How Apple Can Trademark App Store

Apple has been engaged in a public fight in recent weeks over its attempt to trademark the term "App Store." The company originally filed the request with the U.S. Patent and Trademark Office (USPTO) in 2008 and earlier this year the office finally gave tentative approval, putting the trademark (or simply "mark" in the legal vernacular) up for opposition.

Microsoft was only too game to oblige. Declaring the term "app store" to generic to be exclusive to any one party, Microsoft attacked Apple's application, which quickly (and entertainingly) descended into a war of words that reached its nadir when the two parties started arguing over font sizes. Along the way, Apple sued various parties (most notably, Amazon) for using the term.

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If "App Store" is too generic to be trademarked, what about "Color?" The new social app, which shares photos with other users based on location, has one of the most generic names around, yet the company has trademarked the name and has an application with the USPTO for a registered trademark. How can companies go around trademarking such common terms?

Very easily. There's not much to limit a company from attaching at "TM" to the end of virtually any term (it generally doesn't even require paperwork), but such trademarks are limited only to the markets where the trademark is used, and it's only enforcable if that use is pervasive enough to show ownership. That's why companies try to register most worthwhile trademarks with the USPTO (and get the circled "R"), a legally weighty distinction that protects the mark nationwide.

Common or not, the actual words in the trademark are really only one part of it. Other factors such as the type of business and the goods and services on offer matter just as much when determining a mark's weight—and whether or not there's been infringement by anyone else using the term. Context matters a lot with trademarks.

"You can have common words used as trademarks," says Dyan House, a trademark lawyer at Munck Carter, a technology-focused law firm in Dallas. "They just have to be applied in an uncommon way. Apple is probably the best example of that. It's a very common word, but they've applied it to computers and software and everything that goes with that. It's a very strong mark. When you hear the term 'Apple' you know that you're talking about that particular company. You don't confuse it with the fruit."

The USPTO can reject trademarks for several reasons, but they typically boil down to one of four things: whether consumers could confuse it with another mark, if it's already a proper name (you probably won't get "Jones" trademarked), obscenity, or if it's a generic term used in the industry.

That last reason is the one Microsoft is focusing on in its attacks on Apple's "App Store" trademark. Just as a printer company can't trademark "toner cartridge," Microsoft says "app store" is likewise too descriptive a term to pass the trademark test. However, there is something that Apple can show that would strengthen its case: massive, widespread usage of the term in the context of its products.

"The real way a mark is developed is through use," says House. "That's how you acquire rights, through using the mark. The trademark office has said [app store] is descriptive, but Apple was able to show that through their extensive advertising and branding of the App Store that it has acquired 'distinctiveness,' so it's risen to the level of a trademark."

At least for now. With Microsoft's objections to the App Store trademark on record, the USPTO could reconsider and declare the term too generic to be trademarked. Until it rules one way or the other, expect to see the term used a lot by Apple—both in advertising and in its war of words with its competitors.