Microsoft, handset makers take "App Store" trademark fight to EU

Posted:
in iPod + iTunes + AppleTV edited January 2014
Microsoft and several major handset makers, including HTC, Nokia and Sony Ericsson, are now opposing Apple's trademark of the term "App Store" in the European Union for being generic.



Microsoft has lodged a formal application for declaration of invalidity of the "App Store and "Appstore" trademarks with the EU's Community Trade Mark office, the Digital Daily blog reports. The Redmond, Wash., search giant is joined by HTC, Nokia and Sony Ericsson in opposing the trademark in the EU.



"Microsoft and other leading technology companies are seeking to invalidate Apple?s trademark registration for APP STORE and APPSTORE because we believe that they should not have been granted because they both lack distinctiveness,? a Microsoft spokesperson said in a statement. ?The undisputed facts establish that ?app store? means exactly what it says, a store offering apps, and is generic for the services that the registrations cover.?



Apple filed for the "App Store" trademark in July 2008 within weeks of launching the iPhone App Store. The trademark applies to "retail store services featuring computer software provided via the internet and other computer and electronic communication networks; Retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics," as well as the "electronic transmission of data via the internet" and "maintenance, repair and updating of computer software."



In January, Microsoft filed an opposition to the mark with the U.S. Patent & Trademark Office, alleging the term is generic and unregisterable. Apple responded by noting that the "Windows" mark is generic.



"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.



"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."



A day before Amazon launched its Amazon Appstore digital application storefront for Android, Apple filed a suit against the company for violating its trademark. Amazon responded by joining Microsoft in opposition to the mark, also claiming that the trademark is a generic term.



Both Apple and Microsoft have employed the use of linguistic experts to argue their claims for and against the trademark. Apple has also sought to defend its trademark from a pornography store on the Android Market.
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Comments

  • Reply 1 of 55
    jragostajragosta Posts: 10,473member
    The people at Microsoft are idiots.



    How could "Windows" or "Office" be valid trademarks while "App Store" is too generic?
  • Reply 2 of 55
    orlandoorlando Posts: 601member
    Quote:
    Originally Posted by jragosta View Post


    How could "Windows" or "Office" be valid trademarks while "App Store" is too generic?



    Windows is a generic word but it is unique in being used to describe an operating system. You don't say "Windows" to refer in general to GUIs or Operating Systems. If you say "Windows" everyone knows you are talking about the Microsoft product.



    However, people use AppStore very generically to describe all of the different app stores. Say AppStore and people might think you are talking about Apple, Google, Microsoft etc. I find most people say iOS or iPhone AppStore so others know they are talking about the Apple one.
  • Reply 3 of 55
    steven n.steven n. Posts: 1,011member
    Quote:
    Originally Posted by Orlando View Post


    Windows is a generic word but it is unique in being used to describe an operating system. You don't say "Windows" to refer in general to GUIs or Operating Systems. If you say "Windows" everyone knows you are talking about the Microsoft product.



    However, people use AppStore very generically to describe all of the different app stores. Say AppStore and people might think you are talking about Apple, Google, Microsoft etc. I find most people say iOS or iPhone AppStore so others know they are talking about the Apple one.



    All of my friends with Android handsets (without exception) refer to the "Android Market" or the "Marketplace". None of them ever refer to the Android Market by the App Store.



    Windows is a very generic term for a GUI based system. For example X11 Window Manager. Not an OS but it shows that Windows is descriptive and generic.



    Likewise, show me the references to "App Store" prior to 2008? Prior to Windows, I can find lots of references to OSes and the term "windows".
  • Reply 4 of 55
    applesauce007applesauce007 Posts: 1,527member
    Quote:
    Originally Posted by Orlando View Post


    ... I find most people say iOS or iPhone AppStore so others know they are talking about the Apple one.



    That is not true. People do not say iOS AppStore, they just say AppStore to refer to Apple instead of AndroidMarket to refer to Google for example.



    Apple will win this regardless of what the copy cats try to do.



    Time will tell.
  • Reply 5 of 55
    robin huberrobin huber Posts: 3,158member
    Quote:
    Originally Posted by Orlando View Post


    However, people use AppStore very generically to describe all of the different app stores.



    Yeah, they do now, after Apple coined the term and opened the first App Store.
  • Reply 6 of 55
    solipsismsolipsism Posts: 25,726member
    1) I wish I could watch this be argued in court.



    2) The argument here about the Windows trademark is irrelevant. Windows was a unique use for the name of an OS at the time.



