A dispute in the US concerning trademark infringement and false advertising has once again brought to light questions surrounding ownership of the term “App Store” in relation to downloadable mobile software and also, proprietorship of generic terms and abbreviations in the digital age.
The issue arose in March 2011 when Amazon began to use the term “App Store” in relation to an online marketplace, on which their Android and Kindle® applications and software could be viewed, purchased and downloaded. Objection was raised to this use of “App Store” by the computer giant Apple on the grounds of false advertisement and trademark infringement. It was argued that Amazon’s use of the term “App Store” would deceive and influence consumers into purchasing Amazon’s goods and services, diverting sales directly away from Apple.
Apple claimed that given their vast reputation and use of the words “App Store” since July 2008 that these words had become distinctive of them to such an extent that despite their generic nature, any third party using the two words would mislead consumers, giving rise to the erroneous belief of a commercial association. Despite this, the US District Court of California rejected the false advertising claim, stating that without evidence of actual confusion, the words “App Store” remained generic for all to use in relation to the goods and services of interest.
With regard to the claim of false advertisement, the US Court held that given the evidence presented by Apple, there was neither a likelihood of deception nor a false association. The words “App Store” were used to simply designate an online facility which enabled mobile and computer tablet applications to be viewed, purchased and downloaded. Taking the overall impression between the two “App Stores” into account, the kind and intended uses/purposes could be distinguished as neither offered for sale the other parties’ services.
Although the issue of trademark infringement has not yet been resolved, one would anticipate that the Court will reach a similar conclusion, particularly since Amazon have presented a number of articles which show generic use, including press releases from Apple’s past and present CEO’s which describe competitor’s services as “App Stores”
Prior to the infringement action, Apple submitted an Application to the US PTO for the Trade Mark “APP STORE” in respect of retail services, wireless transmission of data and the maintenance and repair of computer software. The day following publication, an Opposition was filed by Microsoft Corporation based upon the generic nature of the words. These Opposition proceedings have been suspended until the Apple challenge is decided in full.
Although these issues relate to use of the trademark in the US, Apple has also filed parallel trademark applications in Europe which are facing challenge from a number of parties including Microsoft, Nokia and HTC. The outcome of these proceedings will be awaited with interest.
If you are interested in filing trademark applications around the world, contact the experienced team of trademark attorneys at Albright IP and let us guide you. Please forward your enquiry by email or telephone us for a no obligation discussion.
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