63 Comments

Summary:

In a lawsuit filed on March 18, Apple claims Amazon’s Appstore for Android, is nearly identical to the “App Store,” where Apple sells applications for the iPhone, iPad and iPod touch. Apple is not only justified in going after Amazon, but it’s right to do so.

AppStore-featured

Amazon opened its own app store today for Android devices, and in so doing, it brought down the wrath of Apple. The reason? Amazon is calling its software marketplace the “Appstore,” which, you’ll note, is not unlike Apple’s own “App Store,” where the Mac-maker sells applications for the iPhone, iPad and iPod touch. In its lawsuit, Apple accuses Amazon of infringing on its App Store trademark.

It’s reasonable to think that Apple is being petty by claiming ownership of two commonly used words. The term “app store,” after all, has been around for years; generally speaking, people don’t like it when companies claim rights to relatively neutral language. Critics have trademark law on their side: a company can’t claim exclusive rights when a term is merely descriptive. But that doesn’t mean Apple isn’t justified in going after Amazon.

Apple, after all, was awarded the App Store trademark by the U.S. Patent and Trademark Office in 2010. Microsoft is formally opposing the trademark registration, and an official ruling on that objection is pending. If Microsoft is successful, it could mean the end of Apple’s case against Amazon. Until that happens, however, the iPhone-maker is well within its rights to go after Amazon. Lawyer Evan Brown of Internet Cases explains why the term “App Store” is fair grounds for legal action on Apple’s behalf:

[T]here’s an important exception to the rule of no trademark rights for descriptive terms, and this exception is probably what Apple is relying on: the notion of “acquired distinctiveness.” Simply stated, if a company can show that it has used a descriptive term so extensively that the public has come to associate that descriptive term with the company, the company can claim trademark rights in that term. Apple will no doubt try to show that it has taken great efforts (read: marketing $$) to get the public to associate App Store with its brand. To the extent it can do that, it may have success against Amazon.

What Apple is trying to do is avoid what happened to Kleenex and Xerox: to avoid diluting its brand by allowing words to become part of our lexicon. So while Apple’s App Store may not be the only entity to which the general term “app store” descriptively applies, and even if Apple didn’t coin the term, if people think “Apple” when they hear the term “app store,” the company has a legally defensible position. I find it hard to believe that “app store” specifically is more generally associated with smartphones as a generic category, than with Apple and the iPhone.

And not only can Apple sue, but it should. The App Store has become a very powerful marketing tool and supporting brand for iOS devices. You could argue that the extensive software catalog the App Store provides is now the number one competitive advantage Apple devices have over its competitors. The app gap is narrowing, but it still represents a significant chasm, and one worth vigorously defending. Ceding ownership of the “app store” term would mean losing customer mindshare, which would in turn hasten the decline of its third-party software advantage.

Apple may not make many friends among tech watchers or gadget fans by suing to defend its app store trademark, but just because a course of action is unpopular doesn’t mean it’s wrong. Amazon knew it would be stepping on the tiger’s tail in naming its marketplace the Appstore, and no doubt it, too, was prepared for the consequences. All that remains to be seen now is whether or not the upstart will face a costly rebranding.

  1. Hey Darrell — couldn’t disagree more. I realize that there is a legal basis for suing, although I think it is shaky at best, but to me all it does is make Apple look petty and vindictive. To what end? The term “app store” is about as exclusive to Apple as “bookstore” is to Amazon.

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    1. I don’t think it makes them look all that petty and vindictive, at least not to such an extent that it isn’t worth trying to defend the trademark.

      I can’t think of a serious consumer electronics brand that’s suffered serious long-term damage to its brand as a result of protecting its trademarks or patents. It looks ugly to those of us who watch through a microscope, but the buying public could ultimately care less, IMO.

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      1. I think it makes sense for companies to protect trademarks that actually affect their business, of which Apple has a ton — I don’t think “app store” is one of them.

