Apple’s Continued Attempts to Trademark “App Store” may Fall Short

Insights July 8, 2011

Earlier this year in March, Amazon launched the Amazon Appstore, which was then a new avenue for buying Android apps.  Almost immediately after the launch, Apple proceeded to file a trademark infringement suit against Amazon over the usage of the “Appstore” phrase.  The case is contingent upon whether “app store” can be deemed a generic term that simply describes any app marketplace, as opposed to one of Apple’s trademarks – a unique, company-specific element that identifies the company’s brand and distinguishes its products and services from that of other companies.

Apple’s first act was to move for a preliminary injunction to prevent Amazon from using the phrase.  However, there were indications that Apple’s motion would be denied at the preliminary injunction hearing on June 22, in federal court in Oakland.

Apple argued that “app store” is essentially synonymous with Apple’s iOS mobile marketplace, and that Apple will face significant damage by association with the Amazon Appstore, which is alleged to be less secure from security threats, and inferior in functionality.  Amazon subsequently responded by positing that “App store” is a generic term, and that confusion between the two marketplaces would beunlikely by the fact that they serve completely different consumers –  Apple only sells iOS apps, and Amazon only sells Android apps.  Amazon went on to draw parallels between the “app store” and ‘electrical store’ or ‘clothing store.’

Amazon may very well succeed in doing so.  At the preliminary injunction hearing, U.S. District Judge Phyllis Hamilton stated that she would “probably” rule against Apple’s motion for a preliminary injunction.  Hamilton told Apple that the case wasn’t going well for them, and that Apple hadn’t presented any real evidence of actual confusion.  Hamilton officially denied the injunction on July 6, and scheduled a trial date for October 2012.

This is just the latest obstacle for Apple in its quest to own the “app store” phrase.  Apple first attempted to trademark the phrase in mid-2008.  It was initially denied, with the USPTO classifying the term as purely descriptive of the services offered by Apple.   However, Apple appealed the decision, and won the trademark in 2010.  Soon after in July 2010, Microsoft first filed an objection to the USPTO, stating that the term was too generic to be trademarked.  Then, in January 2011, Microsoft filed a motion for summary judgment to the USPTO’s Trademark Trial and Appeal board to reject Apple’s trademark application – the motion is still pending.

Despite the actions against it, Apple continues to send cease and desists regarding the “app store” phrase.

In related news, Apple was recently sued by iCloud Communications for infringing on the trademark “iCloud.”