Microsoft Seeks Summary Judgment Against PTO Registration of Apple's 'App Store' Mark

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Microsoft Corp. filed Jan. 10 a motion with the Trademark Trial and Appeal Board opposing Apple Inc.'s attempt to register the term “App Store” for Apple's online store where users can download applications for use on an iPod, iPad, or iPhone (Microsoft Corp. v. Apple Inc., T.T.A.B., Opp. No. 91195582, motion for summary judgment filed 1/10/11).

Apple filed an application (77/525433) in July 2008 to register the term as a trademark in three classes--Class 35 for online retail stores; Class 38 for network transmissions and access; and Class 42 for maintenance of computer software. It was published for opposition in the Patent and Trademark Office's Official Gazette on Jan. 5, 2010.

Microsoft filed its notice of opposition July 6. Apple answered Aug. 16. According to Apple, the App Store mark, “as a result of the hundreds of thousands of programs offered on Apple's APP STORE service, the millions of users that have accessed the service, and the billions of downloads obtained by such users through the service, has become one of the most famous marks in the field of online computer software and information services.”

Microsoft moved for summary judgment in its opposition action on the grounds that “app store” is generic for retail store services offering software applications, as well as for searching and downloading such applications. “App” is a generic name for software applications; “store” is a generic name for retail store services; and the combination of a generic name of a product with the generic descriptor “store,” the opposer argued, is generic and unregistrable under such precedent as In re Computer Store, 211 USPQ 72 (T.T.A.B. 1981).

The company cited for support of its position the common usage of the term in the trade and press, “even by Apple's founder and CEO Steve Jobs,” when he was referring in an interview to Google's and others' online application offerings.

According to the motion, several other retailers have used the term “app store” as part of their online service name, and Apple has sent demand letters to those companies asserting infringement. Microsoft would also like to use the term for sales of its own applications, the motion declared.

Microsoft specifically identified five well known mobile device vendors--Google, RIM/BlackBerry, Nokia, Hewlett-Packard/Palm, and Samsung--with online stores that the press has referred to as “app stores” but which go by other names because they are “apparently in the same position as Microsoft--…pending a ruling in this Opposition they cannot use 'App Store' in their store names or descriptors without the possibility of claims from Apple.”

Jason Vogel of Kilpatrick Stockton, New York, represents Apple. Microsoft is represented by William O. Ferron Jr. of the Seed IP Law Group, Seattle.

By Tony Dutra


Motion at http://pub.bna.com/ptcj/TTAB77525433MSmotionJan10.pdf