Microsoft Fights Apple Trademark On 'App Store'

angry tapir writes "Microsoft is asking the US Patent and Trademark Office to deny Apple a trademark on the name 'App Store,' saying the term is generic and competitors should be able to use it. Apple applied for the trademark in 2008 for goods and services including 'retail store services featuring computer software provided via the internet and other computer and electronic communication networks' and other related offerings."

Comments

Windows

[BasilBrush]

Not quite as generic as "Windows" though, eh Microsoft?

Re:Windows

[Fluffeh]

Or "Word" eh?

Re:Windows

[kimvette]

I'm sure Apple would not object to "Crapp Store" :)

Re:Windows

[Digana]

That's not how genericity of a trademark works. If Microsoft were in the business of selling large crystal panes that you can attach to walls to see through them, then yes, it couldn't call them "windows", because you're using the generic word for that product. It's just like Apple isn't selling produce, so they can use that common word as a trademark. The genericity of a trademark depends on the domain to which it is applied. In the case of "app store", Microsoft has a good case, because Apple is trying to trademark the general shortening of "application". I don't think the shortening of "application store" to "app store" will be able to withstand the attack of genericity.

Re:Windows

[kimvette]

"Settled out of court" translated to normal English really means "We would win against evil Microsoft if we had the funds to take this to the end, but sadly their lawyers are bleeding us dry with continual delays so we accepted their offer to settle."

Re:Windows

[Anonymous Coward]

Microsoft would disagree...

http://www.microsoft.com/About/Legal/EN/US/IntellectualProperty/Trademarks/EN-US.aspx

"Microsoft" and "Windows" are two separate registered trademarks.

Re:Windows

[vikisonline]

They should just call it the iApp Store.

Re:Windows

[BasilBrush]

You're wrong. The US Patent and Trademarks Office doesn't let me link directly to it, so here's a cut and paste of Microsoft's Windows trademark.

Word Mark WINDOWS
Goods and Services IC 009. US 038. G & S: computer programs and manuals sold as a unit; namely, graphical operating environment programs for microcomputers. FIRST USE: 19831018. FIRST USE IN COMMERCE: 19831018
Mark Drawing Code (1) TYPED DRAWING
Serial Number 74090419
Filing Date August 20, 1990
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition June 21, 1994
Registration Number 1872264
Registration Date January 10, 1995
Owner (REGISTRANT) Microsoft Corporation CORPORATION DELAWARE One Microsoft Way Redmond WASHINGTON 980526399
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record William O. Ferron, Jr.
Type of Mark TRADEMARK
Register PRINCIPAL-2(F)
Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20050407.
Renewal 1ST RENEWAL 20050407
Live/Dead Indicator LIVE

Re:Windows

[node 3]

That's not how genericity of a trademark works. If Microsoft were in the business of selling large crystal panes that you can attach to walls to see through them, then yes, it couldn't call them "windows", because you're using the generic word for that product.

They don't sell "Windows: n. 1. transparent glass panes", but "Windows: n. 2. Primary graphical representations in a windowed GUI system".

Re:Windows

[bondsbw]

So, what do you call these generic rectangle user interfaces containing buttons such as Close, Minimize, and Maximize, and a title bar, client area, and grips used to resize such generic rectangle UI? I have an idea of what I would call it, but according to you I would owe Microsoft money for the use of the word.

Re:Windows

[BasilBrush]

Is it? Then show me what mobile device company was using "App Store" before Apple did.

e.g. Nokia used "Software Marketplace"
Microsoft used marketplace too. "Windows Mobile Marketplace" etc.
Android uses "Android Market".

App Store seems like the obvious thing to call it now, because Apple have been so successful with it. But other companies were not wanting to use it till Apple got there first.

Re:Windows

[flyingkillerrobots]

The more intuitive word, assuming no prior prejudices, would probably be "boxes."

