11 Comments

Summary:

Apple’s App Store trademark is under siege, and four more companies joined the fight to have it declared invalid in the European Union Thursday. Microsoft, Nokia, Sony Ericsson and HTC all filed applications separately with the EU trademark agency yesterday in pursuit of that goal.

AppStore-featured

Apple’s App Store trademark is under siege, and four more companies joined the fight to have it declared invalid in the European Union Thursday, according to Bloomberg. Microsoft, Nokia, Sony Ericsson and HTC all filed applications separately with the EU trademark agency yesterday in pursuit of that goal. The agency is the first step in a lengthy process that could be appealed many times, and might eventually make its way up to the top EU court in Luxembourg.

The four companies join Amazon, which filed its own opposition to Apple’s two EU trademarks (“APP STORE” and “APPSTORE”) back in mid April. Amazon has also argued that the trademark is invalid in the U.S., after being sued by Apple for trademark infringement following the launch of its own Appstore for Android devices.

Microsoft also challenged Apple’s U.S. App Store trademark application back in January, so its filing in the EU doesn’t come as a surprise. Nor should the filings by Nokia, Sony Ericsson and HTC, all of which are competitors with Apple in the smartphone arena, and all of which benefit from the sale of apps on their hardware platforms.

Microsoft issued an official statement about the new round of complaint applications which sums up their position:

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.

What the statement doesn’t reveal, and what’s actually behind all disputes over this term, is that the phrase “App Store” is worth a lot of money. Users and the media have gotten in the habit of calling mobile software “apps” and software marketplaces “app stores,” regardless of brand or platform. That’s due largely to the early spread of Apple’s own mobile applications store, which was the first to gain significant traction among smartphone users.

Apple clearly believes it has achieved distinctive with the App Store trademark by combining the more distinctive “App” with the generic “Store,” making for a combination that together meets the requirements of trademark law. A term must be distinctive (or refer specifically to the thing it applies to) in order to be eligible for trademark, unless it qualifies for acquired distinctiveness, in which case it acquires specific association through repeated use over many years.

I’ve argued before that Apple is right to defend this trademark, and right to have pursued it in the first place. If anything, this latest action only reinforces that belief. Why are some of Apple’s biggest competitors so eager to have the trademark invalidated if it doesn’t have an enormous amount of value? Also, why hasn’t Google, which runs the most successful App Store competitor, joined in with these proceedings? Because this is a case of sour grapes, and one that isn’t very likely to bear fruit.

  1. I repeat myself:

    The original Danger Hiptop (T-Mobile Sidekick) was released in 2002.
    Danger ran Catalog, an app/service for buying apps/ringtones/etc.
    Microsoft owns Danger’s IP.

    The Catalog app presented itself in a lot of different ways over the years. An “app store” could very well be one of them.

    Catalog certainly predates the existence of even an iPhone prototype, never mind when Apple ditched their line that “the web is all you need” and created the App Store for third party apps.

    Share
  2. @ Cold Water

    Apple has not trademarked “Catalog” or “Windows” or any other generic trademarked name owned by Microsoft.

    Apple has trademarked and used “App Store”. This is a trademark that was previously owned by Salesforce.com, but then the rights to this trademark were transfered over to Apple.

    Does anybody notice that nobody (neither Microsoft, Nokia, Sony Ericsson nor HTC) declared the “App Store” trademark invalid during the years that it was owned and used by Salesforce.com???

    Darrell Etherington is correct in saying “this is a case of sour grapes, and one that isn’t very likely to bear fruit.”

    Share
    1. And I also noted that at least one presentation of Catalog could have been as an “app store.”

      To a Canadian, where they see fit to trademark “The Beer Store,” maybe “App Store” makes sense. But there’s a reason why there are longer legal names printed on signs for chains commonly known as “Chipotle” or “Wendy’s.”

      Share
      1. “And I also noted that at least one presentation of Catalog could have been as an ‘app store.'”

        However, whatever else Catalogue _could_ be presented as is not the issue. Personally, I think almost all trademarked words are hooey.

        But at least App Store had no value or common usage, particularly in print, until Apple used it and very successfully. Now everyone else wants to hitch to Apple’s “App Store” wagon, without bias. Good luck with that.

        As opposed to “Windows” which was already a widely used term in the computer industry before the MS trademark.

        Joe

        Share
  3. For the same reason people fought Dell when they tried to trademark “cloud computing” is why it’s important to fight this ridiculous trademark.

