Following Microsoft’s request that the U.S. Patent and Trademark Office reject Apple’s trademark application for the phrase “App Store,” TechFlash reports that Apple has filed a defense. The company has asked to dismiss Microsoft’s objection to the App Store trademark, pointing to Microsoft’s own long-time defense of its Windows trademark, and stating that Microsoft should be “well aware” that a mark’s genericness depends on the “primary significance of the term to a substantial majority of the relevant public.”
Apple’s filing goes on to cite testimony from linguistics expert Robert Leonard, who contends that “the predominant usage of the term APP STORE is as a proper noun to refer to Apple’s online application marketplace,” and that mobile application developers and platforms have reasonable alternative names available to them, such as Microsoft’s use of the term Marketplace to refer to its own Windows Mobile applications store. In its previous filing, Microsoft argued that Apple itself has used the term generically, and that Apple’s use of the term for its online iOS and Mac applications store is a “de facto secondary meaning” of a generic term. The case is now under review by the USPTO Trademark Trial and Appeal Board, which may choose to deny Apple’s application based on Microsoft’s assertions, or allow the application process to proceed.