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      2. Darrell, the reason why this is ludicrous is simple: Apple created the term “App” to be used for any applications sold for the mobile market. Yes, they created “App Store” too, but only in consequence of the items that it sells — Apps. You can’t tell the world, “Henceforth, all mobile applications will be called ‘Apps'” and then complain when someone opens up an App *Store*.

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      3. Given the anti-trust investigations into the exclusivity of the app store (see RealNetworks case, where they will get to cross examine Steve Jobs, as an example) this comes across as heavy handed and will not work in their favor when those cases come for trial.

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    2. Andrew Macdonald Tuesday, March 22, 2011

      If thats the case, how come Microsoft was able to trademark Windows, and Office.

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      1. You don’t see Microsoft suing people for opening up Office Stores.

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      2. Vincent Clement Tuesday, March 22, 2011

        Andrew: Microsoft trademarked “Microsoft Windows”, “Microsoft Office”, “Windows XP” and so on, not “Windows”.

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      3. @Vincent Clement & @Mathew Ingram Try releasing an operating system called “Windows” (easily done – start your own Linux distro and call it “Windows”) or a word processor/spreadsheet package called “Office” and see how long you last before Microsoft sues you to kingdom come.

        Amazon is doing exactly the same thing — they are opening “Appstore” that does *exactly* the same thing a Apple’s App Store. Amazon chose the same name with the clear intention of wanting to share Apple’s limelight. Unless you want to invalidate all trademarks that aren’t made up words like iPod or Xoom Apple has the same rights to App Store as Microsoft does to Windows.

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      4. Andrew Macdonald Tuesday, March 22, 2011

        Thank you Ted. Exactly what I was trying to say, but you explained it in a much better way than I could have.

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      5. It is amazingly convenient and disingenuous to forget that Microsoft sued the linux distribution Lindows into non-existence.

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    3. oh Darrell, I know you have the cool neckbeard, glasses, & you love black shirts. but honestly do you ever get tired of agreeing with & defending Apple on everything?

      here’s a tip because you’re so young, tech is not fashionable, no amount of “geek chic” will ever get you a hot girl. the average person looks at us & laughs, especially at those who promote it as a hip culture.

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    4. Hamranhansenhansen Tuesday, March 22, 2011

      > The term “app store” is about as exclusive to Apple
      > as “bookstore” is to Amazon.

      That is factually incorrect. The term “book store” predates Amazon by decades at least. The term “app store” first appears in Google when it comes out of Steve Jobs’ mouth in mid-2008 when he introduces “App Store.”

      > I think it makes sense for companies to protect trademarks
      > that actually affect their business, of which Apple has a ton
      > — I don’t think “app store” is one of them.

      By definition, all trademarks affect a business. They are names for businesses. The ads you do for a business have to identify it somehow or the ad has no value. Customers have to be able to call a business something as they for example recommend it to another potential customer.

      App Store is a 3 year old multibillion dollar business that has over 100 million customers in over 100 countries, and for which Apple has done millions of dollars of advertising and received the benefits of billions of dollars of word-of-mouth. And you’re saying that its name doesn’t matter? If App Store were a separate business from Apple, it would be one of the world’s largest companies. Bigger than for example Barnes & Noble, Amazon’s biggest eBook competitor.

      > Given the anti-trust investigations

      Nothing sensible about anti-trust has ever been said in a Web page comment and you continue the tradition. IPod has always been able to play music from any source as long as it is encoded in ISO standard universally playable MPEG-4, and iOS has always been able to run apps from any source as long as they are created with W3C standard universally runnable HTML5. iPod could do this before iTunes Music Store even existed, and iOS devices could do this even before App Store existed. If Amazon wanted to sell apps to iOS users, there is nothing stopping them. Instead, Amazon just wants to steal the name of Apple’s system and use it for Android to confuse customers into thinking it is the same thing. Classic trademark theft, nothing to do with anti-trust. And the RealNetworks case was them wanting to put their DRM on iPods, an issue that was made obsolete by the music publishers giving up on DRM.

