I definitely think Microsoft has a point. And if Apple didn't follow the rules in its brief then it really should know better than to try and pull a fast one.
I mean, OK, let's swing with the whole arrogance thing here and pretend that the Apple legal arrogantly submitted their response in controversion to accepted practice and guidelines. Any idiot lawyer worth the fees knows you don't arbitrarily ignore standards and practices when you are defending a challenge. Microsoft is trying desperately to throw anything it can under the Apple locomotive to impede progress. This filing is an excellent example of that as was called out.
I know, you're not a lawyer but you slept at a Holiday Inn last night - right?
I can't believe there is even any debate about this. Apple does not have the right to trademark the name "App Store." The word "app" has been around for decades. It is a generic noun. Look it up in the dictionary. And combining it with the word "Store" to name a store where they sell apps is not unique or novel. They should have no exclusive right to that term as a name for their app store.
Apple's move is akin to trying to trademark the term "Shoe Store." And despite some of the earlier claims in this thread, you cannot trademark something like "Shoe Store" even if you open the first one. Now if you, for example, decided to open a restaurant called "Shoe Store," than you probably could make a case that you deserve the exclusive right to the name "Shoe Store" when it comes to restaurant names, assuming no one else has been using that name for their restaurant. Trademark law is all about context.
Comparing this to the "Windows' trademark demonstrates a lack of understanding for what makes a trademark a trademark. Yes, the word "windows" has been around a very long time and it is a generic term when used in its traditional sense, but using it as the name of an operating system was unique and novel. And so Microsoft rightfully earned the exclusive right to call their operating systems by that name. Just like McDonalds has earned the exclusive right to call its restaurants "McDonalds," despite the generations of people who went by that name for centuries before McDonalds the restaurant came to be.
You are unfamiliar with the process and the law behind it - and that's all I'm going to dignify this post with...
This is really a good read. The attorney's bring up some good points.
I find it interesting that the document also includes a screen shot of copyrighted material that was cited but not authorized or citied as being used with permission. The photo's of the Register Traded marked iPhone is also used written permission. So what's a guy to do?
You are unfamiliar with the process and the law behind it - and that's all I'm going to dignify this post with...
Well, I guess this is where I say "No, YOU are unfamiliar with the process and the law behind it - and that's all I'M going to dignify this post with..."
We're simply having a discussion on the topic. I don't see why you even bother to post if that's all you have to offer. Please make your case if you have one.
Well, I guess this is where I say "No, YOU are unfamiliar with the process and the law behind it - and that's all I'M going to dignify this post with..."
We're simply having a discussion on the topic. I don't see why you even bother to post if that's all you have to offer. Please make your case if you have one.
Well I can say that too. "No, YOU are unfamiliar with the process and the law behind it - and that's all I'M going to dignify this post with..."
Your post was utterly bereft of justification that hasn't already been identified as broken and ineffective over the past couple weeks and at least two other threads on this board. Just because you don't like it doesn't mean it isn't legal. EVERY trademark is "obvious" to somebody that might not like it, that doesn't make them right either.
Established trademarks (maybe some are expired, but they were in use for awhile)
Save Mart - both components are derived from trivial common nouns
K Mart - both components are derived from trivial common nouns
Tiffany's - just a Name that was already used by someone else in business before!
Penny's - either a trivial common noun or a name
Three-Peat - both components are derived from trivial common words
Snickers - a common word for a small laugh
Da Bears - both components are derived from trivial common words (it wasn't even trademarked by the original creators!)
New York Times - a proper nouns and a common word
Wow, all that. Widely understood to be valid by anyone, yet so generic and basic. Yeah, you're the shiznit. Ooops, that may be trademarked too.
Well I can say that too. "No, YOU are unfamiliar with the process and the law behind it - and that's all I'M going to dignify this post with..."
Your post was utterly bereft of justification that hasn't already been identified as broken and ineffective over the past couple weeks and at least two other threads on this board. Just because you don't like it doesn't mean it isn't legal. EVERY trademark is "obvious" to somebody that might not like it, that doesn't make them right either.