Re:Windows

[Anonymous Coward]

The frames around an application's UI, that you can move around and such? Those were called "windows" in the trade press before Microsoft wrote their OS. A bit ago Microsoft sued Lindows claiming "Lindows" was too close to their "Windows" trademark. They dropped the suit when the judge said that the Lindows legal team had introduced enough evidence to call into question Microsoft's claim on the Windows trademark, and opted instead to buy the Lindows trademark for $20 million (the Lindows software is now called Linspire).

Still feeling quite so sure of your superiority to the OP?

Re:Windows

[BasilBrush]

Back when Windows was trademarked, Microsoft's product was an application framework that let you create applications that ran in windows. Windows was as generic a term in computing then as it is in house construction now. It seemed absolutely ludicrous that Microsoft could trademark it. It might now seem so weird now, because we've got so used to it.

I don't think the shortening of "application store" to "app store" will be able to withstand the attack of genericity.

If "Windows" did, then "App Store" certainly will, if judgements are consistent.

Re:Windows

[Dahamma]

X Windows predated Windows 1.0 by at least a year. And previous systems (like "W" - which was the basis for the name of the "X" Window System) were around a couple years before that.

Re:Windows

[erroneus]

Windows fails the genericity test because they did not invent the Windowi GUI and the term "window" was coined to describe the interface long before Microsoft entered that marketplace. If you followed the Lindows story closely, you would know those details and how the settlement over "Lindows" resulted from a counter-claim seeking to remove Microsoft's trademark of the word "Windows." All predictions were that Microsoft would lose it and they quickly settled with the company they were suing over the use of the name Lindows and paid them an undisclosed amount of money while getting them to agree to name it Linspire. Microsoft almost never backs down from things like this. This is a pretty strong indication that they would lose.

Personally, I think if someone were to organize a legal action to have "Windows" removed as a trademark, I would donate to the cause... hell, I'd probably donate at least several hundred dollars to see it happen.

Re:Windows

[migla]

Well yes, but no. App store is obvious because it's a store that sells apps. If you'd asked people before there was an "App store" what an app store is, they would have nailed it.

Re:Windows

[gcnaddict]

...so many lawyers in this thread.

How about I cite one?

I also think that MS might successfully argue that "Windows" is not a generic term for operating systems, but is descriptive of an attribute of the goods, thereby opening the door for acquired distinctiveness -- an undoubtedly easy showing.

That says nothing of the argument that "Windows" for operating systems has "ceased to have current generic meaning," and is therefore susceptible to trademark protection. See the dicta of Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806, 49 U.S.P.Q.2d 1458 (2d Cir. 1999). Does anyone in common usage call OS-X or Linux based GUI's "Windows"? I think the answer is they call them "Operating Systems" or "GUI's" or the like, even if these OS's/GUI's utilize "windows" (lower case "w").

Source: SonnabendLaw, via this forum post.

Re:Windows

[Anonymous Coward]

"Killer App" was a common term years before "App Store". Geeks used this term all the time, even in the bulletin board days.

Re:Windows

[johny42]

True. It's a bit like asking Google to change it's name cause it's a generic term for googling something and competitors should be able to use it.

That actually happens, which is why Google actively prevents spreading of the verb "to google".

Re:Windows

[diegocg]

Office, Internet Explorer, SQL Server...

Re:Windows

[jedidiah]

> Yes but there also was no Windowed GUI system in common use before Windows came out

Are you kidding? Microsoft pretty much sat on it's hands for 10 years after GUIs became commonplace on every other platform.

Re:Windows

[Hucko]

Tell me this is a case of the 'winners' writing history. When 'Windows' came out there was a huge number of people mocking such a stupid name in the computing industry because it was a blatant knock off of the primary elemental division in a GUI --- which Microsoft was late to the party to get. Even in Dos applications functions were described by the 'window' as opposed to the screen.

Re:Windows

[Fzz]

Yes but there also was no Windowed GUI system in common use before Windows came out

Windows 1.0 came out in 1985.

It's predated by Xerox Star, the Apple Macintosh, Sun's SunView, the W Window System from Stanford, and early releases of the X indow System. Probably a bunch more too - Symbolics comes to mind. Of those, the Mac and SunView at the very least were widely used.

Microsoft, as usual, were late to the party.