      > You don’t see Microsoft suing people for opening up Office Stores.

      Microsoft Office is not a store, genius.

      If somebody makes a suite of office productivity apps called “Office” they will get sued.

      > Andrew: Microsoft trademarked “Microsoft Windows”,
      > “Microsoft Office”, “Windows XP” and so on, not “Windows”.

      Incorrect. It is “Windows(R)”. Even though windowing operating systems like Mac OS had “windows” before Microsoft Windows. There were no “app stores” before App Store.

      > You can’t tell the world, “Henceforth, all mobile applications
      > will be called ‘Apps’” and then complain when someone opens
      > up an App *Store*.

      Apple did not tell the world any such thing. They told the world their service for installing applications on Apple devices would be called “App Store” and that is all. The phrase “app store” first appears in Google after Steve Jobs says it in mid-2008 referring to that very service.

      Further, “apps” are not exclusive to mobiles. Every Mac app has the filename extension “.app” on it. And there is also a “Mac App Store.”

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      1. Open Office is still alive and well despite using the term Office for a set of products that do the same thing as MS Office. They got sued for patent infringement but I don’t think MS ever sued over the name.

        Also Steve Jobs wasn’t the first person in the world to think to abbreviate the word application with app, it has been done for years. A quick Google search will pull up plenty of pages from before 2008 where people abbreviate application as app. Yes he was the first to call his application store “App Store” but it is just two generic descriptive words that describe what the store is. From the name it is clear that it is a store that sells applications, it does not imply anything about what brand or type of applications are sold. However, Apple has spent millions trying to have the term associated exclusively with their brand so maybe they will win because “acquired distinctiveness” as the article points out. I just think it is lame of them to take generic terms then spend millions trying to have them associated exclusively with their brand and then sue anyone else who tries to use these generic terms to describe their own business. It just leads to confusion for consumers as Apple can claim the competition doesn’t have an app store even though the competitors do have stores that sell apps they just can’t be called app store. This of course is the goal of Apple so that they can make uninformed consumers believe that somehow the idea of apps is exclusive to iphone and that “if you don’t have an iphone….” you don’t have an app store.

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  2. Nick Friederich Tuesday, March 22, 2011

    While you’re right in thinking that Apple should want to prevent the diluting of it’s brand, litigation isn’t going to stop the general population from referring to any place where you can download apps as an “app store.” No matter how many times I hear “Android Marketplace” my brain will always translate that to “Oh they mean the Android App Store.”

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    1. Hamranhansenhansen Tuesday, March 22, 2011

      That is because of the work Apple has done, the advertising they have done, the success they have had.

      People call all paper tissues “Kleenex,” but that doesn’t mean I can launch a new line of paper tissues called “Kleenex.” People call all music players “iPods” too, but still not OK for Amazon to make a music player and call it “iPod.”

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      1. Let’s compare apples to apples. :)

        Kleenex, and Xerox didn’t mean anything to anyone until they invented those terms.

        “app” has been used for decades, “store” has been used for centuries, and as a result, calling somewhere you buy “apps” an “App store” is obvious. If you mentioned an “app store” to anyone who understood “app” they would immediately understand the term.

        You are correct that Amazon can’t create an MP3 player and call it “iPod” but they sure as heck can create one called “MP3 Player” – and that’s the difference.

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  3. Even if Apple win this battle inside the court, it’ll lose it outside. People will keep referring to other stores as “app store” because it’s just simpler.

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  4. While Apple is entitled to go after their trademark, I think app store is pretty generic sounding, esp. for those of us who don’t live in Apple land.

