There was a recent ruling in the Apple v. Amazon case, that I previously discussed in the article “Apple Making Power play By Suing Amazon Over App Store Trademark.” This recent ruling involved Apple's attempt to block Amazon's use of the term "app store" pending trial in this case. Apple claims infringement and dilution of its mark. To win on infringement, it must ultimately show that it has a legally protectable mark and that Amazon's use of the term "app store" to describe where it sells applications for use on Android devices will likely confuse consumers about the origin of the goods being sold. To win on dilution, Apple must show that the trademark is protectable, that it is "famous," and that Amazon's use of it dilutes its value.

To get a preliminary injunction, Apple needed to convince the judge that it is likely to win at trial and also that it will be irreparably harmed if Amazon is not blocked from using the mark during the time leading up to trial. The judge said no to the preliminary injunction, not on grounds of lack of irreparable harm (that issue was never reached) but on the ground that Apple was not likely to win on the merits of its claims at trial.

As I have previously described, trademarks are classified as generic, descriptive, suggestive, arbitrary, or fanciful. Any trademark that is suggestive, arbitrary, or fanciful is protectable. A generic mark is never protectable and a descriptive trademarks are generally not protectable, but the latter can become protectable if it acquires distinctiveness in the public mind through what is called "secondary meaning" (which generally means that a company has advertised a product or service to such a degree that the public comes to associate the trademark with the producer of the goods or services as opposed to seeing the trademark as descriptive, e.g., "Park n Fly").

Apple has claimed that the "app store" trademark is suggestive because its meaning is "not inherently obvious" and because Apple was required to devote a substantial amount of resources to educate consumers about their service.

Amazon claimed the mark is generic in merely describing a store where software applications are sold. On this key issue, in assessing whether Apple was likely to succeed with its claim the court ruled that: "The court assumes without deciding that the 'App Store' mark is protectable as a descriptive mark that has arguably acquired secondary meaning. The court does not agree with Amazon that the mark is purely generic . . . but also does not find that Apple has shown that the mark is suggestive, as there appears to be no need for a leap of imagination to understand what the term means." Therefore, Apple, with its major advertising campaigns, may well be able to prove secondary meaning at trial.

But Apple lost on the second factor, which it will need to show if it is to win at trial and that is the "likelihood of confusion" factor. On this point, the court weighed eight factors as required by governing precedent but, in effect, really boiled it down to the fact that consumers buying applications for Android devices will not really believe that they are buying them from Apple or from an Apple authorized source when they see the term "app store" at Amazon's site.

The court also rejected Apple's dilution claim as a basis for granting preliminary relief, essentially finding that "App Store" did not constitute a "famous mark" on the evidence shown by Apple to date (it is here that the generic references to "app store" by Mr. Jobs and others come back to bite Apple).

All this suggests that Apple will have an uphill battle at trial, which appears to be consistent with my earlier article.

The courts decision may be viewed directly here.

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