Apple to MS: “App Store” No More Generic than “Windows”

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Apple has fired back at Microsoft by borrowing a play from Big Redmond’s own playbook: In a filing with the U.S. Patent and Trademark Office (U.S.P.T.O), Apple has responded to a complaint from Microsoft trying to block Apple from getting a trademark on “App Store” by arguing that the term is no more generic than “Windows.”

Microsoft filed for a summary judgement with the U.S.P.T.O in January of 2011, arguing that App Store was simply too generic to be a term that could be trademarked.

“‘App store’ is a generic name that Apple should not be permitted to usurp for its exclusive use,” Microsoft said in its complaint. “Competitors should be free to use ‘app store’ to identify their own stores and the services offered in conjunction with those stores.”

Apple’s response, as covered by Politico, effectively argues that Microsoft’s pot is calling Apple’s kettle black, saying, “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.”

In a further metaphorical flourish, Apple wrote that Big Redmond was “missing the forest for the trees,” and asserted that Microsoft’s complaint used, “out-of-context and misleading snippets of material printed by its outside counsel from the internet and allegations regarding how the public allegedly interprets the constituent parts of the term APP STORE, i.e., ‘app’ and ‘store.’”

Ouch.

Apple wasn’t done, however, and accused Microsoft of “concocting” its argument, and that there was no merit to the company’s request for a summary judgement.

No ruling or decision has been made by the U.S.P.T.O., and today’s information is simply that Apple’s response has been made public. In the meanwhile, Apple uses a service mark (?) when talking about the App Store, as the trademark process works its way through the U.S.P.T.O. system.

While that happens, competitors are relegated to exciting names like Android Market, Windows Phone Apps Marketplace, BlackBerry App World, and Ovi.

The App Store Melamge

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Comments

dave

As a Mac user, I know I have been calling programs applications for easily 17 years, and with OS X application had the .app extension. I certainly called them Apps before the app store. I know this true of other Mac users as well. How many Windows users or other phone makers user can say the same?

jfbiii

I think if MS had used the name “Operating System” instead of “Windows” there would be a closer comparison.

ilikeimac

Gruber made this point about the genericness of the name “Windows” 6 weeks ago when Microsoft first filed its challenge.

http://daringfireball.net/linked/2011/01/13/app-store-trademark-msft

baylors

M$ sued and won OS maker Linspire. Their name used to be Lindows. Their argument was that Lindows sounded too much like Windoze and people would be confused. Therefore M$ would have lost $. Now THEY don’t like the fact that Apple beat them to the punch. I really hope Apple wins this… Not that I’m a fanboy of EITHER money grubbing crappy OS making companies.

ilikeimac

Hmm, looks like Gruber eventually came to take Microsoft’s side on this issue though. As do I, I think. @jfbiii makes a good point, and I think that’s the crux of the issue for Gruber’s decision as well.

http://daringfireball.net/linked/2011/01/13/app-word-of-the-year

bob dole

Programs have been called “apps” for years. Its like expecting to trademark the name “grocery store.”

Windows is a word that has nothing to due with the actual product but serves as a metaphor. A relevant comparison would be if Microsoft or Apple called their OS “Operating System.”

Apple’s is indeed called Mac OS, not just “OS.” Like how the App Store needs to be called the iOS/Mac App Store.

Suf

Funny thing as i saw this link in google news… 3 stories down is a bunch of articles talking about Amazon:

Amazon to take on Google’s Android Marketplace with an app store of its own

Amazon.com to open Android App Store

Amazon.com Plans to Open Online App Store to Rival Google’s

chronster

If Microsoft called their operating system “screens” then this might hold water.  Think of long before Windows existed.  People didn’t call each new window a window, they called it a screen!  Windows was a creative term used to differentiate an operating system.

Also Dave, if you think PC users haven’t been calling software “apps” as long as you have, you really are clueless.  Hell, “Appz” was a phrase pirates used WAY back in the 90’s.

adad

Microsoft is right.

mhikl

dave, we’ve had this discussion before so it is good you brought it up to reaffirm the point. I remember writing about a quick survey I did at work with Mac and Windows users. Mac people call them applications while Widows people call them programmes.

Apple users have for some time referred to small applications as apps as in the example: calculator app. Apps, then, naturally became the Apple term for the small applications it uses in its iFamily. The chopped word in both uses can be seen as a reference to the first three letters of the corporation’s name, Apple.

Store, on its own, is a generic name so cannot be patented. However, App Store, App Market, Apps Marketplace, App Depot, App House, Apps Warehouse, App Boutique, Apps Emporium, App Storehouse, Apps Repository, App Stockroom, Apps Provider, Apps Outlet, App Supermarket, Apps Superstore, Apps Megastore, Apps Privy; all are up for grabs for patents.

As an aside, but poignant, Apple used the term applet in applescript (1993) for a small application which assisted a larger application, but which eventually came to be associated with Java as in Javascript. Apple comes up with some great monikers.

But, M$ must be right. adad told us so.

themrwhite

How many Windows users or other phone makers user can say the same?

Windows users call them executibles, or in other words, crashes. Sorry, had to do it.

geoduck

I’m going to disagree. It isn’t about the individual words Apps or Store. Apple isn’t trying to trademark App or Store. They are trying to register “App Store”. BlackBerry own’s “App World” (not to mention BlackBerry). MS owns “Phone Apps Marketplace”. I don’t think this can keep others from using the words Apps, Phone, Store, or Marketplace in their own productions. You just can’t use them in the way BB or MS or Apple use them. I don’t think Microsoft can block anyone from using the term Server just because they own “Windows Server”. These are words and people trademark words in different combinations. If this goes against Apple then American Telephone and Telegraph and Minnesota Mining and Manufacturing could go after anyone for infringement if they used any of those words including the ANDs.

Apple want’s to trademark AppStore. I got no problem with that.

dbergeron

I have to disagree with jfbiii. Apple would have had to had named the the App Store, “Application Store” for jfbiii to have a good arguement.

Lee Dronick

I remember writing about a quick survey I did at work with Mac and Windows users. Mac people call them applications while Widows people call them programmes.

Not mention Preferences and Properties

Oran-G

from support.apple.com,

Mac OS X keyboard shortcuts
....
Option-Command-M | Minimize all windows

BUSTED!

Lee Dronick

Option-Command-M | Minimize all windows

BUSTED!

There is a world of difference between windows the screens and Windows the OS.

ming

if generic means the category of the named item.

examples
(specific name) -> (generic name)
apple -> fruit
trees -> plant
toyota corrolla -> car
best buy -> electronic store

now the issue we are talking about is windows and app store so we see if it will make sense when we put it in

Windows -> operating systems
app store -> .... (app store? mobile market? do we have a general name for this yet? if we do and the answer is app store than its generic but if its something else then app store is a specific.)

i_newit

Pot, meet Kettle. Kettle, meet Pot.

iphonzie

Nobody ever referred to anything as an “app store” before Apple.

Plenty of things were referred to as “windows” before Microsoft.

I don’t see a leg for Microsoft to stand on.

VaughnSC

Minimize all windows… BUSTED!

I’m not sure what your point is. The Macintosh had windows (lowercase), and menu items referencing them as such, well before Windows (Uppercase) was a glimmer of a synapse in Bill Gates’ head.

I think MS is just peeved that they’re late to the game, that all of the useful synonyms are taken and hope to capitalize, even if marginally, on the success and ubiquity of the phrase ‘App Store.’

As someone mentioned above, until very recently, ‘Application’ and its derivatives have historically been Apple-centric until popularized in the public’s mind by memes such as ‘There’s an app for that.’

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