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Judge says Apple has 'stumbling block' in trademark case against Amazon

post #1 of 53
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A U.S. District Judge said on Wednesday that she will "probably" deny Apple's trademark infringement request to block Amazon's Appstore for Android because the iPhone maker has yet to produce "real evidence" that customers have confused it with the App Store.

At a hearing in an Oakland federal court on Wednesday, U.S. District Judge Phyllis Hamilton remarked that Apple has a "stumbling block" in proving that customers would confuse Apple's App Store with Amazon's Appstore for Android, Reuters reports.

That obstacle is Apple's inability to produce real evidence of actual confusion, the judge said. Im troubled by the showing that youve made so far, but thats where youre likely not to prevail at this early juncture. Hamilton has yet to make a final ruling in the case, and plans to reread some of the supporting papers, according to an individual present at the hearing.

In March, Apple sued the online retailer over its use of the App Store trademark. The complaint accused Amazon of "improperly using" the mark for its mobile software developer program and "unlawfully" using it to attract developers to its platform. Apple stated in its filing that it had contacted Amazon three times asking them to cease using the trademark, but had not received a "substantive response."

In spite of the suit, Amazon proceeded with opening its Appstore for Android just days later. The digital download service includes a "Test Drive" feature that allows users to try out an Android application before buying it.



Amazon eventually responded with a filing, claiming the "app store" term is generic and would not cause confusion. Apple has countered the argument with subsequent filings, including one that alleges the Amazon Appstore is "inferior and will tarnish Apple's mark." According to Apple, Amazon's storefront poses a security threat because it offers applications for "rooted" Android devices, which are more vulnerable to security breaches.

Microsoft has even cited Amazon's store in its own objections to the mark. The Windows giant has been the most vocal opponent to the "App Store" trademark, alleging that the term is generic. Apple responded by asserting that if the App Store trademark is generic, so is Microsoft's Windows mark.
post #2 of 53
Amazon should realise that there are a lot of people who won't buy anything from Amazon every again if they win this suit.

It's all so childish. Just think up an original name for cripes sake. Is it that hard?

The fact that they don't want to think up an original name is pretty much proof of Apple's claim IMO. If they weren't trafficking on the goodwill already established by Apple with the name, then any other name would do just as well. But any other name *wouldn't* do as well, because it doesn't have the same impact as copying Apple's already well-known moniker.
post #3 of 53
I've always thought of a "stumbling block" as a very specific issue that makes a specific task difficult. The article, however fails to mention anything specific. Did the Judge mention what the stumbling block was or would a more general "up hill climb" been more appropriate?
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post #4 of 53
Quote:
Originally Posted by Bageljoey View Post

I've always thought of a "stumbling block" as a very specific issue that makes a specific task difficult. The article, however fails to mention anything specific. Did the Judge mention what the stumbling block was or would a more general "up hill climb" been more appropriate?

The judge stated she was troubled by Apple's inability to produce evidence that anyone is confused by it; so unless they can produce that evidence she's pretty much told them it's over.
post #5 of 53
Quote:
Originally Posted by Prof. Peabody View Post

Amazon should realise that there are a lot of people who won't buy anything from Amazon every again if they win this suit.

And you should realize that your statement is hyperbole and that this will not impact Amazon's online retail sales at all, excepting maybe you.
post #6 of 53
Quote:
Originally Posted by Object-X View Post

The judge stated she was troubled by Apple's inability to produce evidence that anyone is confused by it; so unless they can produce that evidence she's pretty much told them it's over.

I think that's the problem with having such a generic trademark.

You couldn't release a Toyota or open a McDonald's store without people being confused with the real product.

However when the terms "app", "store" and the combination "app store" were all in use before the iOS App Store, it's harder to believe that people will think Amazon is selling apps for iOS.

Apple should have had the foresight to call it the iStore or something they could really own.

I do think Amazon are only using "Appstore" because Apple made it popular. I'm not sure how Apple prove that though.
post #7 of 53
Quote:
Originally Posted by Prof. Peabody View Post

The fact that they don't want to think up an original name is pretty much proof of Apple's claim IMO.

Imagine Apple produced a softdrink called Apple-Joos, lets imagine it's a very sour apple flavour and that it became enormously popular. Then imagine Amazon decided to get in on the act and created a rival brand - Apple-Zon, with a very similar flavour.

'Foul' cry Apple, 'you've stolen our TM'. 'It's all fair' cry Amazon, 'in this context Apple is a generic because it's the flavour.'. This hypothetical is actually pretty much what happened to Coca-Cola.