Re:Windows

[TheRaven64]

That's not the word that they chose at Xerox, because they were concerned with the user perception, not the implementation. In implementation, they were just reserved regions of the frame buffer (Smalltalk-76 didn't support overlapping windows), but in terms of user interaction they were things that you looked through into your document - windows. This is why they called them windows (instances of the Window class in Smalltalk-76 and Smalltalk-80). This was almost a decade before MS Windows 1.0 (which also didn't support overlapping windows) was released.

Re:Windows

[delinear]

The one time it was tested, the court made a summary judgment against MS who panicked over the trademark going generic and paid off the alleged infringer instead. It will be interesting to see what happens here - Apple are as unlikely to want to give up the term "app store" as MS were "windows", but they're going to be up against a company with deep pockets and a history of litigation.

Re:Windows

[postermmxvicom]

GP is right, google it.

Re:Windows

[garyebickford]

Indeed. Archetypical case was Aspirin, originally a Bayer trademark. ... oops, the reasoning I was going to use seems to not be valid in this case. I originally thought it was because they did not defend the trademark from generic use, but the real answer - at least according to Wikipedia - is a fascinating bit of history so I am posting it for the general amusement.

As part of war reparations specified in the 1919 Treaty of Versailles following Germany's surrender after World War I, Aspirin (along with heroin) lost its status as a registered trademark in France, Russia, the United Kingdom, and the United States, where it became a generic name. Today, "aspirin" is a generic word in Australia, France, India, Ireland, New Zealand, Pakistan, Jamaica, the Philippines, South Africa, United Kingdom and the United States. Aspirin, with a capital "A", remains a registered trademark of Bayer in Germany, Canada, Mexico, and in over 80 other countries, where the trademark is owned by Bayer, using acetylsalicylic acid in all markets, but using different packaging and physical aspects for each.

Re:Windows

[garyebickford]

As one of those ubernerds (I guess - I've never felt particularly uber), I worked with perhaps a dozen 'window systems' between 1978 and 1987. The entire 'workstation' market was based on window-based systems. I wrote a couple of toy ones myself. I recall that Microsoft's success in trademarking 'Windows' was both offensive to everyone in the industry, and an example of the stupidity of the people in charge of trademarks - similar to the software patents debacle. Prior to Microsoft, everyone distinguished their windowing system with a prefix such as X-Windows, etc. To this day, I persist in using 'MS Windows' when describing the Redmond Virus.

Re:Windows

[msauve]

"Unleashing the Killer App: Digital Strategies for Market Dominance" - Harvard Business Press; Revised Edition edition (March 2000)

"application (app)" - Dictionary of Business Terms, Barron's Educational Series, Inc.; 3rd edition (May 1, 2000)

"Google Apps" - August 2006

Re:Windows

[garyebickford]

In fact, there is a much evidence that App is a shortening of Apple as it is application

Nope, it was widely used for NeXT machine applications - even to the extent of using the .app extension to define a directory containing an application's code and other files. We used to talk about what would be the NeXT's "killer app" back in the day. But then NeXT ended up as part of Apple, so where does that put the question? :D

Re:Windows

[slshwtw]

Office, Internet Explorer, SQL Server...

If you ask Microsoft what the "SQL" stands for in "SQL Server", the official answer is that it doesn't stand for anything, it's just "SQL". Otherwise they couldn't trademark it (since they didn't develop the language and it is an ANSI standard).

Re:Windows

[David Off]

> Microsoft, as usual, were late to the party.

That is because they had to wait for the Mac to come out so they could see how it was done, decompile the OS etc etc. so they could produce their own rip-off version. I think this is widely known. Microsoft is late to every damn party, it is hard wired in their DNA from the day they ripped of CP/M via QDOS.

Other windows systems around the same time were GEM (1983) and Siemens Collage (for Unix - mid to late 80s similar to GEM). The term commonly used was WIMP systems for Windows, Icon, Mouse Pointer. This term dates from 1980. GEM was also widely used.

