“App Store” Isn’t Generic, But Apple Can’t Enforce Its Purported Trademark in the Term–Apple v. Amazon

By Eric Goldman

Apple, Inc. v. Amazon.com Inc., 2011 WL 2638191 (N.D. Cal. July 6, 2011)

Apple’s enforcement campaign over the term “App Store” is ridiculous. Apple is trying to prop up a farcically weak trademark claim–and to what end? To prevent its competitors from using the only logical term to describe their venue? Apple’s efforts to control the term seem to be anti-consumer because Apple wants to make consumers think harder to figure out the relationships between various vendors. I’m glad Microsoft and Amazon are fighting Apple’s overzealousness.

The judge apparently didn’t think much of this dispute either, because she almost certainly had a law clerk do the heavy lifting on this opinion. The opinion doesn’t start its analysis until page 11 (of 18); the prior material being an uninsightful summary of the parties’ contentions. I can read the contentions in the parties’ briefs if I really care, thank you very much.

When the opinion actually starts cooking, it breezily dismisses Amazon’s claim that “app store” is generic:

The court does not agree with Amazon that the mark is purely generic, for the reasons argued

by Apple

Okay…

The opinion next concludes that Amazon didn’t create a likelihood of consumer confusion by offering an “appstore.” The LOCC factors:

* “App Store” isn’t a strong mark.

* even though the parties’ services are related (both are app stores using that term in the proper generic sense), Amazon’s apps only run on Android, not iPhones.

* the terms are identical in sight/sound/meaning, but the opinion again notes the Android/iPhone divide.

* no evidence of actual confusion.

* the point on marketing channels was incoherent and irresolute.

* the parties’ arguments on purchaser care were too speculative.

* the intent factor favors Amazon because it believes the term is generic.

* the product line expansion point was also irresolute. The court says Amazon would like to offer iPhone apps but needs Apple’s permission to do so.

Here’s how the court summarizes the LOCC analysis:

Thus, two of the eight factors somewhat favor Apple, and three factors somewhat favor Amazon. The remaining three factors are neutral, or do not clearly favor either side. Accordingly, under this analysis, the court finds that Apple has not established that it is likely to prevail on the “confusion” element of its infringement claim.

This is what happens when you use the LOCC test to adjudicate a generic term. The LOCC test isn’t insightful in that case, and some of the factors will weigh in favor of the plaintiff because the defendant is just trying to use the dictionary term for its dictionary meaning. Microsoft is still fighting Apple’s trademark registration application in the TTAB, and I’m hoping the TTAB’s expertise with trademarks will help it do what this judge seemed afraid to do: call the term generic.

The opinion allocates another 5 pages to a dilution analysis, although most of those pages are also a recap of the parties’ contentions. The court’s complete analysis of dilution issue:

The court finds that Apple has not established a likelihood of success on its dilution claim. First, Apple has not established that its “App Store” mark is famous, in the sense of being “prominent” and “renowned.” The evidence does show that Apple has spent a great deal of money on advertising and publicity, and has sold/provided/furnished a large number of apps from its AppStore, and the evidence also reflects actual recognition of the “App Store” mark. However, there is also evidence that the term “app store” is used by other companies as a descriptive term for a place to obtain software applications for mobile devices.

With regard to the statutory “blurring” factors, the marks are similar, but “App Store” is more descriptive than it is distinctive. Apple did have substantially exclusive use of “App Store” when it launched its service a little over three years ago, but the term appears to have been used more widely by other companies as time has passed. The mark does appear to enjoy widespread recognition, but it is not clear from the evidence whether it is recognition as a trademark or recognition as a descriptive term. Moreover, there is no evidence that Amazon intended to create an association between its Android apps and Apple’s apps, and there is no evidence of actual association.

With regard to tarnishment, there is no evidence to support a likelihood of success on this part of the claim. Apple speculates that Amazon’s App Store will allow inappropriate content, viruses, or malware to enter the market, but it is not clear how that will harm Apple’s reputation, since Amazon does not offer apps for Apple devices.

This discussion is so garbled, I’m not even sure where to begin. Let’s drill down on the blurring discussion. In the LOCC analysis, the court assumed without deciding that “App Store” had achieved secondary meaning. Here, the court apparently undercuts that assumption by implying (saying?) that the mark isn’t “distinctive”–in other words, lacking secondary meaning.

If the court intended to conclude that App Store had secondary meaning, then stacking up new definitions for the term is exactly what blurring is supposed to prevent, so the court should allow Apple to shut down Amazon and all of the other parties who are adding those new definitions. Or, if the court is saying that the term was once “distinctive” but now isn’t, that’s genericide. I don’t know of a way for a descriptive term to obtain secondary meaning and then lose it without that term becoming generic for trademark purposes.

We all know what really happened–the term was generic from the moment Apple started using it, and the term has been proliferating through the English language as new useful dictionary terms tend to do. The court’s timidness in reaching that conclusion forces it to contort the rest of its doctrinal analysis.

Despite the doctrinal mush, one thing seems pretty clear to me. Apple may have delayed the genericide death of its App Store trademark claim, but I don’t see any situations where Apple can enforce its mark currently. I read this opinion as saying that so long as the term isn’t being used in connection with a store for iPhone apps, there won’t be any consumer confusion or dilution. But my understanding is that Apple isn’t letting other stores offer iPhone apps, so the defendant pool should be a nullset. So whether it’s because of genericism or the impossibility of consumer confusion, this opinion signals to Apple that it’s wasting everyone’s time and money trying to protect the App Store term.

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