Established trademarks (maybe some are expired, but they were in use for awhile)
Save Mart - both components are derived from trivial common nouns
K Mart - both components are derived from trivial common nouns
Tiffany's - just a Name that was already used by someone else in business before!
Penny's - either a trivial common noun or a name
Three-Peat - both components are derived from trivial common words
Snickers - a common word for a small laugh
Da Bears - both components are derived from trivial common words (it wasn't even trademarked by the original creators!)
New York Times - a proper nouns and a common word
Wow, all that. Widely understood to be valid by anyone, yet so generic and basic. Yeah, you're the shiznit. Ooops, that may be trademarked too.
You've given another group of examples that demonstrate a lack of understanding for the concept. The question is not whether the words are simply generic, but whether they describe the product/service in a generic way. Naming your candy bar "Snickers" is new and novel. "Snickers" does not generically describe candy bars. "K Mart" does not generically describe department stores. And so on.
But "App Store" does generically describes stores where apps are sold.
You've given another group of examples that demonstrate a lack of understanding for the concept. The question is not whether the words are simply generic, but whether they describe the product/service in a generic way. Naming your candy bar "Snickers" is new and novel. "Snickers" does not generically describe candy bars. "K Mart" does not generically describe department stores. And so on.
But "App Store" does generically describes stores where apps are sold.
Dude you are blind to reason.
S-Mart is Savings Mart. Exactly where you go to get savings at a supermarket. Exactly the same as the App Store.
K-Mart is the same thing, only taking a K from the founders name. But mart is definitely there as a shortened generic word for a place to shop.
Your arguments also utterly miss the mark with the other trademarks. They show any set of words is trademarkable in the early portion of common usage. The only hurdle is to show that the words have not become ubiquitous for any related use.
App Store is not ubiquitous for any particular version of a place to buy applications. The other online stores are referred to as storefronts or marketplaces. Apple called theirs "App Store" from the very beginning, and advertised that name in heavy rotation. Nobody else did. Thats normally enough to pass muster in cases that aren't disputed.
No, MS is just getting pissy, and they aren't even trying to use the term in the name of their "Marketplace Hub". They chose a self-defeating name for their storefront, which may very well be a significant reason their case fails.
Simply, Microsoft tacitly and implicitly supported Apple's uniqueness of App Store by not using App Store in their storefront name. If MS really wanted to kleenex or xerox "app store" that would have been the manner to set it up. Make it so there is doubt in the consumers mind. But they didn't, MS ceded the term App Store to Apple's exclusive use in the marketplace via a routine daily business decision. THAT will go a long way with a Judge because it shows the real impact of the mark in the trade, not just some lawyerly paid whinghing by one rival against another.
S-Mart is Savings Mart. Exactly where you go to get savings at a supermarket. Exactly the same as the App Store.
K-Mart is the same thing, only taking a K from the founders name. But mart is definitely there as a shortened generic word for a place to shop.
Your arguments also utterly miss the mark with the other trademarks. They show any set of words is trademarkable in the early portion of common usage. The only hurdle is to show that the words have not become ubiquitous for any related use.
App Store is not ubiquitous for any particular version of a place to buy applications. The other online stores are referred to as storefronts or marketplaces. Apple called theirs "App Store" from the very beginning, and advertised that name in heavy rotation. Nobody else did. Thats normally enough to pass muster in cases that aren't disputed.
No, MS is just getting pissy, and they aren't even trying to use the term in the name of their "Marketplace Hub". They chose a self-defeating name for their storefront, which may very well be a significant reason their case fails.
Simply, Microsoft tacitly and implicitly supported Apple's uniqueness of App Store by not using App Store in their storefront name. If MS really wanted to kleenex or xerox "app store" that would have been the manner to set it up. Make it so there is doubt in the consumers mind. But they didn't, MS ceded the term App Store to Apple's exclusive use in the marketplace via a routine daily business decision. THAT will go a long way with a Judge because it shows the real impact of the mark in the trade, not just some lawyerly paid whinghing by one rival against another.
The law is clear. A generic product name followed by ?store? is generic for retail store services featuring the product and does not qualify for trademark status. "K" is not a generic product name. Kmart is not a generic term for store or mart.