Re:Windows

[jspayne]

Well, I don't know if there are enough pixels there to make that distinction, but this page makes it pretty clear that Internet Explorer is a registered trademark:

http://www.microsoft.com/About/Legal/EN/US/IntellectualProperty/Trademarks/EN-US.aspx

Microsoft App[le] Store

[PatPending]

"Microsoft App Store" will always be "Microsoft App[le] Store" in my mind because Microsoft is (once again) playing catch-up.

Re:Microsoft App[le] Store

[RobertM1968]

I just want to expound on the Win95 thing. First, it called DOS to set up PSPs for full 32 bit apps. It heavily relied upon (at initial release and up until Win98 or OSR2) DOS drivers for many devices. Many apps (heck, including even the Windows Installer - right up into the Windows XP days) still had legacy 16bit code that called 16bit Windows functions that did not pre-emptively multitask. The VxD model released in Win95 was horrendous and had a terrible penalty for calling any of the needed 16bit services or API. Numerous of the older Win32 API calls (v1.25 and below) were poorly (or not at all) implemented in a fashion suitable for pre-emptive multitasking. Since conventional memory and REAL MODE DOS was used for PSPs for every app, 32bit or not, limitations were imposed on even true 32bit apps. The "task switcher" mechanism was one of the worst ever written and was just barely outside of the cooperative multitasking category causing the inability to do any true time-sensitive multitasking on anything resource intensive. Thread management was abysmal and incurred penalties that also prevented time-critical multitasking. I could go on and on.

In THEORY Windows 95 was a true preemptive multitasking OS. But the theory did not fit the reality. It took years since the original Windows 93 plan (and it's actual release as Windows 95) to get "almost there" (WinME's release, as terrible as that was in other respects).

Also in all fairness, the problem decreased with each new release and with updated apps and drivers (and less dependence on DOS Win16 calls, and ancient Win32 calls by such). But on the other hand, a bunch of 16bit code persisted right into the XP age (as mentioned earlier, the Windows Installer as one example). Of course, since XP handled running such code differently, it did not suffer the same penalties.

Somewhere out there (and possibly as evidence in the DOJ case) is a CompUSA teleconference with the... morons... errr, sorry... lying thieves... oops, that's not what I meant... programming and management team for Win95, where they refuse to dispute, that "theory" aside, due to those limitations, it's really for all intents and purposes, Windows on top of DOS and is not a true preemptive multitasking OS, (and admit that they dont care because their customers won't know the difference). And Microsoft themselves, published various... notes? notices? (cant think of the right word), advising users to basically do the impossible (in order to have a preemptive multitasking environment), namely use only true 32bit Win95 drivers, fully 32bit apps (even though various of MS's own apps were not), dont boot into safe mode (which certain games and other apps required) and a few other suggestion. Of course, most or all of those were impossible during the days of Win95. And they knew it.

It's kinda like making a car (for road driving) that you claim can reach 250mph. Sure it can. In theory. But did you remember to mention it has to be secured on rails and run jet fuel, and a variety of other criteria not possible by 99% of the people who buy it? Theories are great. The reality was Win95 was semi-preemptively multitasking under all but idiotically rare scenarios. With each subsequent Win9x/ME release slowly improving.

Not that I was Microsoft's and CompUSA's chosen Win95 support technician for CompUSA Vienna 281 during the alpha, beta, RC and release phases (and beyond) or anything.

It's kinda like how (in theory) the initial release of Windows Phone 7 multitasks... with the caveat that in reality, what it multitasks is absolutely nothing... followed just recently by it finally multitasking Zune. Theories are nice. Reality is better.

This is not intended as a rant. It is intended to be educational, since many people simply do not know the history of PCs, OS's for them and so on; and what information out there of late seems more focused on theoreticals than it is on reality and implementation.

Re:Stores are often named for what they sell

[BasilBrush]

Huh? Department stores don't sell departments. And WTF is a toilet store?

Re:Stores are often named for what they sell

[Jaxoreth]

You would be hard-pressed to find a place that's actually called "The Clothing Store" or "The Department Store", because they are almost certainly not trademarkable names: a competition could open right next door and call themselves "The Clothing Store" and the original store wouldn't be able to do anything about it.

