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The hype surrounding the Kindle Fire appears to have caught Apple’s attention. The iPad maker cited Amazon’s gadget and added a new claim in…

App Store logo

The hype surrounding the Kindle Fire appears to have caught Apple’s attention. The iPad maker cited Amazon’s gadget and added a new claim in an amended complaint it filed yesterday as part of its on-going quest to own the phrase “app store.”

In the new filing, Apple (NSDQ: AAPL) calls attention to its rival’s use of “*Amazon* Appstore” to market the Kindle File which was announced in September. Apple had filed its original complaint last spring after Amazon (NSDQ: AMZN) used the phrase “Appstore for Android” to publicize its phone-based app store. Apple has now also tacked on a new false advertising claim to its earlier allegations of trademark infringement and unfair competition. The complaint (embedded below) also contains pictures of both advertisements.

The revised claim comes at a time when the Kindle Fire is threatening to be the first serious disruption of a tablet market that, so far, has been overwhelmingly dominated by Apple’s iPad. Persuading consumers that it has the only “app store” may be part of Apple’s strategy to retain market share.

Apple could face an uphill battle, though, in convincing a court that it can own “app store.” When the lawsuit was first reported last spring, Apple’s claim was met by controversy and even ridicule by people who said the phrase was a generic term like drug store that no one could own. It probably didn’t help Apple’s case that “app” was named the 2010 word of the year by lexical societies and that Steve Jobs was reported to have used the phrase “app store” in a generic fashion.

The company is still waiting to learn if the Trademark Office will grant its application for a trademark. Microsoft (NSDQ: MSFT) has registered a formal objection.

Although a claim to own “app store” might strike some as far-fetched, Apple has long been a master of using different forms of intellectual property to wrap a legal force field around its products. In its high profile patent campaign against Samsung, for instance, Apple has not only accused the Korean company of infringing its utility patents but also its design patents and trade dress as well.

Trademark cases, like the app store one, can require a court to decide where a name fits along a five-part distinctiveness scale. Names that simply describe a product like “Cooked Tomatoes” are considered “generic” or “descriptive” and will receive less protection than so-called “fanciful” names like Xerox or Oreo.

App store 2nd Amended complaint
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  1. Could you at least research trademark law and history before you go off half-cocked about legal implications of terms like “generic”? Do you know how many “generic” words and phrases are already trademarked? Nike has  “Just do it”. NPR has “Marketplace”. Don’t even get me started on Microsoft, and I’m not even talking about “Windows”. 

    And have you ever noticed that Google does not use the term “app store”? So, yes it is possible to create a store to purchase and acquire software for smartphones without resorting to the term “app” or “appstore”. Never mind their wasn’t a common usage for App Store until Apple made it popular. Salesforce.com _owned_ the App Store trademark before they gave it to Apple. Where was Amazon and Microsoft back then, petitioning for denial of trademark?The problem with Amazon’s argument is that they aren’t even using the term “generically”. It is clear proper noun branding, not a generic description. So, yes, even Amazon is using the term to _name_ their store “App Store”.Criminy. Just some basic research that doesn’t even need more than Google. aYes, trademark law is broken. Shouldn’t come as a surprise that it is handled by the same office that handles patents. But for goodness sake, you can’t accuse Apple of doing anything but using the system that exists, just as _every other_ company does, “masterfully” or not.

    Joe

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  2. Joe, I didn’t state that Apple can’t receive a trademark for “app store.” As you point out with helpful examples like “Marketplace”,  generic and descriptive names can acquire protection it they become imbued with enough secondary meaning as to become distinct in the minds of consumers.

    As for the practices of other companies, you are quite right that everyone is playing the same game. My “masterful” comment was simply an observation that Apple has played it better than most (though I still wouldn’t put money on the company’s chances for ‘app store’)

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