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.