The law is clear. A generic product name followed by ?store? is generic for retail store services featuring the product and does not qualify for trademark status. "K" is not a generic product name. Kmart is not a generic term for store or mart.
Not so on both counts. There is no "special list" of automagically excluded terms.
IANAL, but here is the USPTO's synopsis of the laws:
37 C.F.R. §2.41. Proof of distinctiveness under section 2(f).
(a)... (b)...
?To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.? Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851 n.11, 214 USPQ 1, 4 n.11 (1982).
That's all she wrote. Apple could ride that one to the bank. There's lots of other ways to illustrate distinctiveness too, like:
1213.05 ?Unitary? Marks is all about how compound words can be registered interpreted as a single mark rather than as individual words.
1213.06 Entire Mark May Not Be Disclaimed describes how terms in a unitary trademark are legally handled, as in the individual words don't get owned as part of the trademark, just the composite use.
Again this all goes towards dispelling the notion of some form of blanket generic term issue with trademarks. The laws are explicitly written to have a specific means for dealing with the difference between the individual words and the composite registered mark meaning.
This was trivially easy to look up. I suggest you do your reading.
Being a lawyer, tables of contents and table of authorities are quite common. They do not count towards the page limit. So Apple should be fine. I also checked the font by converting the court doc to Word and it appears to be Times New Roman at 11 point font. Most people do not file such complaints, at least in my years of working and I've seen a whole lot worse.
I can understand limits, I just wonder what's happened to the concept of word counts. Words are what people write and read, not pages. The standards for page limits and font sizes appear to be holdovers from the days of typewriters, when your choices were pica or elite, single or double spacing, and that's about all.
Comments
I definitely think Microsoft has a point. And if Apple didn't follow the rules in its brief then it really should know better than to try and pull a fast one.
I mean, OK, let's swing with the whole arrogance thing here and pretend that the Apple legal arrogantly submitted their response in controversion to accepted practice and guidelines. Any idiot lawyer worth the fees knows you don't arbitrarily ignore standards and practices when you are defending a challenge. Microsoft is trying desperately to throw anything it can under the Apple locomotive to impede progress. This filing is an excellent example of that as was called out.
I know, you're not a lawyer but you slept at a Holiday Inn last night - right?
I can't believe there is even any debate about this. Apple does not have the right to trademark the name "App Store." The word "app" has been around for decades. It is a generic noun. Look it up in the dictionary. And combining it with the word "Store" to name a store where they sell apps is not unique or novel. They should have no exclusive right to that term as a name for their app store.
Apple's move is akin to trying to trademark the term "Shoe Store." And despite some of the earlier claims in this thread, you cannot trademark something like "Shoe Store" even if you open the first one. Now if you, for example, decided to open a restaurant called "Shoe Store," than you probably could make a case that you deserve the exclusive right to the name "Shoe Store" when it comes to restaurant names, assuming no one else has been using that name for their restaurant. Trademark law is all about context.
Comparing this to the "Windows' trademark demonstrates a lack of understanding for what makes a trademark a trademark. Yes, the word "windows" has been around a very long time and it is a generic term when used in its traditional sense, but using it as the name of an operating system was unique and novel. And so Microsoft rightfully earned the exclusive right to call their operating systems by that name. Just like McDonalds has earned the exclusive right to call its restaurants "McDonalds," despite the generations of people who went by that name for centuries before McDonalds the restaurant came to be.
You are unfamiliar with the process and the law behind it - and that's all I'm going to dignify this post with...
I find it interesting that the document also includes a screen shot of copyrighted material that was cited but not authorized or citied as being used with permission. The photo's of the Register Traded marked iPhone is also used written permission. So what's a guy to do?
You are unfamiliar with the process and the law behind it - and that's all I'm going to dignify this post with...
Well, I guess this is where I say "No, YOU are unfamiliar with the process and the law behind it - and that's all I'M going to dignify this post with..."
We're simply having a discussion on the topic. I don't see why you even bother to post if that's all you have to offer. Please make your case if you have one.
You can't trademark the name "Grocery Store" or "Department Store."
You shouldn't be able to trademark the name "App store."
Might as well fight ridiculousness with ridiculousness. Go Microsoft.