    But as for Amazon I think they knew this would happen. In fact I’m not sure if they even care if they have to change the name. They are going to get heaps of free publicity about their new app store either way. In any case they have the 1-click shopping patent, that I think is much more valuable than the brand name ‘app store’

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  5. Michael E. Schmidlen Tuesday, March 22, 2011

    Darrell-While the “gods” at Apple may be “justified”, it’s just another (in a never ending) example of the pettiness that we’ve come to expect from them. There will be ABSOLUTELY no “confusion” on the part of the consumer about who & where they are choosing to purchase or download their mobile apps from.

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    1. I think saying that there’s “absolutely” no confusion may be overstating it. There’s plenty of confusion about smartphone platforms and software ecosystems among customers who haven’t yet bought a smartphone, and who aren’t technically proficient. Those customers represent significant potential future growth for smartphone makers, so confusion over branding there is exactly what companies should be most worried about.

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      1. Someday soon Amazon, Google and Microsoft will have to stop following Apple’s huge success and look within to find out what they are actually bringing to the table. Following the megastar that is Apple has become their only path of innovation.

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      2. Kim Jong IL,
        I really can’t tell if you’re joking or not…your post reeks of sarcasm but I think you may actually be serious.

        Amazon and Google made their fortunes by being innovative and doing almost all of it their own ways. Amazon changed the retail market and Google changed…just about everything else. Believing, even for just a second, that their only path of innovation is following the mighty Apple is a hilarious farce.

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      3. @Darrell Etherington: Google and Amazon were very innovative in their original concepts. Unfortunately for them they are one trick ponies.

        Apple on the other hand has revolutionized/popularized the personal computer (Apple II); the GUI/modern PC OS (Mac OS); the tablet/PDA (Newton); the personal music player/online digital music store (iPod/iTunes); the smartphone/app phone (iPhone); the modern tablet (iPad).

        Every single one of those innovations have been copied over and over and over. Amazon and Google have been among those doing the copying. Pretending otherwise is well, pretending…

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      4. I apologize, my comment above was meant @Michael Schaefer

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      5. Ted T., let’s be fair. Apple didn’t have a concept of apps at *all* on their device until after the Android platform was announced, SDK released, and promotion started for developers to write apps for Android. It is true that the iPhone app store came out before Android’s market… but it was only a few months before, and that was mostly because the first actual Android-based device was released after the platform and SDK. (Opposite the way Apple released the iPhone first with no apps and a clear position that web stuff was the One True Way for developers to target the device, with their SDK and apps coming later.)

        It’s not even clear if there *would* be an Apple App Store if Android didn’t push them in that direction.

        These claims of everyone copying from Apple reek of fanboyism. Apple copies from others just as much as others copy from them. And even so, there is nothing *wrong* with copying; especially the kind of copying we are actually talking about here, where a good idea in one place spreads and evolves into other good ideas elsewhere. That is just how progress *happens*.

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      6. @Michael schaefer you must be joking. They companies you name are all copycats with no innovation at all. Google copied altavista, iOS, Linux, and many other companies. Amazon just copied Barnes & Noble, and many other online stores, and applied a marktplaats.nl marketplace, another non-invention. Please clear me up what those companies invented, and I will prove you wrong every step off the way

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      7. Is ios a apple invented name? What about iphone or ipad? Seems like Apple is still mad for having to pay Cisco. Apple does its share of copying. Now when I try to lookup the new features of the latest verson of Cisco’s ios I get a bunch of apple nonsense. Thats a bit more confusing then Amazon App Store.

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    2. Hamranhansenhansen Tuesday, March 22, 2011

      So when a consumer who doesn’t yet have a smartphone is watching TV and sees an ad for Apple App Store and likes it and then searches Google for “App Store” and gets a paid link to Amazon App Store where they buy some apps and order a Samsung Galaxy S to run them, that is not a confused consumer?

      I really don’t think you have even the barest grasp of what trademarks are and how they work.

