by Zachary Wadlé

On July 17, 2008, Apple, Inc. applied to register the trademark “APP STORE” covering the Cupertino based company’s online store where users can buy various software applications for their iPhones, iPads, and/or iPods. Apple eventually completed the trademark examination process, and the mark proceeded to publication in the Trademark Official Gazette on January 5, 2010. On July 6, 2010, Microsoft Corporation filed an Opposition with the Trademark Trials and Appeals Board against Apple’s proposed registration of the APP STORE trademark. Two weeks ago, Microsoft filed a motion for summary judgment requesting that Apple’s trademark application be summarily rejected by the Board. The centerpiece of Microsoft’s motion is the argument that Apple’s proposed APP STORE trademark is “generic” and therefore ineligible for trademark protection. The Trademark Board must therefore decide whether Apple’s proposed APP STORE trademark is “generic” or not.

As a general matter, once an applied-for mark is determined to be generic, trademark registration must be denied. Proposed marks such as THE COMPUTER STORE, SHOE WAREHOUSE, DISCOUNT AUTO PARTS STORES, and THE ITALIAN STORE have been refused registration based on a finding of “genericness.” When presented with a claim of “genericness,” the critical issue for the Court to determine is whether members of the relevant consuming public primarily use or understand the trademark sought to be registered to refer to the broad category or class of goods associated with the proposed trademark. Making this determination involves a two-step inquiry: 1) what is the genus of goods or services at issue; and 2) is the term sought to be registered …understood by the relevant public primarily to refer to that genus of goods or services? Evidence of the public’s understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers and other publications. Whether a term is generic is determined at the time the issue arises. Therefore, in this situation, the relevant time of inquiry is not when Apple filed for registration of APP STORE in mid-2008 when “Apps” were in their relative infancy, but rather the present day.

Microsoft argues that the term “App” is ubiquitous in the technology trade and widely understood by the consuming public to refer to applications for handheld computer devices such as iPods, iPhones, Androids, Blackberrys, and the like. According to Microsoft, “APP STORE 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.” 

Apple has yet to file its response to Microsoft’s arguments. When Apple does respond, it will have to demonstrate that the term “app” is unique, and there is no “genus of goods” that is broadly referred to by the public as “apps.” Apple’s task may have been somewhat easier when it first filed for trademark protection in July 2008. At that time, the iPhone had been around for about a year and “apps” for the iPhone (or any other handheld electronic device) were not near as prevalent as they are today. Since then, the term “app” has arguably become part of the public lexicon due in large part to the explosive growth of Apple’s products and “apps” for those products (Apple just surpassed one billion total apps sold). Could this mean that Apple’s APP STORE trademark application will be a victim of Apple’s own success? That result appears likely given the ubiquitous use of the term “app” in the personal electronics marketplace. To maintain Apple’s exclusive rights to the APP STORE name, Apple’s lawyers will have to craft some novel “non-generic” arguments.