Microsoft and Apple in ‘app store’ Trademark Registration Dispute

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Microsoft is contesting Apple’s attempt to trademark the name ‘App Store’, claiming that the name is too generic. In 2008 Apple applied to trademark this name for its iPhone, iPad and Mac download services. However, Microsoft has asked the US Patent and Trademark Office to reject this trademark, as the term is one that can be seen as being too descriptive to be eligible to be granted protection.

‘App Store’ as a Generic Term

Russel Panghorn, Microsoft’s associate general counsel explains why Microsoft has opposed Apple’s trademark application for this name, saying, “An ‘app store’ is an ‘app store’, like ‘shoe store’ or ‘toy store’, it is a generic term that is commonly used by companies, governments and individuals that offer apps. The term ‘app store’ should continue to be available for use by all without fear of reprisal by Apple”. 

Previously companies such as Google and Palm have avoided using the name ‘app store’ for their mobile software application stores, but now Microsoft is fighting Apple’s claim to the trademark so that it can use the name for their own mobile application store. Microsoft asserts that  “Any secondary meaning or fame Apple has in ‘App Store’ is de facto secondary meaning that cannot convert the generic term ‘app store’ into a protectable trademark.” 

Microsoft also claims that the term ‘app store’ has been often used by the Media, as a generic term for all application stores. However, Apple disagrees arguing, “The vastly predominant usage of the expression ‘app store’ in trade press is as a reference to Apple’s extraordinarily well-known APP STORE mark and the services rendered by Apple there under”.

‘App Store’ as a Hallmark of Apple Inc

Apple’s claim over the trademark for ‘App store’ is that it uses the first three letters of their company’s name, therefore is distinctive to their own company. However, app is also a commonly used term for mobile software applications, and so can be seen as being more of a descriptive name. The main debate over Apple’s rights to trademark the name lies in whether or not the US Patent and Trademark Office see the name as being one that is distinctive or descriptive.

The distinction between ‘app store’ as a name specific to Apple or as a general reference to somewhere where mobile applications can be purchased can seem blurry. When registering trademarks companies need to leave certain types of word or terms free for competitors to use. So, for example words that describe the product or service are not capable of being monopolised. A really simple example illustrating this is the word Chocolate. If Galaxy or Mars wanted to brand themselves as Chocolate, for chocolate products, they would not be able to do so. Therefore, names should veer from being too descriptive.

Even well known companies like Apple who have associated the name ‘App store’ to mean their store in the eyes of the public, are in danger of losing their rights in the trademark. . When registering trademarks companies need to ensure they pick names that are distinctive and not in jeopardy of being revoked on the ground of descriptiveness.