Apple has hit out at Microsoft over the company’s claim that the term “App Store” is generic, stating that the Redmond-company is “missing the forest for the trees”, in its assertion that the public refers to an app marketplace on each individual mobile ecosystem app platform using the same term.
If you were not aware of the case, Microsoft’s challenge followed Apple’s attempts to trademark the term, registering with the U.S. Patent and Trademark Office to prevent other companies and rival application marketplaces from being able go under the same heading.
Microsoft stated that “undisputed evidence shows that ‘app store’ is a generic name for a store offering apps”, arguing that “Apple cannot block competitors from using a generic name. ‘App store’ is generic and therefore in the public domain and free for all competitors to use.”
Apple’s legal team filed a response (PDF here) to Microsoft’s claims, using Microsoft’s own Windows trademark in its defense:
Having itself faced a decades-long genericness challenge to its claimed WINDOWS mark, Microsoft should be well aware that the focus in evaluating genericness is on the mark as a whole and requires a fact-intensive assessment of the primary significance of the term to a substantial majority of the relevant public.
The Cupertino company says Microsoft demonstrates that the term “App Store” could describe the “nature of Apple’s online software marketplace” but “it falls far short of proving by clear and convincing evidence that a majority of the relevant public uses the term App Store generically for any online software marketplace”.
Worried that it would be seen as reactive because Microsoft was opposing the case, Apple then offered testimony from a “renowned lingusitics expert”, Dr Robert Leonard who, when presented the empirical evidence, concluded that “the term App Store is a proper noun to refer to Apple’s online marketplace”.
The company then argues that if there was any doubt over the issues of fact exist to warrant a trial, then Dr Leonard’s “declaration unquestionably removes it”, calling for Microsoft’s motion to be denied.
With Apple’s cards now laid on the tablet, it’s now in the hands of the USPTO Trademark Trial and Appeal Board to rule on whether Microsoft has a significant case to warrant trial, or whether the case should be dismissed.