Microsoft this week escalated its battle against Apple’s attempt to trademark the term “App Store” — asking the USPTO to refuse the iPhone maker’s registration request on the basis that it’s a generic name, not something to which Apple can lay exclusive claim.
“Any secondary meaning or fame Apple has in ‘App Store’ is de facto secondary meaning that cann’t convert the generic term ‘app store’ into a protectable trademark,” write lawyers for Microsoft in a motion for summary judgment, filed with Trademark Trial and Appeal Board. “Apple cann’t block competitors from using a generic name. ‘App store’ is generic and therefore in the public domain and free for all competitors to use.”
Microsoft’s filing notes that media commonly refer to “app stores” on all sorts of mobile platforms, not just on the iPhone. The filing also points out that Apple CEO Steve Jobs has used the phrase generically, as well — once referring in an interview to new Android “app stores.”
In the meantime, Microsoft says it and other Apple rivals are being forced to use alternative names for their app stores — such as “marketplace,” in the case of Microsoft’s Windows Phone app store — pending the outcome of the Apple trademark proceedings.
Here’s a copy of the Microsoft’s filing (PDF, 27 pages).
Apple has stuck to its guns in the case, saying in response to an earlier Microsoft filing that “the vastly predominant usage of the expression ‘app store’ in trade press is as a reference to Apple’s extraordinarily well-known APP STORE mark and the services rendered by Apple thereunder.”
The company noted at the time that “any unauthorized use of the APP STORE mark by retailers is an attempt to trade on the goodwill associated with Applicant’s well-known APP STORE mark.”