    3) I think Jobs using “app store” as a generic term could hurt Apple’s defense.
  • Reply 7 of 55
    solipsismsolipsism Posts: 25,726member
    Quote:
    Originally Posted by Robin Huber View Post


    Yeah, they do now, after Apple coined the term and opened the first App Store.



    Brand name becoming generic happens:
    As part of war reparations specified in the 1919 Treaty of Versailles following Germany's surrender after World War I, Aspirin (along with heroin) lost its status as a registered trademark in France, Russia, the United Kingdom, and the United States, where it became a generic name.



    Today, "aspirin" is a generic word in Australia, France, India, Ireland, New Zealand, Pakistan, Jamaica, the Philippines, South Africa, United Kingdom and the United States. Aspirin, with a capital "A", remains a registered trademark of Bayer in Germany, Canada, Mexico, and in over 80 other countries, where the trademark is owned by Bayer, using acetylsalicylic acid in all markets, but using different packaging and physical aspects for each
  • Reply 8 of 55
    orlandoorlando Posts: 601member
    Here is a question: what generic name do you use to describe all these stores (AppStore, Google Market, Windows MarketPlace, etc)?



    Most people I talk to would say AppStores. I believe Steve Jobs has even been caught saying AppStores when referring to the offering from Google and Microsoft.
  • Reply 9 of 55
    frugalityfrugality Posts: 410member
    This is a window:







    The fact that MS used that term to refer to a rectangular box on a computer screen is a unique use of the word.
  • Reply 10 of 55
    solipsismsolipsism Posts: 25,726member
    Quote:
    Originally Posted by Orlando View Post


    I believe Steve Jobs has even been caught saying AppStores when referring to the offering from Google and Microsoft.



    Jobs during an earnings call last Autumn:

    ?So there will be at least four app stores on Android, which customers must search among to find the app they want and developers will need to work with to distribute their apps and get paid. This is going to be a mess for both users and developers. Contrast this with Apple?s integrated app store, which offers users the easiest-to-use largest app store in the world, preloaded on every iPhone.?
  • Reply 11 of 55
    hirohiro Posts: 2,663member
    Quote:
    Originally Posted by Orlando View Post


    Windows is a generic word but it is unique in being used to describe an operating system. You don't say "Windows" to refer in general to GUIs or Operating Systems. If you say "Windows" everyone knows you are talking about the Microsoft product.



    Actually not. X-Windows came before MS Windows and Apple's MacintoshOS has had windows since the beginning. (Even Steven N. beat me to it--making your point even weaker!!!)



    Just because you can't remember the marketplace of 20-30 years ago doesn't mean you are right.







    Quote:

    However, people use AppStore very generically to describe all of the different app stores.



    The term AppStore didn't exist before Apple used it. Apple trademarked it in 2008 when it opened! And gee, it took Microsoft almost three years, a failed mobile OS launch and a second milquetoast mobile OS launch to even notice.



    Apple filed immediately and has sunk a ton of advertising into the term AppStore. Just because other marketers are too unimaginative to come up with their own terms doesn't allow them to steal it. Even 'Kleenex' is still a valid trademark! And they lost the "generic" fight agains other brands using the word 'kleenex' (note the all important difference in capitalization) in their advertisements because they didn't file soon enough.





    Quote:

    Say AppStore and people might think you are talking about Apple, Google, Microsoft etc. I find most people say iOS or iPhone AppStore so others know they are talking about the Apple one.



    No, Google has a "Marketplace", and nobody thinks about the etc. stores.



    Can't you at least come up with a debate point that isn't broken from the start?
  • Reply 12 of 55
    hirohiro Posts: 2,663member
    Quote:
    Originally Posted by solipsism View Post


    1) I wish I could watch this be argued in court.



    2) The argument here about the Windows trademark is irrelevant. Windows was a unique use for the name of an OS at the time.



    Not really. It's just that none of MS's competitors were childish enough to get all pissy over the name because they were getting beat like a red-headed stepchild in the market.



    You can look at Digital, Apple, IBM, Commodore, Atari, Acorn, Radio Shack amongst others that were all getting slaughtered by MS-DOS and Windows 3.1, and didn't sue over an obviously generic word being capitalized and used for a product name.



