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This ruling involved Apple's attempt to block Amazon's use of the term "app store" pending trial in this case. Apple claims infringement and dilution of its mar

by grellas 15y ago

This ruling involved Apple's attempt to block Amazon's use of the term "app store" pending trial in this case. Apple claims infringement and dilution of its mark. To win on infringement, it must ultimately show that it has a legally protectable mark and that Amazon's use of the term "app store" to describe where it sells apps for use on Android devices will likely confuse consumers about the origin of the goods being sold. To win on dilution, it must show that the mark is protectable, that it is "famous," and that Amazon's use of it dilutes its value. To get a preliminary injunction, Apple needed to convince the judge that it is likely to win at trial and also that it will be irreparably harmed if Amazon is not blocked from using the mark during the time leading up to trial. The judge said no to the preliminary injunction, not on grounds of lack of irreparable harm (that issue was never reached) but on the ground that Apple was not likely to win on the merits of its claims at trial. Marks are classified as generic, descriptive, suggestive, arbitrary, or fanciful. Any mark that is suggestive, arbitrary, or fanciful is protectable. A generic mark is never protectable and a descriptive mark normally is not either - but the latter can become protectable if it acquires distinctiveness in the public mind through what is called "secondary meaning" (which generally means that a company has advertised a product or service to such a degree that the public comes to associate the mark with the producer of the goods or services as opposed to seeing the mark as descriptive, e.g., "Holiday Inn"). Apple claimed that the "app store" mark is suggestive because its meaning is "not inherently obvious" and because Apple was required to devote a lot of resources to educate consumers about the service. Amazon claimed the mark is generic in merely describing a store where software apps are sold. On this key issue, the court ruled as follows in assessing whether Apple was likely to succeed with its claim: "The court assumes without deciding that the 'App Store' mark is protectable as a descriptive mark that has arguably acquired secondary meaning. The court does not agree with Amazon that the mark is purely generic . . . but also does not find that Apple has shown that the mark is suggestive, as there appears to be no need for a leap of imagination to understand what the term means." So far so good for Apple (with its major advertising, it may well be able to prove secondary meaning at trial). But Apple got sunk by the second factor it will need to show if it is to win at trial and that is the "likelihood of confusion" factor. On this point, the court weighed eight factors as required by governing precedent but, in effect, really boiled it down to the fact that consumers buying apps for Android devices will not really believe that they are buying them from Apple or from an Apple-authorized source when they see the term "app store" at Amazon's site. The court also rejected Apple's dilution claim as a basis for granting preliminary relief, basically finding that "App Store" did not constitute a "famous mark" on the evidence shown by Apple to date (it is here that the generic references to "app store" by Mr. Jobs and others come back to bite Apple). All this suggests that Apple will have an uphill fight at trial on this one (as it should, in my view). The 18-page decision is well-reasoned and may be found here: http://www.scribd.com/doc/59494852/Apple-v-Amazon-Order-Denying-Motion-for-Preliminary-Injunction http://www.scribd.com/doc/59494852/Apple-v-Amazon-Order-Deny.... Also, my prior comments on the case: http://news.ycombinator.com/item?id=2351910 http://news.ycombinator.com/item?id=2351910.

