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Apple loses round to Amazon in 'App Store' name dispute

False advertising? Nope. Trademark infringement? Maybe...

The smart choice: opportunity from uncertainty

A US judge has ruled in Amazon's favor in a case in which Apple accused the online retail giant of false advertising in its use of the term "app store" in its Amazon Appstore for Android.

"The court finds no support for the proposition that Amazon has expressly or impliedly communicated that its Appstore for Android possesses the characteristics and qualities that the public has come to expect from the Apple APP STORE and/or Apple products," wrote Judge Phyllis Hamilton of the US District Court for the Northern District of California in a decision handed down on Wednesday approving Amazon's request for summary judgment filed last September.

"That is," Hamilton continued, "Apple has failed to establish that Amazon made any false statement (express or implied) of fact that actually deceived or had the tendency to deceive a substantial segment of its audience."

Amazon's victory, however, is a partial one related only to Apple's assertion that the use of the term Appstore for Android was false advertising. Still at issue is whether such use is a violation of Apple's trademark on "APP STORE", which Cupertino filed on July 17, 2008, but which is still in dispute.

Microsoft is contesting that trademark application. In an Opposition to the US Patent and Trademark Office's Trademark Trial and Appeal Board filed in July 2010, Microsoft argued that "The undisputed evidence shows that 'app store' is a generic name for a store offering apps."

Microsoft argued in that filing that "'App' is a common generic name for the goods offered at Apple's store, as shown in dictionary definitions and by widespread use by Apple and others," and that "'Store' is generic for the 'retail store services' for which Apple seeks registration, and indeed, Apple refers to its 'App Store" as a store."

Interestingly, Microsoft quoted none other than the late Steve Jobs in its argument that APP STORE was too generic to be trademarked, noting that when criticizing the proliferation of app stores for the Android platform, Jobs said (emphasis in Microsoft's original complaint):

In addition to Google's own app marketplace, Amazon, Verizon and Vodafone have all announced that they are creating their own app stores for Android. There will be at least four app stores on Android which customers must search through to find the app they want and developers will need to work to distribute their apps and get paid.

Microsoft also argued that although Apple had cowed its competitors into not using the exact term "app store" in descriptions of their, well, app stores, press reports on them had consistently used the term "app store" to describe them, thus proving that term's generic nature.

Ah, the power of the press...

Although Wednesday's ruling removes the "false advertising" portion of Apple's complaint against Amazon, and while common sense – and Microsoft – argue against Cupertino in the trademark dispute, legal matters such as this are rarely predictable.

A date has not yet been set for the adjudication of that dispute, but as more app stores identify themselves as such, Apple's trademark case becomes weaker due to the long-standing legal precedent that the more a term is used, the more generic it becomes, and the more generic it becomes, the less trademarkable it is.

After Wednesday's ruling, you can be sure that Apple will be pushing for a speedy resolution of its trademark assertions. ®

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