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7 March 2011
Who owns the APP STORE? Microsoft opposes Apple’s TM Registration
Apple's US trade mark registration for APP STORE has been opposed by Microsoft, who say this is a generic phrase. In the ongoing dispute, which is still at a relatively early stage, both sides have now filed their legal arguments.
The case is not just of interest to geeks: it touches on the contentious issue of whether you can register a trade mark which is descriptive of the goods or services it is used upon. Short answer: you can in theory, but it's far from the ideal way to pick a trade mark.
The view through the Microsoft Window
Put simply, Microsoft says that the trade mark "APP STORE" has become generic. They say that "app" is a well recognised word to describe a particular kind of software sold by Apple's service, and that "store" is - naturally - a generic word to describe any store including an online store.
(Perhaps ironically, Microsoft have themselves had a struggle over many years to have their WINDOWS trade mark recognised as distinctive and not simply as a generic descriptor for a computer system which individual programs are presented in individual windows.)
In their submission, Microsoft quote Apple founder and CEO Steve Jobs using the words "app store" in what appears to be a descriptive (and they argue, generic) way to describe third party offerings. Jobs is quoted as saying:
"In addition to Google's own app marketplace, Amazon, Verizon and Vodafone have all announced that they are creating their own app stores for Android. There will be at least four app stores on Android..."
Apple's bite at the argument
In reply, Apple are prepared to concede that APP STORE may be descriptive of what they call their "groundbreaking download service", but they argue that breaking the mark into the component words APP and STORE, and asking if each word is generic on its own, misses the point.
Apple say that the trade mark has to be assessed as a whole, in order to understand how the majority of the relevant public understands it. They say that the public associates APP STORE with Apple's service in particular, rather than as a generic descriptor of any software store.
They reinforce their case by pointing out that when other manufacturers describe competing services, they do not call them "apps stores". They reference Google, who call ANDROID MARKET a "marketplace"; Blackberry, who call their APP WORLD a "storefront"; Microsoft, who call their MARKETPLACE service a "virtual store for apps"; and perhaps least convincingly, Nokia, HP/Palm and Samsung who each describe their service as an "application store" (these stores being OVI STORE, APP CATALOG and SAMSUNG APPS respectively). Apple argue this evidence demonstrates that "app store" in particular is not a recognised generic term for this type of service.
What about Steve Jobs being quoted as using "app store" in an apparently generic way? Apple say that the quotation was taken from an earnings call to the investment community and therefore is irrelevant because it does not demonstrate use by the relevant public (consumers of mobile apps) and nor does it demonstrate a use directed to the relevant members of the public. They suggest that the public pays no attention to what Steve Jobs says on an investor call, which is perhaps overly modest given the Apple founder's cult hero status among his legion of followers worldwide.
Descriptiveness vs. Distinctiveness
The dispute, which is still at a relatively early stage, highlights the difficulties faced by any company selecting a descriptive brand name.
A descriptive trade mark is liable to fail the fundamental requirement that to be registrable, a trade mark must be distinctive - that is, must be capable of distinguishing the company's goods and services from those of its competitors.
Does this mean that descriptive trade marks are inevitably unregistrable? No. As Apple point out, a descriptive trade mark can acquire distinctiveness, and you may end up with a registrable trade mark if a sufficient number of consumers exclusively associate the mark with your goods or services, e.g. BUDGET for car hire services. The downside to this is that it is an uncertain strategy and it can take a lot of time and money for a descriptive mark to become exclusively associated with you. It is also possible to challenge a trade mark registration where the sign has become customary in the language or practices of the trade.
Choosing a Strong Trademark
For this reason it is almost always preferable to choose a trade mark which is not descriptive or commonplace and therefore is inherently distinctive for the goods and services. Just bringing together descriptive elements without any unusual variation in syntax or meaning, for example, does not prevent a sign from being distinctive.
Deep down, both Apple and Microsoft know that the best trade mark is an inherently distinctive one, of course. This is why most of their brand names are not descriptive - think IPAD, MACINTOSH and QUICKTIME, or XBOX, BING and VISTA.
Choosing such distinctive marks clearly should be seen as the preferred strategy for most companies, as it will result in an enforceable registration more easily and at lower cost than choosing a trade mark like APP STORE for a store that sells applications, or indeed WORD for a word processor program, which can always be challenged. It remains to be seen if Microsoft's challenge will stick.
Excerpts of this article were also featured in Silicon Republic's New Media section.
David Brophy & Shane Smyth
FRKelly