Anyway, because 'Apple' is a generic when applied to flavour it's entirely reasonable for our hypothetical beverage copy-cat to want to use it, because they want their product to be associated with the flavour, not the competitor. Even if they secretly do want it to be associated with the competitor, it doesn't matter if it's a generic.

This is Amazon's argument in a (kola)-nutshell. That there is no harm because there will be no confusion, and that the reason that their name happens to be so similar to Apple's name is because the term has become a generic and not because they're hoping for a bit of confusion.

Honestly I think they're lying through their teeth, but it's far from a slam dunk for Apple.
post #8 of 53
A HINT of what Apple can do to further the case against Amazon (*successfully*) is darn good news to me.

In the meantime I will close my account with Amazon and will advise my family and friends to do the same.
post #9 of 53
Who is this "they" you are referring to? Apple is an "it." For instance, you could properly write, "unless it can produce that evidence she pretty much told Apple it is over." A company is a singular entity not a plural one.

Quote:
Originally Posted by Object-X View Post

The judge stated she was troubled by Apple's inability to produce evidence that anyone is confused by it; so unless they can produce that evidence she's pretty much told them it's over.
post #10 of 53
Quote:
Originally Posted by Prof. Peabody View Post

Amazon should realise that there are a lot of people who won't buy anything from Amazon every again if they win this suit.

It's all so childish. Just think up an original name for cripes sake. Is it that hard?

The fact that they don't want to think up an original name is pretty much proof of Apple's claim IMO. If they weren't trafficking on the goodwill already established by Apple with the name, then any other name would do just as well. But any other name *wouldn't* do as well, because it doesn't have the same impact as copying Apple's already well-known moniker.

I don't think a substantial number of people even know that this lawsuit exists, let alone are they picking sides,

The VAST majority of people (read: non tech site message board people like us) don't follow this stuff remotely close enough to care. They just want to be able to go and get Angry Birds and Doodle Jump for their phones, regardless if it's from Apple's App Store or Amazon's.

Personally, if I had an Android phone, I would much rather prefer to go through Amazon's store than Google's, since I know Amazon is curating their store.
post #11 of 53
Me too. Have her call me. I am confused.]
post #12 of 53
Quote:
Originally Posted by hittrj01 View Post

Personally, if I had an Android phone, I would much rather prefer to go through Amazon's store than Google's, since I know Amazon is curating their store.

Given that they're not even adequately curating their book store, it's hard to believe they'll do a much better job with programs.

http://www.salon.com/books/amazon/in...06/21/spamazon
post #13 of 53
Quote:
Originally Posted by Firefly7475 View Post

However when the terms "app", "store" and the combination "app store" were all in use before the iOS App Store, it's harder to believe that people will think Amazon is selling apps for iOS.

I haven't actually seen a mass market case of something called an 'App Store' before Apple did, so the phrase probably wasn't a generic when they first coined it - any more than 'Rollerblade' is. It was just a good descriptive brand.

Unfortunately for Apple the term genericized at lightning speed, and even Steve Jobs kinda used it as a generic when he spoke of Lion users getting 'a mac app store'. That indefinite article could end up being very expensive.
post #14 of 53
Quote:
Originally Posted by cloudgazer View Post

Unfortunately for Apple the term genericized at lightning speed,...

The term 'app' wasn't coined by Apple. It was in use before Apple. Apple did make it popular with the popularity of iOS devices, but that doens't make it trademark-able by Apple.

Back in the day......computers ran programs.

Today......devices run apps.

It's generic.
post #15 of 53
Apple made it popular even though it is as generic as a ridge cut potatoes. The tech media and business should at least acknowledge that by mentioning the company name in full when describing theirs and others. If Apple case is dismissed due to the lack of evidence perhaps somebody should monitor Amazon's app store regardless of any concerns of privacy so to gather evidence.

If all fail, the attempt to get evidence or the case then I suppose anybody out there with similar position in the future should watch their back lest Apple decided to hijack theirs. Mind, if anything, with the current rate only Apple could make generic term distinctive.

BTW, this would have implication to the Mac App Store as well and Amazon (perhaps some other site as well) also sell this (software download).
post #16 of 53
I thought you could get App-le Apps at Amazon's App store. And get the Amazon generic best deal. But no.
post #17 of 53
Quote:
Originally Posted by Prof. Peabody View Post

Amazon should realise that there are a lot of people who won't buy anything from Amazon every again if they win this suit.

It's all so childish. Just think up an original name for cripes sake. Is it that hard?

You'll take some flak for the slightly exaggerated way in which you're making your point, but fundamentally, you're spot on (so screw them): Amazon signals great weakness and a basic lack of creativity by naming their store as they did.

