Microsoft continues fight against Apple’s trademarking of ‘App Store’

Microsoft has once again filed opposition to Apple’s efforts to trademark the phrase “App Store,” reports “CNET” (http://macte.ch/n3VJ3). In a new reply filed with the U.S. Patent and Trademark Office to get Apple’s trademark application refused, Microsoft “rebutted Apple’s rebuttal from earlier this month,” the article adds.

“The undisputed facts establish that ‘app store’ means exactly what it says, a store offering apps, and is generic for the retail store services for which Apple seeks registration,” the company wrote in the filing. “Apple does not contest that its other services are ancillary and incidental to its retail store services. Summary judgment should be entered denying Apple’s application in its entirety.”

In the nine-page document, Microsoft takes aim at Apple’s defense of the trademark, which made use of testimony from Robert A. Leonard to show that “App Store” was in fact a proper noun and had proven itself to be tied to Apple ahead of competitors, says “CNET.”

In January Microsoft asked the U.S. Patent and Trademark Office to deny Apple a trademark on the name “App Store,” saying the term is generic and competitors should be able to use it. Apple applied for the trademark in 2008 for goods and services including “retail store services featuring computer software provided via the internet and other computer and electronic communication networks” and other related offerings, the article adds. Apple launched its App Store for the iPhone that year.

Microsoft filed a motion for summary judgment with the agency’s Trademark Trial and Appeal Board, asking it to deny the trademark to Apple. In its motion, Microsoft said “app” is a generic term for what is sold at the App Store and that “store” is generic for retail store services.

However, in a March filing Apple argued: “Having itself faced a decades-long genericness challenge to its claimed WINDOWS mark, Microsoft should be well aware that the focus in evaluating genericness is on the mark as a whole and requires a fact-intensive assessment of the primary significance of the term to a substantial majority of the relevant public. Yet, Microsoft, missing the forest for the trees, does not base its motion on a comprehensive evaluation of how the relevant public understands the term APP STORE as a whole.”