Apple was dealt a blow in its bid for exclusive rights over the term "app store" this week when a California district judge denied Cupertino's request for an injunction against Amazon's AppStore.
Apple has failed to establish that its "App Store" mark is famous enough to be considered prominent or renowned, the court found. Essentially, people automatically think of Apple when someone says iPad, iPhone, or iPod, but the same association is not necessarily made with "app store."
Apple has spent a lot of money and effort marketing its App Store, but "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," Judge Phyllis J. Hamilton wrote in her Wednesday decision.
In 2008, Apple filed an application with the U.S. Patent and Trademark Office to register the mark "App Store." By January 2010, the PTO published a public notice, which provided those who objected to the mark a chance to have their say. Microsoft objected, kicking off a legal battle between the two companies. When Amazon launched its Amazon Android AppStore in March, meanwhile, Apple filed suit, demanding that Amazon stop using the term.
Both Microsoft and Amazon have argued that the term "app store" is a generic one, and does not apply exclusively to Apple's App Store.
Apple, however, has argued that "App Store" is a well-known term associated with the company and that other companies using the same term will dilute the Apple's App Store brand. Judge Hamilton, however, found that "Apple has not established a likelihood of success on its dilution claim."
In granting marks, the PTO will classify them as generic, descriptive, suggestive, arbitrary, or fanciful. If something is designated as suggestive, arbitrary, or fanciful, they are inherently distinctive and are automatically granted federal trademark protection. A descriptive mark, however, is not automatically entitled to trademark protection, but might get it "if the mark has acquired distinctiveness."
Judge Hamilton found that, at this point, "App Store" is "more descriptive than it is distinctive."
The judge was also skeptical of Apple's claim that the Amazon AppStore will tarnish Apple's App Store.
"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," the judge said.
Whether or not the App Store is generic or distinctive, people are still downloading apps. Apple announced Thursday that App Store downloads have now topped 15 billion. After three years, there are 425,000 apps available in the store, with 100,000 native iPad apps. The milestone comes about six months after the App Store hit 10 billion downloads.