It's truly childish on their part.
post #18 of 53
Quote:
Originally Posted by frugality View Post

The term 'app' wasn't coined by Apple. It was in use before Apple. Apple did make it popular with the popularity of iOS devices, but that doens't make it trademark-able by Apple.

Back in the day......computers ran programs.

Today......devices run apps.

It's generic.

You misunderstand, App was generic, there's no dispute, but App Store wasn't. Combining two generic words doesn't produce a generic word - cheesecake and factory are both generic, but 'Cheesecake Factory' isn't. In order for App Store to have been a generic there would have to be large numbers of references were people used the phrase in a generic fashion. Those references may exist now, but they didn't exist back in 2008.
post #19 of 53
Quote:
Originally Posted by Splash-reverse View Post

BTW, this would have implication to the Mac App Store as well and Amazon (perhaps some other site as well) also sell this (software download).

Interestingly Amazon don't call their Mac software store Amazon Mac Appstore, they call it Amazon Mac Download Store. Presumably because in that instance they couldn't claim that there was no confusion.
post #20 of 53
Quote:
Originally Posted by Prof. Peabody View Post

Amazon should realise that there are a lot of people who won't buy anything from Amazon every again if they win this suit.

Exaggerate much? What percentage of Amazon customers even know this suit is going on? I bet it's less than 5%
post #21 of 53
I think Amazon is being totally prickish and I will probably think twice before buying anything from them from now on. But go ahead and let them win this trademark case. I think as long as "Amazon" is associated with this terrible, non-curated, malware store, it can tarnish their brand all day long. Let them win and then Apple can just sue them into oblivion when they come out with their tablet: http://www.appleinsider.com/articles...to_rivals.html
post #22 of 53
Quote:
Originally Posted by cloudgazer View Post

You misunderstand, App was generic, there's no dispute, but App Store wasn't. Combining two generic words doesn't produce a generic word - cheesecake and factory are both generic, but 'Cheesecake Factory' isn't. In order for App Store to have been a generic there would have to be large numbers of references were people used the phrase in a generic fashion. Those references may exist now, but they didn't exist back in 2008.

So someone could have trademarked 'grocery store' back in the day. So it comes down not to ingenuity and inventiveness, but merely timing.

Sorry, I don't buy it. I hope our legal system is indeed smarter than that. (I may be reaching here.)

I can see it now.....around a conference table at Apple...."so what are we going to call this place where you can buy our Apps?"......."Well 'DUH', Bob....we call it the App Store!"...."Quick, let's trademark it because it's so plain that it's bound to be used by others!" And this is why marketing VP's are paid so much, I s'pose.

What probably happened, though, is that when Apple coined the phrase, they thought of it as a generic term. If they had come up with something that was actually inventive, they would have trademarked it right off the bat. But only when Amazon came out with their app store did Apple say to themselves, "y'know, we should have trademarked that silly, generic term I guess....."
post #23 of 53
This just in.

Apple has just trademarked the term "Amazo Store" that sells only Apple's amazing products.

Eat that Bezos!
post #24 of 53
Quote:
Originally Posted by Prof. Peabody View Post

Amazon should realise that there are a lot of people who won't buy anything from Amazon every again if they win this suit.

It's all so childish. Just think up an original name for cripes sake. Is it that hard?

The fact that they don't want to think up an original name is pretty much proof of Apple's claim IMO. If they weren't trafficking on the goodwill already established by Apple with the name, then any other name would do just as well. But any other name *wouldn't* do as well, because it doesn't have the same impact as copying Apple's already well-known moniker.

I think Apple should create the Apple Amazon Store and see how they like searching pointing to www.apple.com vs Amazon.com for sales.
post #25 of 53
Quote:
Originally Posted by frugality View Post



What probably happened, though, is that when Apple coined the phrase, they thought of it as a generic term. If they had come up with something that was actually inventive, they would have trademarked it right off the bat. But only when Amazon came out with their app store did Apple say to themselves, "y'know, we should have trademarked that silly, generic term I guess....."

Very convincing. Except for the fact that you are talking out of your ass.

It doesn't take more than 5 seconds and an Internet connection to discover that Apple filed for a trademark of the term "App Store" back in 2008 when the App Store was launched for iOS and long before Amazon, Google or MS decided to copy the term...
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post #26 of 53
Quote:
Originally Posted by frugality View Post

So someone could have trademarked 'grocery store' back in the day. So it comes down not to ingenuity and inventiveness, but merely timing.

No because by the time trademarks existed that was already a generic

Quote:
Sorry, I don't buy it. I hope our legal system is indeed smarter than that. (I may be reaching here.)