    I agree that Windows is also generic is irrelevant though. What is relevant is that laws exist specifically to describe how generic words are to be used in trademarks and Apple seems to have hit all those wickets. Hmmmm, just like MS hit those same wickets in the early 1990's.
  • Reply 13 of 55
    hirohiro Posts: 2,663member
    Quote:
    Originally Posted by solipsism View Post


    Jobs during an earnings call last Autumn:

    “So there will be at least four app stores on Android, which customers must search among to find the app they want and developers will need to work with to distribute their apps and get paid. This is going to be a mess for both users and developers. Contrast this with Apple’s integrated AppStore, which offers users the easiest-to-use largest AppStore in the world, preloaded on every iPhone.”




    TFTFY.





    Apple hasn't trademarked app store Apple trademarked AppStore. The difference makes all the legal difference in the world.
  • Reply 14 of 55
    hirohiro Posts: 2,663member
    Quote:
    Originally Posted by frugality View Post


    This is a window:







    The fact that MS used that term to refer to a rectangular box on a computer screen is a unique use of the word.



    No it's not. Application 'windows' were around LONG before MS trademarked "Windows". "Windows" capitalized and restricted to products in the computer software domain, became a valid trademark, while 'windows' remained a completely generic term useable by everyone with no rights to it by MS.
  • Reply 15 of 55
    orlandoorlando Posts: 601member
    Quote:
    Originally Posted by Hiro View Post


    TFTFY.





    Apple hasn't trademarked app store Apple trademarked AppStore. The difference makes all the legal difference in the world.



    Except on my iPhone it is called App Store not AppStore.



    This can also be seen on the Apple website: http://www.apple.com/iphone/features/app-store.html
  • Reply 16 of 55
    solipsismsolipsism Posts: 25,726member
    Quote:
    Originally Posted by Hiro View Post


    TFTFY.



    Apple hasn't trademarked app store Apple trademarked AppStore. The difference makes all the legal difference in the world.



    1) I understand it’s easy to forget something as simple as space between name, but why not do a quick search before you post? Orlando already took care of it so I won’t go into it any further.



    2) Are you claiming that a space difference between the name would allow another company to use it? If not, then why mention it. If so, then Amazon’s AppStore isn’t stepping on Apple’s App Store trademark, according to you. Note the point of trademarks are to prevent confusion between brands. You can’t use anything that is deemed confusion to the buyer.





    PS: X Window System is the trademark for it, not Windows.
  • Reply 17 of 55
    solipsismsolipsism Posts: 25,726member
    Quote:
    Originally Posted by Orlando View Post


    Except on my iPhone it is called App Store not AppStore.



    This can also be seen on the Apple website: http://www.apple.com/iphone/features/app-store.html



    Here is Apple’s Trademark listing: http://www.apple.com/legal/trademark/appletmlist.html



    edit: As shown in the list App Store℠ for Service Mark. That’s just the trademark notion for a service. What’s telling about this is that Apple has NOT received the ‘®’ for it being a federally registered trademark. That’s not good for Apple as they need no authority to use ‘™’ or ‘℠’.
  • Reply 18 of 55
    hill60hill60 Posts: 6,989member
    Quote:
    Originally Posted by solipsism View Post


    The argument here about the Windows trademark is irrelevant. Windows was a unique use for the name of an OS at the time.



    Just like "App Store" was a unique use for the name of software installed on a phone and later on, on Mac computers.
  • Reply 19 of 55
    solipsismsolipsism Posts: 25,726member
    Quote:
    Originally Posted by hill60 View Post


    Just like "App Store" was a unique use for software installed on a phone and later on, on Mac computers.



    The specifically refer to the latter as Mac App Store. That is very specific to Mac and yet another reason why this could bite Apple in the ass because the argument ?App Store means the iPhone, iPod Touch and iPad?. obviously, and Mac App Store means for Macs.? just sounds too lame to me. They may end up having to use iOS App Store.



    I know you guys want Apple to win, but if you look at objectively there is no way to know. All we can do is look at the evidence and note aspects that could work for or against the companies. This is not as cut and dry as you guys want to believe.
  • Reply 20 of 55
    steven n.steven n. Posts: 1,011member
    Quote:
    Originally Posted by frugality View Post


    This is a window:







    The fact that MS used that term to refer to a rectangular box on a computer screen is a unique use of the word.



    http://www.guidebookgallery.org/screenshots/amigaos10



    And this is a "Window" as well. Predates MS Windows and it is a computer screen showing a workbench full of "Windows".



    So much for your theory. The term "Window" had been used to define the various "Windows" on GUIs for years before MS named an OS that. The term "App" was unique to Apple prior to 2008. You had applets on the web but not Apps. On Windows you had executables and programs but few called them applications.
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