23
Mar/11

It's Not An App Store, It's A Mobile Download Service (Text of Complaint in Apple v Amazon)


ok. It’s not an App Store, it’s a mobile download service.  Say, I just licensed the Angry Birds software suite from the mobile download service offered by my cellular telephony provider’s hand-held phone with PC-functionality.  Just joshin.’

Here is an excerpt from Apple’s first response to the descriptiveness objection (that it overcame) when it applied for the mark APP STORE (which application Microsoft is presently opposing):

In order for a mark to be non-registrable because of descriptiveness, it must not only be descriptive, but must be “merely” descriptive of the goods or services to which it relates. See TMEP § 1209.01(b). Stated differently, to be non-registrable, the mark must do nothing other than immediately convey an understanding of the goods for which registration is sought. . . .

Whether a mark is suggestive or merely descriptive must be determined, not in the abstract, but, rather, in relation to the goods or services for which registration is sought; the context in which the mark is used, or intended to be used, in connection with those goods or services; and the possible significance which the mark would have, because of that context, to the average purchaser of the goods or services in the market place. See TMEP § 1209.01(b);  . . .  In re Realistic Co., 440 F.2d 1393 (C.C.P.A. 1971) (finding CURV not merely descriptive of permanent wave curling solution); In re Waldorf Paper Prods. Co., 155 U.S.P.Q. 174 (T.T.A.B 1967) (finding STRIP-FLAP for an opening device for paper board containers not merely descriptive even through the opening device containing strips and flaps); Ex parte Great West Lubricants, Inc., 118 U.S.P.Q. 169 (Comm’r Pat. 1958) (finding TUBE-O-LUBE used on a cartridge of lubricating grease not descriptive but suggestive).

The term “APP” is not merely descriptive. In fact, it is completely arbitrary. Arbitrary marks are “inherently distinctive” and are registrable on the Principal Register without proof of acquired distinctiveness. TMEP § 1209.01. The term “APP” may, arguably, sometimes be used as a slang abbreviation for the word “application”, but this term has many other incongruous meanings. Attached as Exhibit A are printouts of online dictionary definitions of the term “application”. As demonstrated, “APP” is an abbreviation for a number of app-formative words, such as apparatus, apparent, appendix, applied, appointed, approved and approximate. Attached as Exhibit B is a printout from website Dictionary.com showing the definition of the term “APP”. The Examiner’s evidence of dictionary definitions fails to offer any possible alternative definition besides the one supporting the Examiner’s position from Microsoft’s Encarta English Dictionary. When used in connection with the word “STORE” it is not apparent what the goods or services are. For example, the service could be offering physical objects such as apparatus or it could be commenting on an inherent trait or quality of the items, such as “approved”. As the term “APP” can have several different meanings, applicant submits that at most, the mark is suggestive of applicant’s services.

Further, applicant does not offer “store” services. The word “STORE” is usually used in the traditional sense of a brick-and-mortar store or in the modern sense of an online retail store. Applicant’s software is only available for download to subscribers through its iPhone portable electronic device or its iTunes digital media player application. None of applicant’s APP STORE software is available for purchase through a store in the traditional sense of the word, namely brick-and-mortar or online retail stores. It requires several mental steps to associate applicant’s services to a traditional “store” service. As the term “STORE” is not used in the traditional sense of the word and can have different meanings, applicant submits that at most, the mark is suggestive of applicant’s services.

. . .  In the case at hand, the Examiner offers online dictionary definitions of the words “APP” and “STORE” from Microsoft Corporation’s Encarta World English Dictionary. These definitions, however, are not sufficient to prove that the mark as a whole is merely descriptive. Applicant submits that, on the contrary, such an interpretation would improperly dissect its mark rather than view it as a whole, which is the proper test when considering the issue of descriptiveness. In fact, when viewed together as “APP STORE”, the mark has only one meaning and that is as an indicator of source to applicant’s services. Attached as Exhibit C are printouts of the first 100 hits from a Google search for the mark “APP STORE”. The vast majority of the more than 8 million results from the search use the term to refer to applicant’s services. Of the first 100 references, all but one refers to applicant. This evidence demonstrates that the mark has only one meaning, and that is as an indicator of source for applicant’s services.

Moreover, applicant’s mark creates a clearly recognizable double entendre. A “double entendre” is an expression that has a more than one connotation or significance as applied to the goods or services. A mark that has a “double entendre” will not be refused registration as merely descriptive if one of its meanings is not merely descriptive in relation to the goods or services. TMEP § 1213.05(c). In the context of applicant’s services, in addition to other possible connotations, “APP” will be immediately recognized as an abbreviation of the applicant’s well-known APPLE name and mark, and the mark as a whole, APP STORE, will be immediately recognized as a variant of the applicant’s well-known APPLE STORE mark. These marks are registered under, inter alia, Reg. Nos. 2462798, 2424976 and 2683410 (collectively, the “APPLE STORE Marks”). Copies of these registrations are attached as Exhibit D. Such readily apparent meaning is not merely descriptive, and is in fact highly distinctive, in relation to the goods and services. Therefore the mark should not be refused on mere descriptiveness grounds. See TMEP §1213.05(c).

I look forward to seeing the surveys.  HT MD at Bloomberg for the complaint.

Complaint Apple v Amazon App Store

4 Responses to “It's Not An App Store, It's A Mobile Download Service (Text of Complaint in Apple v Amazon)”

  1. Apple’s argument is highly unconvincing to me (even though I own an iPhone and use their App Store [tm] brand app store [generic]). Sure, “app” and “store” have a variety of meanings, but in the particular field both Apple and Amazon are in, an app store has a clear meaning, and it’s a generic one. To me, “the Apple App Store” is a specific service, but an “app store” is a general one, just like “Kellogg’s Corn Flakes” is specific and “corn flakes” is generic. App is a general term for applications to run on specific devices, generally smaller and more limited than a full-size computer and it’s bloatware software. It has relatives like “applet” that have been around for a while and not limited to one manufacturer. “Store” can refer to not only a brick-and-mortar store, but an online one (as admitted by Apple), and I see no limitation there to one reachable in a web browser; there were online stores in proprietary online services like Prodigy and AOL way back in the ’90s, and there are online stores in proprietary programs like iTunes now. It’s just a general term for a place to buy something. “App store” is the logical way to refer to a place to buy apps.

    • esqmarty says:

      There’s a type of survey called a ‘Teflon Survey’ which (sort of) of asks
      the respondent “When you are shopping for a [alternate generic description
      of the goods/services] you would ask for what? [or you would look where]? I
      think Amazon hopes you get asked to participate in such a survey.

  2. Here is a similar story

    Legal expert questions Apple Vs. Amazon case

    The legal rumblings currently under way between Apple and Amazon over the use of the phrase App Store may focus on the decision of whether the term has become common parlance, legal experts have told GamesIndustry.biz, even though its familiarity may well be purely down to Apple’s success.

  3. Anonymous says:

    Too clever by half.