March 1, 2011 at 7:09 PM ET
Microsoft well knows the value of a trademark. At least it should, says Apple, which filed a legal challenge to reject Microsoft's claim that "App Store" is not a trademark.
In the Monday night filing, shared by TechFlash, Apple said Redmond is "missing the forest for the trees" by its action:
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. 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.
In January, Microsoft appealed Apple's request to the U.S. Patent Office's Trademark Trial and Appeal Board to trademark the words "App Store."
As we noted then, it's understandable why Microsoft might want to use the two words together: Its app store, Windows Phone 7 Marketplace, sounds more like a place to buy paper goods and meat. (Msnbc.com is a joint venture of Microsoft and NBC Universal.)
Apple was the first with its App Store, originally for the iPhone, in 2008. Since then, "the service has experienced phenomenal growth and success, and is now used by over 160 million consumers worldwide who have downloaded more than 10 billion software programs," the company said in its filing.
But, contends Microsoft, basically, everyone is tossing around the words "app store" freely and liberally; it's become part of the lingo.
"App store," Microsoft said in its January filing, "is a generic name that Apple should not be permitted to usurp for its exclusive use. Competitors should be free to use 'app store' to identify their own stores and the services offered in connection with those stores."
Not so, says Apple. In its filing, it even includes "testimony from a renowned linguistics expert, Dr. Robert Leonard, who based upon rigorous examination of the empirical evidence, concludes that 'the predominant usage of the term APP STORE is as a proper noun to refer to Apple’s online application marketplace.' "
Competing smart phone companies and operating systems have varying flavors of the app store nomenclature. Android calls its app store the Android Market; BlackBerry has App World; and HP/Palm dubs its app store the App Catalog.
"There can be no question that the phenomenal popularity of the APP STORE service has made it the gold standard by which other online software marketplaces are judged," Apple says in its filing. "That this is so, however, hardly constitutes grounds for declaring APP STORE generic."
— Hat tip to TechFlash
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