No trademark for Apple's App Store?

Stephen Withers
Thursday, 13 January 2011 15:57

IT Industry - Strategy

Apple's trademark application for the term 'App Store' has run into opposition from Microsoft.

Around the time that Apple opened its App Store for business - at that stage offering software for the iPhone 3G - the company filed a trademark application for the words 'App Store'.

That application was making its way through the bureaucratic process until this week. Following the debut of the Mac App Store, Microsoft this week sought a motion for summary judgement refusing registration from the Trademark Trial and Appeal Board of the US Patent and Trademark Office.

The basis of Microsoft's argument is that both 'app' and 'store' are generic terms, and therefore 'App Store' cannot be a trademark. According to Microsoft's filing, previous examples held to be generic include 'The Computer Store', 'Shoe Warehouse', 'Discount Auto Parts Store', and 'The Italian Store'.

However, some of the issues Microsoft raises seem to weaken the company's position. For example, it notes that 'app' has just been named Word of the Year for 2010 by the American Dialect Society. The fact that the word came into widespread use after the trademark application seems to be in Apple's favour, even if it had some circulation in earlier decades (eg MacApp was the original application framework for Mac OS in the 80s and 90s).

Similarly, Microsoft cites a number of examples of the supposedly generic use of 'app store' by the media during the years following Apple's trademark application. 

But are Microsoft's hands completely clean when it comes to 'generic' trademarks? Please read on.