Rich Fiscus
7 Jul 2011 11:41
A federal judge in California has rejected a request by Apple to halt Amazon's use of the words "App Store." The injunction request is part of a lawsuit filed in March against the online retailer.
Apple does have a trademark on the term App Store, which is registered in many countries around the world, including the US. However, the validity of the mark is already under challenge from Microsoft on the grounds that, "app store" is generic for retail store services featuring apps and unregistrable for ancillary services such as searching for and downloading apps from such stores."
In defense of their App Store trademark, Apple argues that consumers associate the term App Store exclusively with their brand. They also claim the word "app" is not a generic term for an application. As proof of the second part, they point to the fact that the word doesn't appear in any standard dictionary.
That particular claim is laughable on its face. Search the internet for "Android" and you will find the term app used almost universally to describe programs for that OS - including in the title of the main Android Marketplace page.
Apple also claims the substantial amount of advertising they have done for the iTunes App Store prove that the term is identified exclusively with that service.
In her decision denying the preliminary injunction, Judge Phyllis Hamilton wrote, "Apple has not established likelihood of success as to the infringement claims. The court assumes without deciding that the “App Store” mark is protectable as a descriptive mark that has arguably acquired secondary meaning."
She also rejected Apple's second rationale for the injunction, that Amazon's use of the AppStore name results in dilution of their mark. She pointed out, The mark does appear to enjoy widespread recognition, but it is not clear from the evidence whether it is recognition as a trademark or recognition as a descriptive term. Moreover, there is no
evidence that Amazon intended to create an association between its Android apps and Apple’s apps, and there is no evidence of actual association."
Judge Hamilton added, "Apple speculates that Amazon’s App Store will allow inappropriate content, viruses, or malware to enter the market, but it is not clear how that will harm Apple’s reputation, since Amazon does not offer apps for Apple devices."
You can read the entire ruling below.
Judge rejects Apple requiest for injunction against Amazon.com for AppStore name -