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Apple loses bid to trademark 'multi-touch'

But 'app store' fight with Microsoft kept alive

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The US Patent and Trademark Office has rejected Apple's appeal to obtain a trademark for the term "multi-touch".

"Simply because the applied-for term has been used in association with a highly successful product does not mean the term has acquired distinctiveness," concludes the USPTO's Trademark Trial and Appeal Board in an 18-page review of Apple's appeal to a USPTO examining attorney's earlier refusal of trademark protection.

The arguments for and against trademarking multi-touch hinged on the difference between "mere descriptiveness" and "acquired distinctiveness". The review document includes page after page of examples of descriptive uses of both "multi-touch" and "multitouch" in Popular Mechanics, The New York Times, PC Magazine, and others.

The ruling also notes that multi-touch not only identifies the technology behind pinching, zooming, swiping, and scrolling, but that it "also describes how a user of the goods operates the device." That may argue for descriptiveness, but it doesn't pass the distinctiveness test.

In fact, the more descriptive a term, the ruling notes, the more evidence the trademark-seeker needs to present to prove that the term "indicates source in any one entity." In other words, the more that multi-touch operation can be easily and generally understood to be descriptive of actions performed on a wide range of non-Apple devices, the less Apple can claim the term as their own.

Apple based much of its trademarking argument on the success and ubiquity of its multi-touch iPhone – but that avenue of argument didn't sway the Appeal Board. "As the examining attorney correctly pointed out," the ruling reads, "the applied-for mark is not iPhone, it is multi-touch."

In conclusion, the Board writes: "We are not sympathetic to applicant's arguments that the success of the product sold under the iPhone trademark translates to acquired distinctiveness of the term multi-touch."

Now that this dust-up appears to have been settled, we await the results of another ongoing Apple trademark battle, in which Cupertino seeks to assert protection for the term "app store". That battle is taking place on two fronts: one at the USPTO and one in the courts, where a judge refused in July to grant Apple a preliminary injunction to stop Amazon from using the term "Appstore". A final decision in Apple's trademark-infringement suit against Amazon is expected later this year.

The USPTO wrangling over the trademarkability of "app store" is still underway. This Tuesday, the Trademark Trial and Appeal Board denied Microsoft's request for a summary judgment on Redmond's assertion that "app store" shouldn't be protected. Let the argument continue, it ruled.

That appeal has a long way to go before resolution, with arguments scheduled to continue into mid-June 2012, after which the USPTO will consider its ruling.

Is "app store" merely descriptive or has it acquired distinctiveness? Stay tuned. ®

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