Is APP STORE Generic?

Here is an interesting trademark story. Apple Inc. applied to register APP STORE (application Serial No. 77525433) for, among other things, “Retail store services featuring computer software provided via the internet and other computer and electronic communication networks; Retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics.” The USPTO published the application and on July 6, 2011 Microsoft filed a notice of opposition, (Opposition No. 91195582) alleging that “app store” is a generic term for retail stores selling computer applications, and as a generic term is incapable of registration.

Microsoft’s argument certainly seems strong. In its notice of opposition it alleges that the term “app” is a common generic name for software applications, citing Apple’s own use of term as a name for a type of product (as opposed to a brand). Microsoft alleges that Apple’s own web site promotes “Apps made just for Ipad” and describes its APP STORE as offering “tens of thousands of apps . . . .” This is exactly the type of use of a purported trade name that should always be avoided by anyone who would claim trademark rights in the name. Apple, had it put more thought into its use of the term “APP” would have been better served to refer to “App™ software applications made just for Ipad” and “tens of thousands of App™ software applications.” While Apple could have avoided providing evidence of the term APP’s generic nature by using it as a brand name, these constructions sound artificial – probably because the term APP is indeed a generic term.

Besides Apple Inc.’s own use of the term APP as a generic name for software applications, Microsoft’s notice of opposition also cites to dictionary definitions of the term APP, uses by other retailers of the term APP STORE as part of the name of their stores selling software applications, and use by the press as a name for retail stores selling software applications.

On January 10, 2011 Microsoft filed a motion for summary judgment. The summary judgment brief is supported by evidence of Apple Inc.’s own use of the term APP to refer to software applications, evidence of use of the term APP STORE in the press to refer to stores selling software applications, evidence of competitors’ use of the term APP STORE to name their own retail store services in the field of computer software, and evidence of consumers’ use of APP STORE to refer to the app stores of Apple Inc.’s competitors. The summary judgment brief even includes a quotation from Steve Jobs replete with generic uses of both APP standing alone and “APP STORE” in reference to the competing “app stores” using Google’s Android platform. Microsoft argues that just as THE COMPUTER STORE was held generic for a store selling computers, In re Computer Store, 211 USPQ 72 (TTAB 1981), APP STORE must be generic for a store selling apps.

Currently the summary judgment motion is pending. As of January 22, 2011 Apple Inc. had not yet filed a response brief. How do you think the Trademark Trial and Appeal Board should rule? Is APP STORE generic for a retail store selling software applications, or should Apple, Inc. be permitted to claim the exclusive right to use the term to identify its own retail store services, forcing competitors to use other terms?