In the latest battle over rights to one of the most commonly used phrases of the booming mobile world, Apple Inc. is defending its attempt to trademark the phrase “App Store,” saying in a new filing that Microsoft Inc. has failed to prove that the term should be left open for use by competing mobile application marketplaces.
Apple’s filing, submitted Monday night, asks the U.S. Patent and Trademark Office to reject Microsoft’s attempt to dismiss Apple’s “App Store” trademark application, saying that Redmond’s argument is based on “out-of-context and misleading snippets of material printed by its outside counsel from the internet.”
“Having itself faced a decades-long genericness challenge to its claimed WINDOWS mark, Microsoft should be well aware that the focus in evaluating genericness is on the mark as a whole and requires a fact-intensive assessment of the primary significance of the term to a substantial majority of the relevant public,” says Apple in the filing.
“Yet, Microsoft, missing the forest for the trees, does not base its motion on a comprehensive evaluation of how the relevant public understands the term APP STORE as a whole.”
Microsoft argues in a January this year filing that both “App” and “Store” are generic, and thus can’t be trademarked – an argument, Microsoft said, that’s based on “undisputed facts”.
Apple Inc., of course, doesn’t agree. One entire section of its filing is entitled “Microsoft’s ‘Noun Plus Store’ Test Grossly Oversimplifies the Genericness Test,” and another is called “The Fact That Mainstream Dictionaries Do Not Have a Definition for the Term APP STORE Supports a Finding that the Term is Not Generic.”
Microsoft also argues that since the press has used the term “app store” as a generic term to describe other, app stores, the term must be generic.
Apple’s filing quotes testimony from a linguistics expert, Robert Leonard, whose examination of the case concluded that “the predominant usage of the term APP STORE is as a proper noun to refer to Apple’s online application marketplace.”
Microsoft argued in a previous filing that any “secondary meaning or fame Apple has in ‘App Store’ is de facto secondary meaning that cannot convert the generic term ‘app store’ into a protectable trademark.”
Apple isn’t buying that argument, either: “What is missing from Microsoft’s submission is any evidence, expert or otherwise, regarding whether such uses represent a majority of the uses of the term or simply a small, inconsequential subset of how the relevant public uses the term APP STORE.”
Leonard’s conclusion wasn’t based on mere opinion, as the filing notes. “Dr. Leonard analyzed references to APP STORE appearing in The Corpus of Contemporary American English (COCA), an online collection of over 410 million words of popular texts,” which Leonard described as “accepted among experts in the field of sociolinguistics as representative of current language use.”
COCA-combing led to Leonard’s discovery that “88 per cent of the references to APP STORE in that database constitute references to Apple’s APP STORE service.” And if 88 per cent was good enough for Leonard, it was good enough for Apple – and, from Cupertino’s point of view, it should be good enough for the USPTO.
“The phenomenal popularity of Apple’s online software marketplace has prompted a number of competitors to offer their own marketplaces,” Apple says in a statement.
“In fact, Microsoft, Google, Nokia, Research in Motion (Blackberry), Sprint, Verizon and other major companies now offer an online software marketplace for mobile operating systems that compete with Apple’s mobile operating system (in fact, Apple’s competitors hold a larger market share than Apple in respect of mobile operating systems).”
“As Microsoft itself acknowledges, these competitors have found ways of branding and describing their own online software marketplace without using the term APP STORE. For example, Microsoft itself uses the term MARKETPLACE to refer to its service and uses the descriptor ‘virtual store for apps.'”
“In limited instances third parties have made improper use of the term APP STORE. In response, Apple has contacted those parties and requested that they cease and desist from further use of the mark. In most every instance, the entities contacted by Apple agreed to cease use of Apple’s APP STORE mark.”
“Those few which refused to cease use of Apple’s APP STORE mark made reference to Microsoft’s challenge of Apple’s rights in its APP STORE mark, which has received widespread attention in the press, and have refused to cease using APP STORE pending a ruling in this proceeding.”
The case is now in the USPTO Trademark Trial and Appeal Board, which will decide whether to grant Microsoft’s motion for summary judgment against Apple’s application, or to allow the dispute to go to trial. [via Tech Flash and The Register (UK)]