Edit: Can I legally change my name to App Store?
How 'bout App L. Store?
It is generic but there are tons of trademarked generic names like "The Container Store" and "Public Storage"
Well, I guess this is where I say "No, YOU are unfamiliar with the process and the law behind it - and that's all I'M going to dignify this post with..."
We're simply having a discussion on the topic. I don't see why you even bother to post if that's all you have to offer. Please make your case if you have one.
Well I can say that too. "No, YOU are unfamiliar with the process and the law behind it - and that's all I'M going to dignify this post with..."
Your post was utterly bereft of justification that hasn't already been identified as broken and ineffective over the past couple weeks and at least two other threads on this board. Just because you don't like it doesn't mean it isn't legal. EVERY trademark is "obvious" to somebody that might not like it, that doesn't make them right either.
Established trademarks (maybe some are expired, but they were in use for awhile)
Save Mart - both components are derived from trivial common nouns
K Mart - both components are derived from trivial common nouns
Tiffany's - just a Name that was already used by someone else in business before!
Penny's - either a trivial common noun or a name
Three-Peat - both components are derived from trivial common words
Snickers - a common word for a small laugh
Da Bears - both components are derived from trivial common words (it wasn't even trademarked by the original creators!)
New York Times - a proper nouns and a common word
Wow, all that. Widely understood to be valid by anyone, yet so generic and basic. Yeah, you're the shiznit. Ooops, that may be trademarked too.
Well I can say that too. "No, YOU are unfamiliar with the process and the law behind it - and that's all I'M going to dignify this post with..."
Your post was utterly bereft of justification that hasn't already been identified as broken and ineffective over the past couple weeks and at least two other threads on this board. Just because you don't like it doesn't mean it isn't legal. EVERY trademark is "obvious" to somebody that might not like it, that doesn't make them right either.
Established trademarks (maybe some are expired, but they were in use for awhile)
Save Mart - both components are derived from trivial common nouns
K Mart - both components are derived from trivial common nouns
Tiffany's - just a Name that was already used by someone else in business before!
Penny's - either a trivial common noun or a name
Three-Peat - both components are derived from trivial common words
Snickers - a common word for a small laugh
Da Bears - both components are derived from trivial common words (it wasn't even trademarked by the original creators!)
New York Times - a proper nouns and a common word
Wow, all that. Widely understood to be valid by anyone, yet so generic and basic. Yeah, you're the shiznit. Ooops, that may be trademarked too.
You've given another group of examples that demonstrate a lack of understanding for the concept. The question is not whether the words are simply generic, but whether they describe the product/service in a generic way. Naming your candy bar "Snickers" is new and novel. "Snickers" does not generically describe candy bars. "K Mart" does not generically describe department stores. And so on.
But "App Store" does generically describes stores where apps are sold.
You've given another group of examples that demonstrate a lack of understanding for the concept. The question is not whether the words are simply generic, but whether they describe the product/service in a generic way. Naming your candy bar "Snickers" is new and novel. "Snickers" does not generically describe candy bars. "K Mart" does not generically describe department stores. And so on.
But "App Store" does generically describes stores where apps are sold.
Dude you are blind to reason.
S-Mart is Savings Mart. Exactly where you go to get savings at a supermarket. Exactly the same as the App Store.
K-Mart is the same thing, only taking a K from the founders name. But mart is definitely there as a shortened generic word for a place to shop.
Your arguments also utterly miss the mark with the other trademarks. They show any set of words is trademarkable in the early portion of common usage. The only hurdle is to show that the words have not become ubiquitous for any related use.
App Store is not ubiquitous for any particular version of a place to buy applications. The other online stores are referred to as storefronts or marketplaces. Apple called theirs "App Store" from the very beginning, and advertised that name in heavy rotation. Nobody else did. Thats normally enough to pass muster in cases that aren't disputed.
No, MS is just getting pissy, and they aren't even trying to use the term in the name of their "Marketplace Hub". They chose a self-defeating name for their storefront, which may very well be a significant reason their case fails.