Sorry to disappoint you on the legal system. 1-Click got patented, and trademarked - by Amazon of course. Can you get any more generic than that?

Fair and Balanced is trademarked by Fox News, though in that instance one can perhaps claim that it's not generic when it's applied to rabid rightwing lunacy.

Windows is trademarked by Microsoft.

Google is still a valid trademark, in spite of the fact that it is now a heavily used verb.

Quote:
What probably happened, though, is that when Apple coined the phrase, they thought of it as a generic term. If they had come up with something that was actually inventive, they would have trademarked it right off the bat. But only when Amazon came out with their app store did Apple say to themselves, "y'know, we should have trademarked that silly, generic term I guess....."

They did TM it, at least in the US, though the international filings were later. As to the name being uninventive - consider the options. You want your product to be immediately identifiable by its name, i<STUFF> was a good meme because it was both descriptive and non generic. But now iWorld+iDog are using it, so Apple ends up having to pay a ton for each new TM.
  • iAppStore sounds horrid, unless you're Italian maybe
  • iStore is too vague,
  • Apple App Store sounds ridiculous,
  • Apple Store means something else already
  • iPhone App Store is clumsy and they clearly already had the iPad in mind.
  • iOS App Store fails because iOS wasn't a brand back then, also it's ugly and sounds horrid for non Italians.

I bet when they finally decided on App Store they were a bit nervous but hey, this was back in mid 2008 and there wasn't anybody else with a functioning App Store to get confused with. .
post #27 of 53
Quote:
Originally Posted by frugality View Post

The term 'app' wasn't coined by Apple. It was in use before Apple. Apple did make it popular with the popularity of iOS devices, but that doens't make it trademark-able by Apple.

Apple made the term popular well before iDevices.

The phrase "application program" was used interchangeably with the shortened "application" for Inside Macintosh - written in 1984 - but it was also commonly used to describe programs for the Apple II. If you're not convinced consider the phrase "killer app" - it's generally accepted the first "killer app" was Dan Bricklin's VisiCalc (at least Wikipedia thinks so). It was written for the Apple II, and was instrumental in that computer's unprecedented success.

Contrary to what you wrote I don't remember nor can I find any reference to the term "application" to specifically describe a computer program prior to the Apple II. If you can unearth some reference to it I'm sure Microsoft and Amazon would like to know.

It's probably way too late for Apple to claim ownership of the term "app", but I understand their concern for its potential misuse.

Quote:
Back in the day......computers ran programs.

Yes, and long after the Macintosh was introduced, PCs still continued to favor the term "program". When Windows began to emulate the Mac's GUI, the icons themselves became synonymous with "applications" since they looked so similar to Susan Kare's original concepts. Even then, "applications" were generally associated with a "suite" of programs - such as MS Office.



^^^ this is an application
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post #28 of 53
Quote:
Originally Posted by AppleInsider View Post

...iPhone maker has yet to produce "real evidence" that customers have confused it with the App Store....
That obstacle is Apple's inability to produce real evidence of actual confusion,
.

Yep, "Apple Word" software would not actually confuse.
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post #29 of 53
Quote:
Originally Posted by cloudgazer View Post

I bet when they finally decided on App Store they were a bit nervous but hey, this was back in mid 2008 and there wasn't anybody else with a functioning App Store to get confused with.

I'm not sure what they were thinking.

SalesForce already had an app store in 2006.

Its release received press coverage here, here, here, here and probably other places as well.
post #30 of 53
Quote:
Originally Posted by city View Post

Yep, "Apple Word" software would not actually confuse.

If you do not undersrand trademark law, you should try to refrain from posting on matters that pertain to trademark law.
post #31 of 53
Quote:
Originally Posted by Prof. Peabody View Post

Amazon should realise that there are a lot of people who won't buy anything from Amazon every again if they win this suit.

It's all so childish. Just think up an original name for cripes sake. Is it that hard?

The fact that they don't want to think up an original name is pretty much proof of Apple's claim IMO. If they weren't trafficking on the goodwill already established by Apple with the name, then any other name would do just as well. But any other name *wouldn't* do as well, because it doesn't have the same impact as copying Apple's already well-known moniker.

I dunno that I'd boycott Amazon just because Apple's lawyers didn't make their case. I don't even think Apple trademarked the term. And no, nobody is going to confuse Amazon's App Store for Apple's. How many people went to the Amazon App Store, bought an app, then demanded their money back when they realized they couldn't load it onto their iPhone? I'm guessing...no one.

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post #32 of 53
What is the point of registering a trade name when you can't use it exclusively.

And if the judge denied Apple this then I believe the patent laws are useless too.