You've never heard of The Container Store?

Apple was not first user of name 'App Store'

[mysidia]

Pretty sure Sales Force came first.

Back in 2006, when the iPhone was but a gleam in Steve Jobs' eye. And now there are lots of 'app stores'; including Apple's, but also including the Android app store, and others.

So... where is Apple's eligibility for using this descriptive non-creative name as a trademark, if they do not have exclusive use, first use, or even most famous use in commerce?

As far as I'm concerned, Apple's product is the iTunes App Store, which is specific and famous, but App Store is generic, and used by many organization's before and after Apple.

Actually.. when I think of "App Store", the first thing that comes to mind for most people is the Android App Store. If anyone should be awarded the trademark (and they should not), it should be Google.

Re:Apple was not first user of name 'App Store'

[znu]

If users call it the "Android App Store", it's precisely because Apple popularized the "App Store" terminology. It would have to be, because Google doesn't call it that. Google calls it the "Android Marketplace".

Re:Apple was not first user of name 'App Store'

[Rockoon]

Cite your sources, mortal.

He did, basement boy.

Re:Apple was not first user of name 'App Store'

[HeraldMage]

The Android App Store?? Since when? I've never heard it called that, at least officially, in any trade press, IT journals, etc. Android calls it (and always has) the Android Market. The Microsoft Zune has the Zune Marketplace. So I'm sorry but I don't see why Apple can't use App Store, especially when Microsoft gets to hold separate trademarks for Office, Word, Windows (note, the Microsoft and the other word each are separate trademarks).

Re:Apple was not first user of name 'App Store'

[BasilBrush]

Pretty sure Sales Force [programmableweb.com] came first.

Almost the same. "AppStore" rather than App Store.

But here's the thing, Sales Force DID trademark it, but it was listed as a dead patent by 2008, presumably because their "vision" didn't turn into something actual or successful. Also, before them Sage had the trademark in 2000, but that was listed as dead within the year.

Where's Apple's eligibility? Well they are the ones that applied to use a trademark which wasn't currently in use by anyone else. Same reason Sales Force could trademark it.

And what's this nonsense about not even the most famous use? Of course Apple's use of "App Store" is the most famous.

And the Android thing is "Android Marketplace", not app store. Even if it was App Store, how the hell would that mean Google would get the trademark rather than Apple, given that Apple's App Store was already open when Android's marketplace came along. You're talking complete shit.

I don't know who to pull for.

[Lord Kano]

I'm a former Mac user, so I hate Apple.
I actually give a damn about stability, so I hate Microsoft.

It's like watching zombies and vampires fight. No matter who loses, I cheer.

LK

Re:I don't know who to pull for.

[TD-Linux]

It's like watching zombies and vampires fight. No matter who loses, I cheer.

No matter who loses, I run.

Re:I don't know who to pull for.

[forsey]

I was about to insult your analogy because Zombies are totally not an equal to Vampires... then I thought about the properties of each...

Vampire (Apple)
- sexy
- intelligent
- chrismatic
- thinks nothing of charming you only to suck you dry of blood/money

Zombies (Microsoft)
- slow
- stupid
- flakey
- only has power in numbers

Further evidence for the Microsoft zombie theory can be found during the Windows Mobile 7 release party.

Re:Stores are often named for what they sell

[RyuuzakiTetsuya]

he said "obvious" not, "Shattered old relic from times long past and gone by."

To be fair

[Andy Smith]

I'm no Apple fan, but to be fair, when I hear "app store", I think of Apple. When I hear of another company's service being referred to as an "app store", I think of Apple. Apple has made the term "app store" what it is. I don't think Microsoft would be too pleased about Apple beinging out their new Windows interface for iDevices.

Re:To be fair

[klui]

After all, OS X introduced the .app extension. Microsoft's store should be called Exe Store.

Re:To be fair

[Andy Smith]

"Apple is trademark happy -- snapping up all i*, and *pod names, including established names like podcast "

Isn't podcast derived from iPod? A downloadable broadcast that people listen to on their iPod. That would give Apple a good claim to the term.

