“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,” the filing says.
Microsoft started this fight in January, when it asked the U.S. Patent and Trademark Office to deny Apple’s 2008 trademark application for “App Store.”
In the motion, Microsoft quoted Apple’s chief executive, Steve Jobs, using the term in a generic manner. “Amazon, Verizon and Vodafone have all announced that they are creating their own app stores for Android,” Jobs said in one published interview. Those quotes are “out-of-context and misleading,” Apple says in the filing.
Apple also challenges Microsoft’s claim that “app” and store” are generic, descriptive terms, thereby rendering the entire phrase generic. Plenty of trademarks apply to phrases whose individual descriptors are generic, Apple says, including “Books on Tape,” “Vision Center” and — my personal favorite example — “The Beef Jerky Outlet.”
The decision now goes to the USPTO Trademark Trial and Appeal Board, which will either grant Microsoft’s motion for summary judgment or send the case to trial.
Whatever the decision, I think the Windows example is an unnecessary dig at Microsoft, because people are more likely to think of “App Store” generically than “Windows,” at least in the context of their respective products. The former term could describe other smartphone storefronts as well as Apple’s own, but the latter doesn’t inherently describe operating systems.
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