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    3. Hamranhansenhansen Tuesday, March 22, 2011

      > Ted T., let’s be fair. Apple didn’t have a concept of apps
      > at *all* on their device until after the Android platform
      > was announced, SDK released, and promotion started
      > for developers to write apps for Android

      That is ridiculous. iPhone had apps since day one, using the open standard HTML5 API. At Apple’s WWDC 2007, these apps were heavily promoted to developers. They could be locally installed, appeared with icons on the home screen, had access to GPU acceleration and other hardware features, and could run without a network connection. The App Store SDK that shipped a year later is a second kind of totally optional app development. The first and still only native C application development on a mobile platform.

      The idea that Apple created the App Store SDK overnight in response to Android is completely ridiculous. The App Store SDK was used by developers at Apple in 2006 to create iPhone’s built-in apps. The time between when iPhone shipped and when the SDK shipped was spent prepping the already built SDK for 3rd party use.

      So on iOS we have sandboxed apps in 2007, and native apps in 2008. On Android, we have sandboxed apps in 2008, and native apps are still not available.

      What even makes what you said even more crazy is Apple’s first mobile SDK shipped in 1992, for the Apple Newton, from which all modern smartphones descend. Newton had the first mobile ARM architecture, along with flash storage, touchscreen, modem, and apps. And they have been shipping PC SDK’s since the 1970’s.

      > And even so, there is nothing *wrong* with copying

      It’s fine if you think that, but don’t pretend that Google ever had an original idea with regards to mobiles, and don’t pretend Apple didn’t. Don’t try to excuse the rampant copying that goes on in tech by saying Apple does it just as much as others, when they clearly do not.

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  6. I can think of an excellent illustration of why this is a bad move for Apple: its lawsuit against Microsoft over the Windows UI. Apple not only looked nasty and petty to millions of loyal Windows users (and some Mac users), it sent out the clear message that Windows was now so like Macs, Apple was mad. This’ll do the same thing for iOS v. the Droid. This isn’t Google or Amazon saying that Droid apps are competitive for the iOS. This is Apple saying that.

    Apple’s legal case is also more than a bit shaky. Trademark disputes make sense when there’s the potential for consumers to confuse one company’s product with another’s in their purchasing. That can’t happen here–literally.

    First, there’s the matter of size. Both companies are too huge for consumers not to be aware of the difference. No one is going to confuse Droid apps bought from Amazon with iOS apps brought from Apple. That’d be like buying a Ford thinking you were getting a Honda.

    Second, Apple’s own app policies have fixed that distinction beyond all doubt. Without jail-breaking, the only way to get any app on an iPhone is to get it from Apple’s app store. The technological barriers that Apple has erected make product confusion (meaning a wrong purchase) utterly impossible. Where product confusion is impossible, similarities in names, especially those using generic terms, don’t matter.

    Like others who’ve posted, I’ve grown tired of giant high-tech companies squabbling in courts when they should be focusing on quality products and services. I can think of a dozen areas where the money Apple’s spending on this dispute would be better spent.

    For one, Apple-supplied text services for OS X apps remains mired in the features that Word 5.1 had twenty years ago when the only important output media was paper. With the enormous variety of ways to display information today, we need ways to tag text with its actual meaning (i.e. heading or body) not just font type and size (as in rtf). A font size that looks fine on a sheet of paper is totally unworkable on my iPhone’s tiny screen. I should be able to create a complex document that displays well and without modification on my iMac’s 19-inch screen and on my iPhone. That I can’t do now.

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    1. Couldn’t agree more. It’s not like amazon is selling ios apps.

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    2. Hamranhansenhansen Tuesday, March 22, 2011

      Nothing you said is even relevant. We’re talking trademarks here.

      If Apple were suing Amazon for remotely installing applications onto mobile devices, then your comment would start to be relevant. They are not. They are suing Amazon for naming their new service for remotely installing applications onto mobile devices the exact same thing as Apple’s 3 year old service that does the exact same thing. It is textbook trademark infringement. In fact, it is so textbook that this is likely just a publicity stunt from Amazon.

