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Microsoft Scraps With Apple Over Silly Trademark Tricks

By Richard Adhikari MacNewsWorld ECT News Network
Jan 12, 2011 11:48 AM PT

Microsoft is fighting Apple's attempt to trademark the term "App Store."

Microsoft Scraps With Apple Over Silly Trademark Tricks

Apple apparently filed for the trademark in 2008 after launching the App Store that year.

The U.S. Patents and Trademark Office turned Apple down twice because the term "app store" was too descriptive, then apparently approved an amended request, George Pike, assistant professor of law at the University of Pittsburgh, told MacNewsWorld.

Microsoft filed its opposition to the move in July of 2010 and tabled a motion for summary judgment Monday.

The case is being heard by the U.S. Patent Office's Trademark Trial and Appeal Board.

The Filing's Twists and Turns

Apple first filed to trademark the term "app store" in July 2008 and was rejected by the Trademark Office in September; it appealed the ruling in early 2009 and was again refused, Pike said. The Office considered the term "app store" too descriptive and not distinctive enough.

In September 2009, Apple filed an amended request and apparently received tentative approval, which "appears to be a step short of a registration," Pike stated.

Notice of the approved mark was published in January 2010 with a standard comment that anyone who opposes the mark could file an opposition, Pike said. That's when Microsoft reacted.

It's difficult to understand why Microsoft took so long to make its move.

"I can't imagine that Microsoft's attorneys were not aware of this filing," Pike remarked.

What's in a Name?

"An app store is an app store," Russell Pangborn, an associate general counsel at Microsoft, told MacNewsWorld. "Like the terms 'shoe store' or 'toy store,' it's a generic term that is commonly used by companies, governments and individuals that offer apps. The term 'app store' should continue to be available for use by all without fear of reprisal by Apple."

Microsoft "may not have any intent to use the term 'app store' as a trademark, but the registration, if the USPTO were to award it to Apple, would effectively allow Apple to prevent Microsoft or anyone else from using the term in a way that is similar to however Apple does use or plan to use the term as a mark," Robert Scott, managing partner of Scott & Scott, told MacNewsWorld.

Filing the objection lets Microsoft take another shot at long-time frenemy Apple.

"It's not just about Microsoft getting the chance to freely use the term 'app store,'" Charles King, principal at Pund-IT, told MacNewsWorld. "It's also an opportunity for Microsoft to call out a notable rival for a silly filing and to get it to make absurd claims around the filing."

Redmond's tactics seem to be working, King observed.

"Apple reportedly responded to Microsoft's suit by claiming that the vastly predominant usage of the expression 'app store' in the trade pres is as a reference to Apple's extraordinarily well-known app store," King elaborated.

Apple did not respond to requests for comment by press time.

The Twists and Turns of Trademarking

Should the USPTO impose stricter rules on the approval process for trademarks?

The term "app store" is not the first relatively generic term that's come up for trademark approval.

Facebook has applied to trademark the word "face," and was given a Notice of Allowance in November by the USPTO. This means that as long as the social networking site pays the issue fee within 90 days of receiving the notice, it'll get the trademark.

Earlier last year, Facebook filed suit against Teachbook, a social networking site for teachers. The term "book" is highly distinctive as part of Facebook's name and is generally associated with social networking, Facebook reportedly asserted in its filing. It also creates a false suggestion of an affiliation with Facebook.

Facebook also forced the travel site PlaceBook to change its name to TripTrace.

The social networking giant also filed suit against the Faceporn and Lamebook sites on grounds of trademark infringement.

"As more common words receive commercial trademark protection, I think the big concern could be in the owners wanting to exercise more control, particularly online, over any use that can be remotely perceived as interfering with the brand associated with the word," the University of Pittsburgh's Pike pointed out. That may have a chilling effect, especially when online posts "could be perceived as critical of the brand or trademark," he added.

There's been at least one incident that illustrates Pike's fears. Julia Forte, operator of 800notes.com and Whocallsme.com, sites that host online message boards about telemarketers, received all of 90 minutes' notice before investment banking firm Houlihan Smith filed for and obtained a temporary restraining order against her April 16, Public Citizen reported.

The order prohibited people from posting factual comments about the bank or any of its employees until May 7.

Apparently, Houlihan Smith contended that messages posted on 800notes.com about it constituted trademark misappropriation, dilution and right of publicity violations because its names and those of employees were used in the posts.

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