    Let’s use Angry Birds as an example, since it’s such a popular cross-platform game. If it’s an app on iOS, and it’s sold in the Apple App Store, and you can buy the SAME GAME on Android devices, is it not an app? And if it IS an app, then wouldn’t you buy it at an app store?

    If we were using bananas instead of Angry Birds, and a store had trademarked “grocery store” people would be having fits. Bananas are groceries. Sold at grocery stores. End of discussion. But because it’s Apple and they were “first” there’s this ridiculous trademarking (btw, still interested to know why they are using Ping when the trademark is owned by someone else).

    At the very least, it’s going to cause issues for developers (who should be thanking these companies for going to bat for them) because they need to keep language as simple as possible when marketing to multiple platforms in multiples stores for the items Apple doesn’t want them calling apps unless they are on iOS.

    Share
    1. Andrew Macdonald Friday, May 13, 2011

      On the face of it, I completely agree with your theory here. App Store is a pretty generic name, and I am surprised Apple or Salesforce.com even managed to trademark it in the first place.

      However just because it is pretty generic, it doesn’t mean that people or companies SHOULDN’T be able to trademark it. Look at Windows, Office, both are VERY generic names, yet Microsoft was able to trademark those names, and is very aggressive in protecting those names.

      Why shouldn’t Apple’s generic ‘App Store’ be any different than Microsoft’s ‘Windows’.

      Share
      1. Because while office is a generic word, naming your product suite that isn’t. Even though it’s designed for an office environment, the use is completely different and there is no confusion. This is a trademark of words that mean exactly the same thing as general usage. If I say “app store” to people outside Apple fanboys and tech-related industries (like, say, my parents?) they don’t differentiate it between Apple and Android and RIM. That’s the issue. You buy things that run on your phone in an app store. You buy groceries at a grocery store. Same thing.

        Share
    2. Angry Birds is an _application_. Applications are now commonly referred to as apps as a result of Apple’s App Store. If Apple had trademarked “application store” then it would be the same as your analogy to grocery stores.
      All apps are applications, but not all applications are technically apps even though it is generally accepted as the common name. The same is also true of Kleenex and tissues, most people ask for a Kleenex even if the box says Puff’s on it. How many people do you know that say xerox when they mean copy? Should all tissue boxes have the Kleenex name on them and all copy machines say xerox machine on them?
      No one is saying the other companies can’t have application stores, just that they need to find different names for those stores.

      Share
  4. @ Cyndy Aleo

    The “App Store” trademark has been around since 2006… LONG before even the first iPhone was sold, and LONG before anyone started calling software “apps”. The term “app” only became part of our lexicon AFTER Apple stated using it for its business in 2008 (even though “App Store” and the term “apps” were used by Salesforce.com between 2006-2008).

    The “App Store” trademark was originally registered and owned by Salesforce.com in 2006. In 2008 the rights to this trademark were legally transfered over to Apple.

    Neither Microsoft, Nokia, Sony Ericsson, nor HTC declared the “App Store” trademark invalid during the years that it was owned and used for a similar online software store by Salesforce.com. It was only when this trademark became the property of Apple Inc. that they began this litigation.

    This is proof that the “App Store” pre-existed anyone other than the original owners using “App Store” and the term “app”.

    Also, since neither Microsoft, Nokia, Sony Ericsson, nor HTC had any problem with the registered “App Store” trademark while it was owned and used by Salesforce.com, it shows that their grievance is based purely on the fact that it is Apple that now legally owns and uses the trademark.

    So this litigation is obviously NOT about the validity of the “App Store” trademark!

    Microsoft, Nokia, Sony Ericsson, and HTC cannot choose who should own a valid trademark and who shouldn’t (i.e. their biggest competitor). That’s just sour grapes… which is NOT a legal reason to invalidate a registered trademark that has been in use for the past five years.

    Share
    1. The term “killer app” has been around for ages – certainly before 2006. I recon I heard the term as far back as 2000 maybe earlier. If people disagree I will find some examples to cite.

      Share
  5. BTW, for anyone who is interested in facts…

    The combined usage “app store” (lower case) as a description has become a generic term AFTER it was registered and used. It became generic in the same way that “Kleenex” became a generic term after it was registered and used (when you ask someone for a Kleenex it is usually meant generically, not specifically referring to the Kimberly-Clark product).

    It is perfectly legal to refer to a competing business (example “Android Market”) as an app store when describing it. But it is NOT legal to rename “Android Market” to “App Store” since that name is already trademarked and used by a competitor.

    Share

Comments have been disabled for this post