      > Word

      … is a Mac app from 1985.

      > we need ways to tag text with its actual meaning (i.e. heading or body)

      That is what markup languages are for. They have been doing that for at least 50 years:

      1960 – GML
      1980 – SGML
      1990 – HTML (created on a NeXT system, granddaddy of Mac Pro, and based in part on Apple HyperCard, since we are talking about Apple’s contributions)
      2000 – XML

      > I should be able to create a complex document that
      > displays well and without modification on my iMac’s
      > 19-inch screen and on my iPhone. That I can’t do now.

      The only reason for that is you did not learn how. I can do it. Millions of people can do it. That is the whole point of the World Wide Web, which is by design device-independent and hardware-independent. Any plain HTML document can do this, because HTML does not know anything about fonts or sizes. But for styling, there are CSS features for applying different styles based on the size of the device screen (media queries).

      > It’s not like amazon is selling ios apps.

      No, they are just making it appear like they do by copying the name of Apple’s service. That’s the whole point of trademark infringement.

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  7. Most people probably won’t even know about the lawsuit. Most people won’t know about amazons “app store”. Most people don’t care about it. non-applers might not even know of the apple app store. If thats the case, why do you need to even trademark a name for people to use, when the people who are going to use it are mostly applers anyway.

    If amazon new this would happen, they might already have a backup branding in place. I really don’t think it will be as expensive as you suggest to rebrand it.

    Apple shouldn’t sue and Amazon shouldn’t have named it App store. Something both companies lacked creativity in. Although, it beats the name Marketplace…

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    1. Hamranhansenhansen Tuesday, March 22, 2011

      > Apple shouldn’t sue and Amazon shouldn’t have named it App store

      Congratulations on finding a unique opinion on this.

      > Applers

      Apple and Amazon share many customers. Amazon sells Apple products, including iPhones. When Apple does a commercial advertising App Store, should someone who bought their iPhone from Amazon be expected to just know that Apple doesn’t mean the one at Amazon?

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  8. This would be true if the term Appstore had never been trademarked before. But it has.
    On June 14, 2006 salesforce.com, inc. applied for it (and later has abandoned it)
    On August 26, 1998 Sage networks applied for it (and later has abandoned it)

    So it is silly for Apple to claim that App Store is the same as these older trademarks let alone Amazon’s Appstore.

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  9. With all due respect, I believe the Xerox and Kleenex analogies are not good examples. In those cases, both companies names become generic substitutes, as in “I am going to Xerox this term paper” or “please get me a Kleenex”. While you might believe that “app store” is more associated with Apple, than apps and smartphones in general, others will disagree. Could True Value or Ace copyright the term “hardware store”?, I think not.

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    1. Not only are they a bad example, the statement is wrong. Kleenex and Xerox are exactly what Apple *is* trying to achieve; continue to own rights of a ubiquitous term, exactly as Kleenex and Xerox have done.

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      1. Right, Xerox and Kleenex fought to retain their trademarks in the face of potential “generisization.” They became generic in our lexicon, but they are still owned and controlled by their respective companies.

        Example of trademarks that lost protection and became generics: Asprin, Thermos, Escalator…

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  10. You remind me of a certain MG Siegler. You even look like him…. :D.

    Wait until Apple inc goes after farmers who grow apples and sellers who sell them.

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    1. Hamranhansenhansen Tuesday, March 22, 2011

      Your content-free ad hominem attack on Darrell reminds me of the content-free ad hominem attacks that are so commonly perpetrated on MG Siegler that TechCrunch had to switch to Facebook comments. At which point, people had to use their real names and the empty comments stopped.

      If you have a pertinent argument to make as to why Amazon should be granted an exception to trademark law so that they can name their new remote application installer for Android the exact same thing as Apple’s 3 year old remote application installer for iOS, then I would love to hear it.

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