Microsoft on Tuesday filed a second objection to Apple’s enduring pursuit to trademark the phrase “app store.”
In the latest complaint, Microsoft hired a linguist, Dr. Ronald Butters, to go head-to-head against Apple’s own hired linguist, Robert A. Leonard. Essentially Butters says that the phrase “app store” is too generic to be trademarked, while Leonard contends that “App Store” is a proper noun and therefore qualifies for trademark status. You say potato …
“What do people call Apple’s and its competitors’ stores as a group, or genus?” writes Microsoft’s counsel. “To find that, you need to look where people talk about multiple stores, not just Apple’s. And when you look there, you find them called ‘app stores.'”
Citing Butters, the lawyers use an analogy to show that the generic use of “app store” simply follows a common naming paradigm in American English, like buying shoes at a “shoe store” or toys at a “toy store.”
In early March, Apple called Microsoft a hypocrite for calling “app store” too generic to trademark, given that Microsoft successfully trademarked “Windows” in 2004. Weeks later, Apple sent cease and desist letters to a mobile porn software startup, MiKandi, and to Amazon for the “Amazon Appstore.” While risky, companies can file such complaints even for unregistered trademarks.
Apple has been trying to trademark the phrase “app store” since 2008, when it launched the iTunes-based App Store for mobile software applications. In January this year Microsoft motioned for a summary judgment to dismiss the application.
According to a Microsoft spokeswoman, this should be the last reply filing from either party in the process. The ball is now in the USTPO/TTAB’s court.
“There is a possibility of a hearing, but the next anticipated step in this process would be the outcome of the summary judgment ruling,” she said.
Disclaimer: if Apple wins, PCMag will have to change over 400 generic uses of “app store” including titles to articles like “LG Unveils App Store for TVs” and “Ford Announces App Store for Sync Applications.”