Apple and Amazon drop legal scuffle over ‘Appstore’ name
By John Ribeiro
PCWorldJul 10, 2013 5:51 am PDT
A lawsuit filed by Apple over Amazon.com’s use of the term “Appstore” has ended after Apple decided to withdraw the case.
Apple filed the suit in March 2011, objecting to Amazon’s use of “Appstore” for its mobile software developer program and its plans to use the term for its online store of applications for devices using the Android mobile operating system. The Cupertino, California, company claimed among other things that it had common law trademark rights in the “App Store” mark under California law.
Apple issued to Amazon a covenant not to sue and wishes to have the complaint dismissed with prejudice, Judge Phyllis J. Hamilton of U.S. District Court for the Northern District of California said in her order Tuesday. Amazon.com’s counterclaim for declaratory relief of non-infringement was also dismissed.
“We’re gratified that the court has conclusively dismissed this case,” Amazon spokeswoman Mary Osako said via email. “We look forward to continuing our focus on delivering the best possible appstore experience to customers and developers.”
Apple could not be immediately reached for comment on its decision to end the case.
One of Apple’s arguments in the lawsuit was that as both companies sell through the Internet, and Amazon also offers products from Apple, consumers may be confused when they find Amazon using Apple’s mark for a mobile download service.
The term “App Store” figures in a list of service marks on Apple’s website. Service marks are used for services, in the manner that trademarks are used for products.
Apple’s bid to register the mark in 2008 with the U.S. Patent and Trademark Office was opposed by Microsoft which claimed that the mark could not be registered as it was generic, the Judge noted when she denied Apple’s motion for a preliminary injunction on Amazon.com’s use of the term “Appstore” in 2011.
Amazon asserted that the “App Store” mark was generic, and it did not use “Appstore” as a trademark, but simply to tell the customer that the service is an app store, and that it offers apps for Android.
Apple alleged causes of action for the lawsuit were: trademark infringement and dilution under the Lanham Act, common law trademark infringement, dilution under the California Business and Professions Code, unfair competition and false advertising.