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Apple has shot back at Microsoft's attack on Cupertino's attempt to trademark the term "App Store", saying that Redmond's argument is based on "out-of-context and misleading snippets of material printed by its outside counsel from the internet."

Ah, those stupid, stupid outside counsels and that stupid, stupid internet.

Redmond had claimed that the term "App Store" is too generic to trademark, but naturally, Apple sees things differently. "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," Apple's counsel writes in a 62-page filing with the US Patent and Trademark Office (the emphasis is Apple's).

"Yet, Microsoft, missing the forest for the trees," the filing continues somewhat snarkily, "does not base its motion on a comprehensive evaluation of how the relevant public understands the term APP STORE as a whole."

Microsoft argues in a January filing that both "App" and "Store" are generic, and thus can't be trademarked – an argument, Microsoft said, that's based on "undisputed facts".

Not so, says Apple. One entire section of its filing is entitled "Microsoft’s 'Noun Plus Store' Test Grossly Oversimplifies the Genericness Test," and another is called "The Fact That Mainstream Dictionaries Do Not Have a Definition for the Term APP STORE Supports a Finding that the Term is Not Generic."

Microsoft also argues that since the press has used the term "app store" as a generic term to describe other, well, app stores, the term must be generic.

Apple isn't buying that argument, either. "What is missing from Microsoft's submission is any evidence, expert or otherwise, regarding whether such uses represent a majority of the uses of the term or simply a small, inconsequential subset of how the relevant public uses the term APP STORE."

To prove that point, Apple rolled out an opinion by Dr. Robert Leonard, whom the filing describes as "a renowned linguistics expert". That worthy, according to Apple, "concludes that 'the predominant usage of the term APP STORE is as a proper noun to refer to Apple's online application marketplace.' If there can be any doubt regarding whether genuine issues of fact exist warranting trial (and there should not be)," the filing continues, "Dr. Leonard's declaration unquestionably removes it."

Leonard's conclusion wasn't based on mere opinion, as the filing notes. "Dr. Leonard analyzed references to APP STORE appearing in The Corpus of Contemporary American English (COCA), an online collection of over 410 million words of popular texts," which Leonard described as "...accepted among experts in the field of sociolinguistics as representative of current language use."

COCA-combing led to Leonard's discovery that "88 per cent of the references to APP STORE in that database constitute references to Apple's APP STORE service." And if 88 per cent was good enough for Leonard, it was good enough for Apple – and, from Cupertino's point of view, it should be good enough for the USPTO.

Leonard also badmouthed the procedures used by Microsoft's outside counsel, Nathaniel Durrance, to develop his argument against Apple. Durrance "selectively chose his evidence and submitted only those pieces of evidence that he concluded were helpful to his argument that APP STORE is a generic term. This approach is antithetical to scientific analysis, including linguistic analysis," Leonard writes, accusing Durrance of cherry-picking.

"Mr. Durrance's untutored survey is entitled to no weight whatsoever," Apple argues. "Microsoft has failed to meet its high burden of proof necessary to prevail..." the filing concludes.

Perhaps. Perhaps not. It's now up to the USPTO Trademark Trial and Appeal Board to decide whether to side with Microsoft's original Opposition filing, or to allow the dispute to go to trial. ®

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