Following news that Apple sent a cease-and-desist letter to Amazon demanding that it change the name of its recently launched app store from Amazon Appstore to something else, message boards, blogs, and news organizations have been wondering: Can Apple really trademark the seemingly obvious phrase “App Store”?
A trademark attorney told Evolver.fm that it could go either way, as attorneys are wont to do, but also cited several potential issues with Apple’s trademark. To an extent, it all comes down to whether “app” is a generic term for “computer software.” If so, Apple’s trademark is in trouble.
First of all, Apple may not even have a valid trademark on “App Store.” The company applied for that trademark in the United States on July 17, 2008 (search here for “app store” to find it), but the U.S. Patent and Trademark Office has yet to grant a registration, and Microsoft filed an opposition to that filing. For now, Apple is demanding that Amazon to stop using “Appstore” under the assumption that its use of the phrase qualifies as a common law trademark, according to expert trademark attorney Douglas Isenberg.
Can Apple really own “App Store,” either under its assumed common law trademark or an officially registered one?
The answer: As odd as it might seem, given that “app” and “store” seem to be generic words (as in “killer app” and “grocery store”), Apple could succeed in trademarking the phrase due to its extensive use of the word “app” in marketing and branding materials. This would give it a significant advantage over other app platforms, because it would possess the only “app store,” as opposed to, say, Android Market (which lists an Apps category), Blackberry App World, Intel AppUp Center, Palm App Catalog, or Windows Phone Apps Marketplace.
“You can’t obtain a trademark registration on something that’s generic,” explained Isenberg. “You can’t come out with a new brand of red, delicious fruit, call it ‘Apple’ and obtain a trademark on it. But you can obviously call a computer an ‘Apple,’ because it’s not the generic word for a computer.”
Although “app store” would appear to be a generic term for an app store, Apple has a better claim on it than you might think.
The basic issue here is whether the company has created the public impression that it’s the company with an “app store” providing the three goods and services described in its trademark application: an online retail store for “computer software,” a system for transmitting data, and a method for repairing and updating “computer software.”
The iTunes App Store clearly does all three of these things — but so do other app stores, and the filing contains apparent evidence that Apple knows it’s skating on thin ice. After all, the word “app” already appears in the names of most of the competing app stores listed above.
Apple’s trademark application states, “No claim is made to the exclusive right to use ‘store’ apart from the mark as shown,” and the company uses the word “store” in its description of goods and services. However, Apple cagily omits such a disclaimer for the word “app,” and neither “app” nor “application” appear in the description. Instead, its filing refers to smartphone apps as “computer software.”
“There’s certainly a very good reason why [Apple's trademark application] does not say ‘a store for selling smartphone applications,’” explained Isenberg, a widely-cited trademark expert. “They purposefully, it looks like, have chosen not to include the word ‘application’ or ‘app’ anywhere in the description of services, because if they did, that would probably be fatal to their trademark application.
“The trademark examining attorney would say ‘You can’t use the words ‘app store’ to describe a store that sells applications. That’s the generic name for it.’ So instead, [Apple has] come up with something a little more fanciful ['computer software'], if you will, in their description of services.”
Clearly, “application” has always been another generic term for “computer software,” which is why Microsoft pointed out in its opposition to Apple’s filing that the press consistently refers to other app stores as “app stores” rather than, say, “computer software stores for smartphones.”
Despite that fancy footwork and Microsoft’s well-founded opposition, Apple could succeed purely on the strength of its popularization of the smartphone app.
“The jury is still out — or at least the trademark examining attorney is still out,” said Isenberg. “[App] is a term that we’re all very familiar with, but we’re familiar with it primarily, or perhaps in large part, because of how much time, money, and marketing Apple has put into that term.”
Trademark law exists primarily to protect the consumer from buying one thing and thinking it’s another, so this really comes down to one key issue: whether consumers already overwhelmingly associate “apps” with Apple, and so would think the Amazon Appstore was a place to get iOS apps that run on Apple’s devices.
And that issue will be largely decided by Apple’s first-to-market advantage in creating a store from which people can pick and choose smartphone applications as we know them today — and on the effectiveness of its marketing.
Is the iTunes App Store the only place to get applications? No. But it’s never a smart idea to bet against Apple when it comes to first-mover advantage or marketing muscle.