store", in fact, I attacked it. I merely noted that "Apple App Store" would be a more appropriate trademark since it adds enough specificity that it is no longer overwhelmingly generic.
quote: I'm sure my original comment was downrated for seemingly agreeing with Apple and being critical of something Microsoft did.
quote: But I find Apple's lawsuit to be a bit curious. Both "Windows" and "Apple" are common dictionary terms. If Microsoft can no longer use the word "Windows", does that mean that "Apple" will have to change their name as well?
quote: Trying to claim ownership of "App store" is like trying to gain exclusive usage of "Auto dealership". It's simply too generic. Microsoft, on the other hand, decided to go with "Windows" to refer to their OS.
quote: Microsoft and Apple should NOT be able to sue to prevent others from using these generic terms in their marketing.
quote: Similarly, Microsoft should not be allowed to SUE other OS makers from using the generic name "Windows".
quote: a "window" as a GUI element surely existed, but it was VERY niche. Apps have existed for a long time before Apple trademarked App Store.
quote: Also, a few more software products (likely copyrighted) with very generic names:-Word-Pages-Numbers-Illustrator
quote: In addition, trademarks are sometimes very useful things for both businesses and customers. You want to know that when you are buying a can of Coke, that you are buying Coca-Cola's Coke, not Uncle Jimmy from down the street's Coke. Trademarks prevent Jimmy from trying to fool you into buying something you don't want. Being able to effectively distinguish between competing products is not a barrier to competition, it is an aid to competition.
quote: Based on the tone and content of your articles I generally agree with you in regards to IP issues. However, I'm more saying that Windows is less generic, especially in context, than "app store".
quote: I feel in today's context it is an invalid trademark.
quote: Disagree. EVERY major operating system uses windows. This is a generic term since the 80s for panes in a GUI. Linux users open GUI windows, OS X users open windows, Windows users open windows.
quote: Apple Defends App Store Trademark, Argues "Windows" Trademark is Illegal
quote: You have to consider the scenarios in which these terms would be used.
quote: By that logic, the word Apple should be ilegal to use also.
quote: Blogs have opinion.
quote: Especially coming from a company that tried to sue both The Beatles and the City of New York over said word