App Store ® ?? No Way.

Should Apple own the trademark rights to the phrase, "App Store"? 

Uh, no.

And Microsoft agrees with me.  (See, great minds do think alike--except with regard to the latest Windows phone, with which I have some "issues"--but we'll save that for another blog entry).

The (Short) Story
Our story begins back in 2008, when Apple filed an application with the United States Patent and Trademark Office for the term, "App Store", with regard to "retail store services".  The USPTO initially rejected Apple's filing, claiming that the proposed trademark was too descriptive (which is a big no-no in the world of trademark registration). 

Why was it descriptive?  Because (as the USPTO pointed out) the word "App" meant "application", and the word "store" meant "a place where merchandise is offered for retail sale to customers", and when you combine the two words, you get a phrase that describes a store where you buy applications. 

Apple, in a 400+ page response, argued that its proposed trademark deserved to be registered because (i) App Store could mean "Apple Store" (which is a different meaning than the one ascribed to it by the USPTO), and (ii) "App Store" has become inextricably associated in the consuming public's collective mind with Apple's online store (something IP lawyers call "secondary meaning").

Somehow, some way, the USPTO agreed with Apple's arguments and allowed the proposed trademark to make it to one of the final stages of the registration process: publication.  It was at that point that Microsoft stepped in and filed an opposition to Apple's trademark application.  Now the entire matter is awaiting a decision from the section of the USPTO that decides these matters, the Trademark Trial and Appeals Board (or "TTAB" for short).  You can see all of the relevant documents at the TTAB's website, HERE.

And Now...
To its credit, Microsoft attacked Apple's application on a different ground than the USPTO.  Instead of calling the phrase "descriptive"--a term that would allow Apple to argue "secondary meaning" and possibly achieve its goal of trademark registration--Microsoft argued that the term "App Store" was generic. 

Generic terms can never be trademarked.  Period.  No exceptions.

So, is Microsoft right?  Is the term "App Store" generic?  OF COURSE IT IS!! 

As Microsoft (correctly) points out in its most recent filing, Google, RIM/Blackberry, Nokia, HP/Palm, Samsung and Microsoft all describe their online retail stores as App Stores.  For goodness sake, everybody uses the words "App Store" to describe the place online where his or her vendor of choice sells applications. 

Let's hope that the TTAB stops the overreaching and does the right thing....

We await the decision.