Slashdot Mirror
If App Store's Trademark Is Generic, So Is Windows'
Toe, The writes "In response to Microsoft's attempt to dismiss Apple's 'App Store' trademark application, Apple references Microsoft's claim to the Windows trademark. '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.'"
AFAIK, Microsoft got rejected when they tried to register "Windows" as a trademark and went for "MS Windows" and "Microsoft Windows" which both are valid trademarks.
Apple had trouble with it's name as Apple was used by a record company before... They got through it by agreeing to not sell music... Untile they started iTunes and the whole issue came back...
"App Store" by itself is a généric name and should not be copyrightable (same for App Market and so on). But Apple can trademark "iTunes" and "Apple App Store" if they want...
But they'll have trouble enforcing the "App Store" trademark...
They lost in the English speaking world, shopped around until in Finland, they won (because those glass holes in walls you look through aren't called windows in finland).
At that point, Lindows sold their name to Microsoft and changed to Linspire because MS could have sued in Finnish courts and since they don't make much money off it, it would cost them their company to continue. Since prosecution would cost Microsoft some pocket change, they used it to buy the trademark and end it.
"App Store" by itself is inherently generic. It literally just means "place where apps are sold." Trademarking it is as ridiculous as trademarking "shoe store" or "electronics store." Windows, used in the context of a computer product, is not generic. Rather, it's a specific, well-known product.
That doesn't mean it's "inherently generic", but rather that it's "descriptive". There are four categories of trademarks - arbitrary or fanciful, suggestive, descriptive, and generic. Only the last is barred from protection.
To show that "App Store" is not generic, but is instead descriptive, Apple has to show that it refers to a specific store - theirs. Consider the restaurant "Cafeteria", as well as "The Container Store" and "Staples". And to show it's got protectable secondary meaning in the minds of the consuming public, they must show that people hearing "App Store" think "Apple", rather than "Palm" or "Google". And I think they've got a good choice. Slashdot aside, the rest of the consuming public may not even know that other App Stores exist.
Their mark applies to
. In other words, it only applies to the "boxed product". I can still tell you that "Apache Derby is an SQL Server" because I am referring to a downloadable program, not a saleable functional complete product with manuals.
I think this shows you why lawyers and patent agents get paid according to the amount of weasel in their heredity. Clearly someone at Microsoft demanded that SQL Server get trademarked, and the scope got narrowed and narrowed until at last the USPTO rolled over.
Me, I always refer to it as "Microsoft ess queue el server 2008" because i won't play those silly games. As for people who call it "sequel", they need to get off my (IBM-coloured) lawn, because I can remember SEQL!
From scarped cliff or quarried stone she cries "A thousand types are gone, I care for nothing, no not one."