After years of public sparring in the Mac vs. PC ads, Apple isn’t about to back down when a real fight comes along from Microsoft. In a new filing with the Patent and Trademark Office, Apple challenges Microsoft’s assertion that “app store” is a generic term, arguing that it’s no more generic than terms like “bagel shop” or “Windows,” Politico reports.
Earlier this year, Microsoft tried to block Apple’s request to trademark “App Store.” But until this issue is resolved, it looks as if every smartphone competitor will have to stick to using a thesaurus: Google’s Android Market, BlackBerry’s App World, HP’s App Catalog, Microsoft’s Apps Marketplace. Wouldn’t it be easier if they could all use “app store”?
“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,” Apple argued in its Monday PTO filing. “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. What it offers instead are out-of-context and misleading snippets of material printed by its outside counsel from the internet and allegations regarding how the public allegedly interprets the constituent parts of the term APP STORE, i.e., ‘app’ and ‘store.’”
Traditionally, companies resist “generification” or “genericide”–the process by which a trademarked name becomes generic lingo–at all costs. From Google to Xerox to Photoshop–many big-name companies have discouraged the use of their trademarks as generic synonyms for their products’ functions (e.g., Xerox means “to copy”), out of fear that their trademarks might become void of brand association (think: frisbee).
Apple, ironically, has taken the opposite approach, giving its iPhone and iPad market one of the most generic-sounding labels possible–“App Store”–and trademarking it in an attempt to force its competitors to come up with other names. In other words, it’s preemptive genericide.
Not that Apple sees it that way.
“[Microsoft] concocts the argument that all ‘store’ formative marks such as APP STORE should be per se generic,” Apple argued in its filing. “[Microsoft’s] attempt to create a new genericness standard from whole cloth, do not warrant an award of summary judgment in Microsoft’s favor.”