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Apple Battles With Microsoft Over 'App Store' Trademark

The Huffington Post   First Posted: 03/01/11 08:48 PM ET Updated: 05/25/11 07:35 PM ET

Microsoft

Apple wants the App Store all for itself--the term "App Store," that is. In response to Microsoft's suit against Apple's trademark filing for the phrase, Apple has delivered a withering reply.

"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," Apple wrote in a filing. "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. What it offers instead are out-of-context and misleading snippets of material printed by its outside counsel from the internet and allegations regarding how the public allegedly interprets the constituent parts of the term APP STORE, i.e., 'app' and 'store.'"

Microsoft has objected to Apple's attempted trademark on the grounds that the term "App Store" is too generic to be trademarked. But Apple argues that just because the terms "app" and "store" by themselves might be considered generic, doesn't mean that "App Store" is as well. One example of a trademark they use to illustrate the fact--the Beef Jerky Outlet.

"Although the terms 'BEEF JERKY' and 'OUTLET' may be generic for, respectively, a type of beef snack and a commercial market, the record falls short of establishing that the phrase THE BEEF JERKY OUTLET, as a whole, is generic," the court ruled in that instance.

Apple also included testimony from linguistics expert Dr. Robert Leonard who concluded that "the predominant usage of the term APP STORE is as a proper noun to refer to Apple's online
application marketplace." And Apple, added, other companies providing digital storefronts have found other terms that are just as accurate, without being "App Stores"--including Microsoft.

"As Microsoft itself acknowledges, these competitors have found ways of branding and describing their own online software marketplace without using the term APP STORE. For example, Microsoft itself uses the term MARKETPLACE to refer to its service and uses the descriptor 'virtual store for apps,'" Apple wrote.

Apple has contacted those using the term "App Store" to ask them to stop. Apparently, many of those who have refused cite Microsoft's challenge of the filing as reason to continue use of the phrase pending a decision. Apple first filed for the trademark in 2008--the first time Google's Ngram logged use of the word entering discourse.

Read the full filing here.

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