Apple gives up on App Store suit – Sweeny Legal

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Last week, Apple finally gave up its over two-year long battle in federal court against Amazon for the ‘App Store’ trademark, initially having filed its claim in March 2011. Its corporate spokesperson Kristin Huguet told Reuters, “We no longer see a need to pursue the case. With more than 900,000 apps and 50 billion downloads, customers know where they can purchase their favorite apps.” I’m not quite sure why Apple saw a need in the first place or how they thought they would be able to win this suit. Under US trademark law, a trademark must not obtain federal registration if it is “merely descriptive” of the goods or services it is used to sell. App is a commonly used abbreviation for the word ‘application.’ And ‘store’ is, well, a place where people buy things.  “App Store” is a place where people buy web and mobile applications. It doesn’t get anymore descriptive than that – a mere combination of two descriptive terms.

Microsoft, Nokia and HTC seemed to agree with this reasoning by challenging the trademark as too generic and bringing action to invalidate Apple’s trademark registrations for  ‘App Store’ and ‘AppStore’ before the European Community Trademark Office. They likened ‘App Store’ to ‘Toy Store’ or ‘Book Store.’ Microsoft even brought in a professor of linguistics to attest to the genericness of the trademark.

The United States Patent and Trademark Office initially rejected Apple’s trademark application for ‘App Store’ shortly after it was filed because of the phrase’s descriptiveness.  Apple fired back at the refusal arguing that the word ‘App’ is not merely descriptive but instead completely arbitrary. Apple said the word “may, arguably, sometimes be used as a slang abbreviation for the word ‘application’, but this term has many other incongruous meanings.” Yeah, the term may have other meanings but none of those is the meaning Apple is using it for. The USPTO examiner didn’t buy the argument either and issued a final refusal of the trademark application. However, Apple managed to revive the application with an appeal claiming acquired distinctiveness based on Apple’s brand strength before Microsoft quickly filed an opposition that has been in litigation ever since.

Apple saw the writing on the wall a couple months earlier after US District Judge Phyllis Hamilton denied its request for a preliminary injunction to stop Amazon from using the ‘App Store’ trademark. She said that Apple offered “no evidence to support a likelihood of success” in prevailing on its claim. Moreover, in January the judge threw out Apple’s other claim for false advertising and said even Steve Jobs used the term ‘App Store’ generically. The case was set to go to trial next month, but Apple pulled the plug early, most likely to save some money on legal fees that would have been paid for a losing battle.

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Trade Mark law, and risk management forms a large part of my legal practice. More and more, lawyers in the corporate sector and in-house legal service providers are looking for opportunities to contribute to the community using their legal skills. I am a former in-house legal counsel and I do provide in-house outsourcing as part of my legal services provision.

If you are a small business enterprise (SME)  or Corporate Enterprise in the Illawarra, Wollongong , Southern Highlands, South Coast or surrounding areas including Camden Picton and West, and need corporate in-house legal services please call me.


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