Amazon: Dismiss Apple’s “App Store” False Advertising Claim

Amazon filed a motion Wednesday to dismiss Apple’s false advertising claim against the online retailer for its use of the “app store” name, which Amazon uses to describe its online marketplace for Android-based applications, Reuters reported. Amazon argued to the court that the “app store” name has become generic, and that the company cannot be found to have used it to falsely advertise that its service is associated with Apple’s “App Store.”

Amazon Appstore

The dispute between Apple and Amazon over “app store” dates back to March 2011, when Apple filed a lawsuit claiming that Amazon’s “Appstore for Android,” as it was then called, misappropriated the “App Store” mark that Apple sought trademark protection for in 2008. Apple claimed that Amazon’s naming of its application marketplace “unlawfully used the App Store mark to solicit software developers” and would serve to “confuse and mislead consumers.”

After Amazon launched its Kindle Fire tablet last fall, the company began to refer to its Android marketplace in advertisements as simply the “Amazon Appstore.” Apple shortly thereafter added a false advertising claim to its lawsuit, contending that, with the “for Android” dropped or deemphasized, Amazon was falsely advertising to consumers that its “Appstore” was equivalent to Apple’s “App Store.” It is this false advertising claim that Amazon petitioned the court to drop Wednesday. From Amazon’s filing:

The word ‘Appstore’ is part of the name of Amazon’s store; it is not a statement about the nature, characteristics, or qualities of Amazon’s store, much less a false one. What Apple is actually contending is that the use of ‘Appstore’ may confuse consumers into believing that the Amazon Appstore is related to or sponsored by Apple. Leaving for another day whether that is a reasonable contention, it is clearly one that sounds in trademark, not false advertising.

Apple App Store

Amazon claimed in its court filing Wednesday that “app store” has become too generic of a term to mean only Apple’s “App Store,” and that, as a generic term, the company cannot be found to have falsely advertised considering that it does sell “apps.” Amazon’s argument is supported not only by the now common use of the term “app store” by many different companies and software platforms, but also by statements made by Apple executives, who have on several occasions publicly referred to competing application marketplaces as “app stores:”

“So there will be at least four app stores on Android, which customers must search among to find the app they want and developers will need to work with to distribute their apps and get paid. This is going to be a mess for both users and developers. Contrast this with Apple’s integrated App Store, which offers users the easiest-to-use largest app store in the world, preloaded on every iPhone,” late Apple CEO Steve Jobs told investors in an early 2011 earnings call.

“Apple presumably does not contend that its past and current CEOs made false statements regarding those other app stores to thousands of investors in earnings calls,“ Amazon’s filing states, referring to the above-mentioned reference by Mr. Jobs and other generic “app store” references made by current Apple CEO Tim Cook. ”To the contrary, the use of the term ‘app store’ to refer to stores selling apps is commonplace in the industry," Amazon’s statement continued.

Steve Jobs Apple App StoreLate Apple CEO Steve Jobs introduces the Apple App Store to developers in 2008.

Apple was not the first company to show interest in the “app store” trademark. Sage Networks applied for the trademark to “Appstore” in 1998, but abandoned its application in 2000. then sought the mark “app store” in 2006, but also dropped its application by 2008, the same year that Apple applied for the mark after discussions with Salesforce.

Apple’s application for "App Store" was granted by the U.S. Patent & Trademark office but it is still pending a challenge by Microsoft, first filed in January 2011.

Separately from the outcome of the court’s ruling on Amazon’s petition to dismiss the false advertising claim, the primary suit between Apple and Amazon over the “app store” trademark issues is scheduled to go to trial in August 2013 (Apple Inc. v. Inc. et al, U.S. District Court, Northern District of California, No. 11–01327).