In January, Microsoft requested a summary judgment to block Apple's application to trademark the phrase "App Store," on the grounds it was a generic phrase.
Now Apple has fired back with a pointed reminder that Microsoft successfully trademarked an even more generic phrase: Windows.
In a 25-page brief (PDF) filed yesterday with the U.S. Patent and Trademark Office (USPTO), Apple counsels wrote, "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," Apple said.
In Microsoft's original motion, it cited cases in the press where "app store" was used to refer to a generic storefront for mobile apps. Microsoft even unearthed an October 2010 interview where Apple CEO Steve Jobs used the phrase generically.
But in the filing Apple's lawyers called the evidence "a hodge-podge of out-of-context snippets" that fails prove "app store" is a generically used phrased. For one, Microsoft didn't compare the number of generic uses to non-generic uses, which Apple says is key to adding context to the examples.
Towards the end of the brief Apple also struck down the research methods of Microsoft counsel Nathaniel Durrance.
Apparently Durrance found his examples of generic "app store" usage by searching Westlaw. The problem is, he performed a case-sensitive search for "app store" using all lowercase letters, which, naturally, pulls up a high proportion of generic uses, Apple counters.
If Apple succeeds in trademarking "App Store" how would the rest of us describe an "app store"? Here's an idea from Apple. Throughout its brief, Apple broadly refers to competitors' app stores as "online software marketplace[s] for mobile operating systems."
Google and Microsoft distinguished their own retail software stores early on with names like Android Market and Windows Marketplace for Mobile, but others are less differentiated: Blackberry has App World, Samsung calls its store Samsung Apps, and HP has the App Catalog. Microsoft notes that most of these rivals, at one point, have publicly referred to their own retail sites as an "app store."