Microsoft Fights Apple’s Effort to Trademark “App Store”
The popularization of the word “app” is an interesting case of tech-slang crossing over into popular use. The word significantly predates the iPhone, but Apple pushed it into the vernacular with the well-known “There’s an app for that” slogan and iPhone advertisements. Unsurprisingly, Apple filed for registration of the name “App Store” in connection with its online software store back in 2008 when it launched the service. Microsoft has decided to fight the registration, filing a motion for summary judgment in opposition to Apple’s trademark application on January 10th.
Microsoft claims that the term is generic, and therefore ineligible for protection. Although “generic” as used in trademark law is technically a term of art, its meaning is fairly close to its colloquial usage. A generic name for a good is one that refers to the good itself, not the source or producer of the good. It’s the lowest rank on the “spectrum of distinctiveness” and is not capable of serving the essential function of a trademark, namely to distinguish the goods or services of one supplier from those of another. The prohibition also prevents a single company from monopolizing use of a product’s essential descriptive terms. Allowing a trademark on the word “salt” in connection with sodium chloride crystals would prevent other sellers from being able to meaningfully describe their own product.
This is the crux of Microsoft’s argument, that if “app” is a common name for computer applications, then granting a monopoly on an app store in regard to an online store featuring apps prevents other companies from meaningfully describing their own similar services. Even though Microsoft’s “app store” is named Marketplace, it must use the more cumbersome “virtual store for apps” to describe that service. Microsoft’s own use of a general term describing a location for selling goods as its store name is actually a fairly good example of where “generic” begins to depart from its common meaning.
In the end, the court will base its decision on the distinctiveness of the name, which will depend on whether consumers exclusively associate the name App Store with Apple’s service. Given how closely many people still associate the word app with the iPhone, this is very likely to be the case. I’m inclined to agree, since while I don’t associate the word app exclusively with Apple, I distinctly associate “App Store” with Apple’s service. It’s close to the line, but I don’t see Microsoft winning this battle.