Microsoft, HTC, Nokia and Sony Ericsson have filed a challenge in Europe today seeking to invalidate Apple’s trademarks on the phrases “App Store” and “Appstore,” reports “GeekWire” (http://macte.ch/RDiNz).
The companies argue in the European filings that the trademarks shouldn’t have been granted to Apple because they lack distinctiveness, the article adds. Apple has argued that the public associates “App Store” with its own mobile marketplace, and that many of its competitors have had no problem finding alternative terms — including Microsoft with its own Windows Phone Marketplace.
Microsoft has also filed opposition to Apple’s efforts to trademark the phrase “App Store” in the US. In a March reply filed with the U.S. Patent and Trademark Office to get Apple’s trademark application refused, Microsoft rebutted an Apple’s rebuttal from earlier that month.
“The undisputed facts establish that ‘app store’ means exactly what it says, a store offering apps, and is generic for the retail store services for which Apple seeks registration,” the company wrote in the filing. “Apple does not contest that its other services are ancillary and incidental to its retail store services. Summary judgment should be entered denying Apple’s application in its entirety.”
In the nine-page document, Microsoft takes aim at Apple’s defense of the trademark, which made use of testimony from Robert A. Leonard to show that “App Store” was in fact a proper noun and had proven itself to be tied to Apple ahead of competitors, says “CNET.” In January Microsoft asked the U.S. Patent and Trademark Office to deny Apple a trademark on the name “App Store,” saying the term is generic and competitors should be able to use it. Apple applied for the trademark in 2008 for goods and services including “retail store services featuring computer software provided via the internet and other computer and electronic communication networks” and other related offerings, the article adds. Apple launched its App Store for the iPhone that year.
Microsoft filed a motion for summary judgment with the agency’s Trademark Trial and Appeal Board, asking it to deny the trademark to Apple. In its motion, Microsoft said “app” is a generic term for what is sold at the App Store and that “store” is generic for retail store services.
However, in a March filing Apple argued: “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.”
Amazon and Apple have also been doing battle over the “App Store” moniker. In March Apple sued Amazon.com, saying the online retailer is using Apple’s “App Store” trademark for a mobile-software developer program.
In a complaint filed March 18 in federal court in northern California, Apple accused Amazon.com of trademark infringement and unfair competition and asked for a judge’s order to prevent the company from using the “App Store” name, as well as for unspecified damages.
Apple registered for a trademark on the term App Store on July 17, 2008. It has been using the name since then to refer to its applications store for iOS devices. Earlier this year it also launched the Mac App Store.
“Amazon has begun improperly using Apple’s App Store mark in connection with Amazon’s mobile-software developer program,” Apple said in the complaint. Amazon also plans to use the name with a mobile-software download service, the complaint states.
Amazon began using the App Store designation around the beginning of this year, according to the lawsuit. “Amazon has unlawfully used the App Store mark to solicit software developers throughout the United States,” Apple claimed in its suit.
In the court filing, Apple said in the court filing that it contacted Amazon three times to demand that it cease using the name and that Amazon hadn’t “provided a substantive response.” “We have a long-standing practice of not commenting on pending litigation,” Mary Osako, a spokeswoman for Seattle-based Amazon, told “Bloomberg” on Monday.
Amazon responded in court to Apple’s trademark infringement lawsuit over the use of the term “App Store,” which Amazon has contended is generic and should be free to use.
Amazon’s response was filed in March in a U.S. District Court in the Northern District of California. The company says it doesn’t need to obtain a license or authorization from Apple to use the term “app store.” “No such license or authorization is required because ‘app store’ is a generic term, and Amazon’s use of the term causes no likelihood of confusion, dilution, or unfair competition,” Amazon argues.
— Dennis Sellers