I can’t say that I am surprised to see this, after Apple’s heated battle with Microsoft over the “App Store” trademark, they are now suing Amazon for “improper use.”

The trademark being sought by Apple is for "App Store." Under the relevant trademark law, a trademark cannot be registered if it consists solely of a generic or purely descriptive term. "Store" is generic. So too is the word "application," which is commonly thought of as being what the word "app" refers to. Therefore, no trademark could ever be registered for the word "store" or for the word "application" and certainly not for "application store" (no trademark can be registered when all of its constituent elements are generic). A trademark identifies the origin of goods or services and no one vendor can claim that a whole generic category of goods or services can be set out as a domain for which it and it alone is the origin. The question is, does any of this change because Apple's claim is for the word "app" as opposed to "application."

Apple claims that "app" in this context is a word that refers uniquely to Apple in the public mind, that is, when a typical consumer hears of an "app," that person immediately associates that word with an "Apple app" and not with the generic term "application." In legal terms, then, Apple is arguing that the word "app" here has an "arbitrary" meaning and is therefore registrable to Apple alone. If Apple prevails on this claim, it will be able to sue anyone in the future who tries to sell "apps" through any form of "app store."

Of course, many other vendors are using the "app" designation for selling online applications and there is thus vigorous opposition to Apple's application. Indeed, once the trademark examiner granted the application, Amazon immediately filed a proceeding contesting it. To date, then, Apple does not have any definitive determination in its favor on this issue. By continuing to push the trademark application, and by filing this lawsuit, Apple hopes to pave the way to have exclusive use going forward of "App Store" as against all competitors.

First let me say that I am a big fan of Apple products and if Steve Jobs would like to send me a new iPad I would be even more inclined to like them, however, it would not change my opinion here. I think Apple is overstepping the bounds of reasonableness. If their trademark application should be granted, how will other vendors be able to refer, even generically, to what they are offering? (Not that this is Apple’s goal. Of course not).

Trademark law is intended to protect a company's distinct offerings and to prevent others from pawning off a vendor's good will by passing their goods or services off as that of their real owner. I simply don’t think that anybody will believe that what Amazon or Google or any of a number of other vendors offer is an attempt to trade on Apple's goodwill. On the other hand, trademark law is not intended to give anybody any form of exclusivity in describing generic categories of goods or services. That appears to be precisely what Apple is here attempting to do.

Apple has one more obstacle to overcome as well. A term that is at some point a distinctive identifier of a vendor's goods or services can become generic over time (consider "Xerox,” "aspirin," "escalator," and many others that have suffered this fate). If "app" was at one time distinctive to Apple a few years back, I just don’t think that the public today thinks of it as anything other than a generic indicator of what you can download from a wide variety of sources.

For those wishing to follow this saga, the case is in the U.S. District Court, Northern District of California and is captioned Apple Inc v. Amazon.com Inc, Case No. 11-1327.

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