And this case may be cited by others not to care about infringing on trade marks and she has also open a can of worms.

Good luck judge Phyllis.
post #33 of 53
Actually I think this case is more of a potential problem for Amazon's own customers. Apple's App Store is clearly the most famous mobile software store in the world. Amazon's less nerdy customers might be under the impression that they're accessing the famous App Store when browsing Amazon's Appstore.

Apple's customers I don't think are at risk of being confused.
post #34 of 53
Quote:
Originally Posted by Firefly7475 View Post

I'm not sure what they were thinking.

SalesForce already had an app store in 2006.

Its release received press coverage here, here, here, here and probably other places as well.

Amusingly that actually strengthens Apple's case that the name wasn't generic in 2006. Look at the Salesforce press release. They're calling their offering AppStore - so capitalized. They never refer to their offering as 'an app store' or an 'appstore' which would imply the term is a generic. Their release is full of statements like 'AppStore will do BLAH', and nowhere do you see 'our AppStore' or 'this AppStore'.

Salesforce actually gave the TM to Apple - http://www.techrepublic.com/blog/mac...k-history/1063. So they're not a competitor for it.

In order to show that the term is generic you need to find significant amounts of writing or speech where it is used, but not as a proper noun.
post #35 of 53
I'd also guess that the overwhelming majority of those that don't use an iPhone have no idea what Apple calls their application market. There's probably even a significant percentage of Apple user's that don't know for sure.

A lot of us probably wrongly assume much of what we discuss here in the forums is common knowledge.
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post #36 of 53
Quote:
Originally Posted by Firefly7475 View Post

I think that's the problem with having such a generic trademark.



However when the terms "app", "store" and the combination "app store" were all in use before the iOS App Store, it's harder to believe that people will think Amazon is selling apps for iOS.

Apple should have had the foresight to call it the iStore or something they could really own.

I do think Amazon are only using "Appstore" because Apple made it popular. I'm not sure how Apple prove that though.

Please show when App Store has been used for a mobile application distribution platform?

http://en.wikipedia.org/wiki/List_of...mobile_devices

App Store - Apple July 10th 2008
Amazon Appstore - Amazon March 2011
post #37 of 53
Quote:
Originally Posted by Jacksons View Post

If you do not undersrand trademark law, you should try to refrain from posting on matters that pertain to trademark law.

As an Apple fan, it's my conclusion that Apple's attorneys "undersrand [sic} trademark law". If it's your perspective that they don't, as an Apple hater, you're the one posting on the wrong site. The trademark was registered properly and then the "App Store" was successfully promoted through "there is an app for that" advertising. Now other companies want to capitalize on that champaign. That is simple and sensible to me. Perhaps there is a "The Container Store" forum for you to check out.
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post #38 of 53
Quote:
Originally Posted by Object-X View Post

The judge stated she was troubled by Apple's inability to produce evidence that anyone is confused by it; so unless they can produce that evidence she's pretty much told them it's over.

i, for one, don't understand the confusion.

i've always associated the name 'AppStore' or 'App Store' with apple. i don't care how it's spelled.
post #39 of 53
Quote:
Originally Posted by city View Post

As an Apple fan, it's my conclusion that Apple's attorneys "undersrand [sic} trademark law". If it's your perspective that they don't, as an Apple hater, you're the one posting on the wrong site. The trademark was registered properly and then the "App Store" was successfully promoted through "there is an app for that" advertising. Now other companies want to capitalize on that champaign. That is simple and sensible to me. Perhaps there is a "The Container Store" forum for you to check out.

and the whole its not an App it's a Super App advertising confuses me because as far as I can tell the examples they use are not exclusive to a given platform - so how does that distinguish your platform from others? or does it just reinforce beliefs held by those with no direct experience with Apple products?

On the other hand - although there is overlap in cases such as Angry Birds being offered for multiple platforms - I don't see how anyone could easily be confused - has even a single person complained to Amazon that an app purchased there failed to run on their iOS device or a single person complained to Apple that an app purchased there failed to run on the Android or Windows device?

And if the mark is so important - why does iTunes still say "iTunes Store" and not "App Store" ? because it includes more than just apps? well then how about two links - one for Apps and another for everything else? I would like to be abel to more easily launch into Apps only store using iTunes.
post #40 of 53
Quote:
Originally Posted by Prof. Peabody View Post

Amazon should realise that there are a lot of people who won't buy anything from Amazon ever again if they win this suit.

Yes, I'm sure Amazon's lawyers are already preparing the bankruptcy paperwork after realizing how much money they're going to lose from irate iOS users if/when they win the case. Talk about childish...
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