Re:'App' is actually short for 'Approved'..

[VortexCortex]

..in this case, as in: "All Your Apps are Approved By Steve",

Nope, the "App" in Apple's "App Store" doesn't stand for approval -- I can't purchase approval from Apple, fortunately Google's repository gives me the benefit of the doubt...

You are required to purchase approval from MS to distribute a 64 bit driver for their new OSs, so if "app" stands for approval, of course they're pissed off -- MS practically builds their entire product line around charging for approval.

(Know why you can't run a decent sever on MS Windows Home? You have to "upgrade" because MS added limits to the number of concurrent connections... Pro = permission to run servers.)

Re:other on line shoping sites had software downlo

[Anonymous Coward]

That's because Apple fans have their mouth too full of Steve Jobs' cock to say much. :)

Re:Applications

[KarlIsNotMyName]

I used to name one of my partitions "Apps". Mainly because "Applications" didn't fit.

Re:Stores are often named for what they sell

[93 Escort Wagon]

Huh? Department stores don't sell departments. And WTF is a toilet store?

Best Buy.

Re:Program Files Store

[93 Escort Wagon]

Too confusing. Make it "My Program Files Store" and it's a deal, though.

I prefer C:\PROGRA~1\STORE

Re:Stores are often named for what they sell

[NiceGeek]

You've honestly never heard the term "killer app"? It predates the iPhone by years.

Re:Stores are often named for what they sell

[Hognoxious]

And "applet" has been around as long as java has.

Re:genericity

[Loki P]

Since 2000, I've been maintaining GraphApp, an open source GUI portability library. Although named GraphApp on the web site, it was always supposed to be part of a larger portability library providing other services, which is why its header file is named app.h, why it compiles to libapp.a under Linux and app.lib under Windows, why the FAQ mentions "App" as the name of the intended work, and why one of the first things you do when making a program with my library is you create an App struct using the new_app call.

Leaving aside the question of whether the term is now generic, what protection do Open Source developers have for the names they choose for their tools, which have been in use for years?

Re:Stores are often named for what they sell

[sFurbo]

Wait, you're not a Poe? I saw your other reply in this thread and thought "Nobody would actually believe that argument, how subtle, and nearly believable, well played".

Just because somebody claims that something is one way doesn't make it true, "App Store" is clearly derived from expressions like "killer app", though I can understand why Jobs would want to make the counterargument (but not why anybody would see it as more than a conceited play on words).

Re:Stores are often named for what they sell

[sFurbo]

And this is exactly what I mean by conceited play on words: "they're not applications... they're apps, right?". No, wrong, they are applications that run on iOS. The definition of application doesn't say that it has to be not silly, or do more than one thing. As I said, I understand why Jobs would say that, but that doesn't make it true.

I call prior art...

[itsdapead]

Damn. I should keep better records. I'm pretty sure that I was selling my own application called "Windows" for the Commodore Pet somewhere around 1981. It sold many copies.

Of course, by "selling" I mean knocking out hand-copied tapes for pocket money at the local computer store, "Application" means a farty little 6502 code utility to clear or scroll selected areas on the screen and "many" refers to the widely used "one, two, many, lots" number system.

I should totally go through the attic to see if I have a lawsuit :-)

But seriously folks, the term "window" for an independently clearable/scrollable area of screen probably dates back to the era of the VT100 terminal, or before. I certainly didn't invent it!

Re:other on line shoping sites had software downlo

[E IS mC(Square)]

That's because Apple 'fans' ignore the facts?

Name Suggestions?

[JoeCommodore]

Lets help 'ol MS out, lets suggest some names for their Windows Software Store.

- WinStore
- SquirtCentral
- BetaMart or BetaShop
- SoftBazaar
- SoftStore
- SoftShop
- MicroMart
- WinMart
- SteveMart (take that Jobs!)
- SolutionCentral (heh.. hooo... hah, too funny)
- KinShop

Any others?

Re:Name Suggestions?

[DontBlameCanada]

Cash n' Crash!