'Windows' just as generic a term as 'App Store', argues Apple in trademark tussle

It was always likely that Apple's attempts to trademark the term 'app store' would ruffle feathers across the mobile industry, if only because of the potential impact the firm's hold over the phrase would have on its rivals.

Microsoft's move to block said claim – which took the form of a letter to the US Patent and Trademark Office (USPTO) claiming 'app store' is too generic a term to belong to one party – has, just as predictably, gone down like a lead balloon with Apple.

Closing windows

In its latest filing to the USPTO, Apple makes direct reference to Microsoft, claiming its involvement is ill-advised, given the challenges it itself has faced over its claims to the Windows name over the years.

"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," offers Apple in the filing.

"Yet, Microsoft, missing the forest for the trees, does not base its motion on a comprehensive evaluation of how the relevant public understands the term app store as a whole."

Word play

Microsoft's challenge is built on the basis that both the public and those within the industry understand 'app store' to mean digital marketplaces as a whole, rather than specifically Apple's offering on iOS.

The firm even cited Apple CEO Steve Jobs' use of the phrase to describe rival Android marketplaces developed by Amazon, Verizon and Vodafone in an interview to add weight to its filing to the USPTO.

However, Apple retorts that its rivals have all managed to serve up their own platforms without using the phrase 'app store', effectively proving that even they recognise the name is intrinsically linked to its platform.

Right of reply

"As Microsoft itself acknowledges, these competitors have found ways of branding and describing their own online software marketplace without using the term app store," Apple adds.

"In limited instances third parties have made improper use of the term app store. In response, Apple has contacted those parties and requested that they cease and desist from further use of the mark. In most every instance, the entities contacted by Apple agreed to cease use of Apple's app store mark.

"Those few which refused to cease use of Apple’s app store mark made reference to Microsoft’s challenge of Apple’s rights in its app store mark, which has received widespread attention in the press, and have refused to cease using app store pending a ruling in this proceeding."

Just what happens next rests in the hands of the USPTO, who, moving forward, will decide if the case should proceed to court.

[source: TechFlash]