Simply, Microsoft tacitly and implicitly supported Apple's uniqueness of App Store by not using App Store in their storefront name. If MS really wanted to kleenex or xerox "app store" that would have been the manner to set it up. Make it so there is doubt in the consumers mind. But they didn't, MS ceded the term App Store to Apple's exclusive use in the marketplace via a routine daily business decision. THAT will go a long way with a Judge because it shows the real impact of the mark in the trade, not just some lawyerly paid whinghing by one rival against another.
Dude you are blind to reason.
S-Mart is Savings Mart. Exactly where you go to get savings at a supermarket. Exactly the same as the App Store.
K-Mart is the same thing, only taking a K from the founders name. But mart is definitely there as a shortened generic word for a place to shop.
Your arguments also utterly miss the mark with the other trademarks. They show any set of words is trademarkable in the early portion of common usage. The only hurdle is to show that the words have not become ubiquitous for any related use.
App Store is not ubiquitous for any particular version of a place to buy applications. The other online stores are referred to as storefronts or marketplaces. Apple called theirs "App Store" from the very beginning, and advertised that name in heavy rotation. Nobody else did. Thats normally enough to pass muster in cases that aren't disputed.
No, MS is just getting pissy, and they aren't even trying to use the term in the name of their "Marketplace Hub". They chose a self-defeating name for their storefront, which may very well be a significant reason their case fails.
Simply, Microsoft tacitly and implicitly supported Apple's uniqueness of App Store by not using App Store in their storefront name. If MS really wanted to kleenex or xerox "app store" that would have been the manner to set it up. Make it so there is doubt in the consumers mind. But they didn't, MS ceded the term App Store to Apple's exclusive use in the marketplace via a routine daily business decision. THAT will go a long way with a Judge because it shows the real impact of the mark in the trade, not just some lawyerly paid whinghing by one rival against another.
The law is clear. A generic product name followed by ?store? is generic for retail store services featuring the product and does not qualify for trademark status. "K" is not a generic product name. Kmart is not a generic term for store or mart.
The law is clear. A generic product name followed by ?store? is generic for retail store services featuring the product and does not qualify for trademark status. "K" is not a generic product name. Kmart is not a generic term for store or mart.
Not so on both counts. There is no "special list" of automagically excluded terms.
IANAL, but here is the USPTO's synopsis of the laws:
1212.03 Evidence of Distinctiveness Under §2(f)
37 C.F.R. §2.41. Proof of distinctiveness under section 2(f).
(a)... (b)...
?To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.? Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851 n.11, 214 USPQ 1, 4 n.11 (1982).
That's all she wrote. Apple could ride that one to the bank. There's lots of other ways to illustrate distinctiveness too, like:
1212.06 Establishing Distinctiveness by Actual Evidence
1212.06(b) Advertising Expenditures
1212.06(c) Affidavits or Declarations Asserting Recognition of Mark as Source Indicator
1212.06(d) Survey Evidence, Market Research and Consumer Reaction Studies
1212.06(e)(i) First or Only User [my bold & u/l]
And the actual generics section
1213.03(b) Generic Matter and Matter Which Does Not Function as a Mark goes into detail of how a word may be generic, but the word in a particular stylized appearance can be registered. It's not a section on word disqualifications.
1213.05 ?Unitary? Marks is all about how compound words can be registered interpreted as a single mark rather than as individual words.
1213.06 Entire Mark May Not Be Disclaimed describes how terms in a unitary trademark are legally handled, as in the individual words don't get owned as part of the trademark, just the composite use.
Again this all goes towards dispelling the notion of some form of blanket generic term issue with trademarks. The laws are explicitly written to have a specific means for dealing with the difference between the individual words and the composite registered mark meaning.
This was trivially easy to look up. I suggest you do your reading.
Being a lawyer, tables of contents and table of authorities are quite common. They do not count towards the page limit. So Apple should be fine. I also checked the font by converting the court doc to Word and it appears to be Times New Roman at 11 point font. Most people do not file such complaints, at least in my years of working and I've seen a whole lot worse.
I can understand limits, I just wonder what's happened to the concept of word counts. Words are what people write and read, not pages. The standards for page limits and font sizes appear to be holdovers from the days of typewriters, when your choices were pica or elite, single or double spacing, and that's about all.