"App Store" as Generic as "Grocery Store"

Microsoft fired back at Apple this week in the on-going dispute over the trademark of the coveted compound term, "App Store." The dueling legal briefs shows the depth of the age-old rivalry and also reveals a fascinating look into the hair-splitting world of trademark. Microsoft's latest argument is, essentially, that Apple cannot own "App Store" anymore than a large food retailer could lay claim to "Grocery Story," since its the very descriptor needed to discuss what a group is.

The legal retort [pdf] comes on the heels of Apple's public denunciation of Microsoft'shypocrisy, namely, that "App Store" is no more generic than "Windows" is for describing an operating system. As such, it was contradictory to claim that a descriptive term couldn't be trademarked by its competitor.

We reached out to to Microsoft to rebut this seemingly devastating argument by Apple. In an e-mail, a Microsoft representative wrote:

"Although there is overwhelming evidence that the term “Windows” is not a generic term to describe operating systems, the term “app store” is widely used in the technology industry today as a generic term for stores that offer apps and not to identify a single company’s application marketplace."

In other words, 'operating system' isn't synonymous with 'Windows'; no one with a Mac would say "My laptop is running slow, I need a new a Windows."

However, Microsoft argues, 'app store' is an exceedingly common descriptor for an online database of applications. In fact, to even conceive of similar competitor databases, one has to search for the term "app store."

"What do people call Apple’s and its competitors’ stores as a group, or genus?" the brief asks. "To find that, you need to look where people talk about multiple stores, not just Apple’s. And when you look there, you find them called app stores.' "

Thus, Apple has trademarked the very descriptor of the concept. "We buy shoes at a “shoe store,” toys at a “toy store,” groceries at a “grocery store,” computers at a “computer store,” and so on."

Still, Apple maintains that plenty of competitors have found workable, intuitive alternative names without much sweat: Android Marketplace, RIM's App World, and the Palm App Catalog. Ripping away Apple's own trademark would punish success. Indeed, a previous court worried that disputes against a company that popularizes a product is dangerous because it "penalizes the trademark’s owner for his success in making the trademark a household name and forces him to scramble to find a new trademark."

Apple is already entrenched with the term: they own the Facebook page, the Wikipedia entry, and have displayed it countless advertisements that can't be retroactively scrubbed. Thus, Apple would take a substantial hit for something that competitors have already found a workable alternative for.

To this, Microsoft has a clever, if only somewhat convincing retort: fear of Apple's legal attack dogs forced competitors to find another name. Apple's market dominance doesn't give it the right to own the concept.

Unfortunately, to arbitrate the dispute, legal precedent isn't much help: courts have upheld brand names like Honey Baked Ham, yet rejected Screenwipe. Thus, the extended legal dispute may come down to the subjective perception of just how essential "App Store" is to the market.