Apple and Amazon have recently ended their trade mark stoush (or ‘App Store’ war) over Apple’s claim for exclusive rights to use ‘App Store’ for computer software applications.
A valuable reminder for trade mark owners is that if you are forging a new market, be careful to ensure that the brand you consider as ‘fresh’ and ‘unique’ isn’t adopted as a common descriptive term.
In 2008 Apple filed an application with the U.S. Patent and Trademark Office to register the ‘App Store’ mark. Apple filed a complaint against Amazon in March 2011, alleging that ‘Amazon Appstore for Android’ violated Apple’s ‘App Store’[1] trade mark. That kicked off a legal battle between Microsoft and Apple, and eventually, Amazon.
Amazon argued that the term ‘app store’ is generic in nature and should be available to any company that sells/offers any kind of applications. Apple however rejected the seemingly sensible notion that “based on their common meaning, the words ‘app store’ together denote a store for apps”.
Apple’s attempts at mounting this ‘non-descriptive’ argument ran into difficulties when Apple CEO, Tim Cook, used the words generically in stating: “Our app store is the largest by far”.[2]
Following settlement of the case on 8 July, Martin Glick, a lawyer for Amazon, said in an interview, ‘This was a decision by Apple to unilaterally abandon the case, and leave Amazon free to use ‘app store’.[3]
Apple spokeswoman Kristin Huguet said[4]: ‘We no longer see a need to pursue our case’. ‘With more than 900,000 apps and 50 billion downloads, customers know where they can purchase their favourite apps’.
‘We’re gratified that the court has conclusively dismissed this case,’ Amazon spokeswoman Mary Osako said. ‘We look forward to continuing our focus on delivering the best possible appstore experience to customers and developers.’[5]
For more about the case: Apple Inc. v. Amazon.com Inc. et al, U.S. District Court, Northern District of California, No. 11-01327.
A lesson to take with you: Be careful when choosing and using your mark. You don’t want it to become generic and lose its connection to you!
It is also important that you monitor how your trade mark is being used online, with a ground swell of consumers able to access and interact with your mark at the ‘click of a button’, the tide of usage of a mark can very quickly shift from your goods or services to describing all goods and services of a similar nature.
[1] http://tess2.uspto.gov/bin/showfield?f=doc&state=4806:ztpyz5.7.6 as at 16 July 2013
[2] http://www.pcmag.com/article2/0,2817,2388747,00.asp as at 16 July 2013
[3] http://www.businessinsider.com/apple-amazon-end-app-store-lawsuit-2013-7?IR=T as at 16 July 2013
[4] http://www.sltrib.com/sltrib/money/56573569-79/amazon-apple-app-store.html.csp as at 16 July 2013
[5] http://www.reuters.com/article/2013/07/09/us-apple-amazon-appstore-lawsuit-idUSBRE9680TT20130709 as at 16 July 2013