Today’s ruling is not a decision on the case itself, but rather a ruling on the request by Apple for a preliminary injunction. To gain a preliminary injunction, a plaintiff would have to prove to the judge they is likely to prevail in its case, and in her ruling, Judge Hamilton made it clear that Apple is not likely to do.
“The court finds that Apple has not established likelihood of success as to the infringement claims,” she wrote. “The court assumes without deciding that the ‘App Store’ mark is protectable as a descriptive mark that has arguably acquired secondary meaning.’
She added, however, that, “The court does not agree with Amazon that the mark is purely generic.”
Amazon’s defense in the suit centered around two main arguments, “that the ‘App Store’ mark is generic (and therefore not protectable), and that even if the mark is not generic, Apple cannot demonstrate any likelihood of confusion.”
While the judge rejects the notion that “App Store” is purely generic, as noted above, the rest of her ruling made it clear that she doesn’t believe there is much chance that consumers are going to be confused when shopping at one or the other, in part because the Android apps being sold at Amazon won’t work on iOS devices.
More broadly, there are eight factors that have been established by the courts as requirements for trademark infringement, and the judge felt that only two of those factors work in Apple’s benefit.
She wrote that, “Two of the eight factors somewhat favor Apple, and three factors somewhat favor Amazon. The remaining three factors are neutral, or do not clearly favor either side.”
“Accordingly,” she wrote, “under this analysis, the court finds that Apple has not established that it is likely to prevail on the ‘confusion’ element of its infringement claim.”
In her conclusion, she was even more succinct, writing, “In accordance with the foregoing, the motion for preliminary injunction is DENIED.”
The case isn’t over, and Apple and Amazon can both introduce new evidence and testimony, and in the meanwhile, there is an appeal before the Trademark Trial and Appeal Board from Microsoft, which had argued the term was generic.
In other words, while the case isn’t over, the judge in the case has made it abundantly clear that the bar is set quite high for Apple to prove infringement, and it’s always possible that the company’s mark on “App Store” will be declared invalid by the Trademark Trial and Appeal Board.