untog 15y ago
Makes sense. After all, Amazon do promote it as the "Amazon App Store", not "App Store". Makes sense for their brand and for legal purposes.
demetris 15y ago
Quick meta-comment: It is such a joy reading good, clear, expressive English in a public discussion thread on the internet! Thank you, George Grellas!
Symmetry 15y ago
Thank you for that lucid summary. I've always been struck by the extent that I tend to find find the issues involved in trademark disputes to be very reasonable, even if I would occasionally wish that the results would turn a different way. Perhaps its the extent to which the law behind trademarks is directly based on its purpose (protecting consumers from confusion), whereas with patents and copyrights the link between the laws involved and the social good they ostensibly promote is much less direct. EDIT: I suppose judges also are all certainly qualified to tell whether some situation is confusing, but understanding patents often requires expert knowledge and judgement that is hard to acquire.
- chopsueyar 15y ago
  I disagree. I do not believe the purpose of trademark law is to protect consumers from confusion.
anigbrowl 15y ago
I feel a little sorry for Apple on this (and I don't care much for the company in general). When they introduced the term 'app store' it came across as very much part of their branding - much as iNoun and iVerb do. I didn't care for the term, because I'm old-fashioned enough to dislike contractions such as 'app'. But at the same time, I thought it was a fantastic bit of brand management, because the shortened word reflected not only the parent brand (App[le]), but the miniaturized computer that the iPhone actually was, and also managed users' expectations about what an individual app would do - rather less than something as grand sounding as an 'application', but still handy. If Microsoft had been first to market with such a device, I feel sure they'd have called the apps 'programmettes' or something equally unwieldy :) The 'store' part was also shrewd branding - it made it clear from the outset that apps had a value and that users were expected to invest in extending the device's features. This was a bold move on Apple's part, but one that paid off in spades. If anything, it reinforced the idea in my mind that 'app store' was an Apple thing. I am astonished to find that they did not have a trademark registration in place, or at least an active claim. 'App' was not a new word, as such - the phrase 'killer app' had been around since the 80s - but outside of the software industry, few referred to programs as 'apps' on a regular basis. See http://correlate.googlelabs.com/search?e=app&t=weekly http://correlate.googlelabs.com/search?e=app&t=weekly, http://correlate.googlelabs.com/search?e=app+store&t=weekly&filter=app+store http://correlate.googlelabs.com/search?e=app+store&t=wee..., and http://www.google.com/insights/search/#q=app%20%2Ciphone%2Cprogram&cmpt=q http://www.google.com/insights/search/#q=app%20%2Ciphone%2Cp... - hardly conclusive, but strongly suggestive. The problem stemmed from Steve Jobs' habit of talking about the Apple 'lifestyle' as if Apple products were ubiquitous and were the only technology platform people used - true enough for many of the firm's devoted fans. This reflected in the deliberately generic naming patterns for Apple offerings - iTunes, iPhone, iMovie and so on. But Jobs got into talking about apps and the app store as generic items, because he was preaching to the converted; if he had kept emphasizing 'the app store' then maybe it would have reinforced the term as 'the specific software distribution service offered by Apple, Inc.'. It's a fine line to walk, of course; ubiquity and inevitability are usually good connotations for a brand to have, but so are freedom and exclusivity. In Apple's case, they were running up against the limits of their famous 1984 Think Different ad, and trying to balance the actuality of vendor lock-in with the feeling of openness and user-centricity. If they had sought a trademark for 'appstore' or variations thereon at the same time they launched the iPhone, it would probably have attracted little notice, but it seems as if they took a gamble on the strength of their secondary meaning, and lost. [Edit: Apple has applied for trademarks on 'appstore' in many countries but no registrations have been granted. Foolishly, I referred back to my comment in the other paragraph instead of to the judgement, and confused myself in the process.] Lovely work by Amazon's lawyers, at least to my amateur eyes - the blend of reason, case law and statute makes Apple's overreach look all the more strained, and the longer the Amazon appstore stays up and the sky in Cupertino fails to fall, the weaker Apple's arguments look. At least, weaker by comparison - they still made a good case. If nothing else, I'm grateful for discovering the existence of Interstellar Starship Services Ltd. v. Epix, Inc.

by grellas 15y ago

untog 15y ago

Makes sense. After all, Amazon do promote it as the "Amazon App Store", not "App Store". Makes sense for their brand and for legal purposes.

demetris 15y ago

Quick meta-comment: It is such a joy reading good, clear, expressive English in a public discussion thread on the internet! Thank you, George Grellas!

Symmetry 15y ago

Thank you for that lucid summary. I've always been struck by the extent that I tend to find find the issues involved in trademark disputes to be very reasonable, even if I would occasionally wish that the results would turn a different way. Perhaps its the extent to which the law behind trademarks is directly based on its purpose (protecting consumers from confusion), whereas with patents and copyrights the link between the laws involved and the social good they ostensibly promote is much less direct. EDIT: I suppose judges also are all certainly qualified to tell whether some situation is confusing, but understanding patents often requires expert knowledge and judgement that is hard to acquire.

chopsueyar 15y ago
I disagree. I do not believe the purpose of trademark law is to protect consumers from confusion.

anigbrowl 15y ago

I feel a little sorry for Apple on this (and I don't care much for the company in general). When they introduced the term 'app store' it came across as very much part of their branding - much as iNoun and iVerb do. I didn't care for the term, because I'm old-fashioned enough to dislike contractions such as 'app'. But at the same time, I thought it was a fantastic bit of brand management, because the shortened word reflected not only the parent brand (App[le]), but the miniaturized computer that the iPhone actually was, and also managed users' expectations about what an individual app would do - rather less than something as grand sounding as an 'application', but still handy. If Microsoft had been first to market with such a device, I feel sure they'd have called the apps 'programmettes' or something equally unwieldy :) The 'store' part was also shrewd branding - it made it clear from the outset that apps had a value and that users were expected to invest in extending the device's features. This was a bold move on Apple's part, but one that paid off in spades. If anything, it reinforced the idea in my mind that 'app store' was an Apple thing. I am astonished to find that they did not have a trademark registration in place, or at least an active claim. 'App' was not a new word, as such - the phrase 'killer app' had been around since the 80s - but outside of the software industry, few referred to programs as 'apps' on a regular basis. See http://correlate.googlelabs.com/search?e=app&t=weekly http://correlate.googlelabs.com/search?e=app&t=weekly, http://correlate.googlelabs.com/search?e=app+store&t=weekly&filter=app+store http://correlate.googlelabs.com/search?e=app+store&t=wee..., and http://www.google.com/insights/search/#q=app%20%2Ciphone%2Cprogram&cmpt=q http://www.google.com/insights/search/#q=app%20%2Ciphone%2Cp... - hardly conclusive, but strongly suggestive. The problem stemmed from Steve Jobs' habit of talking about the Apple 'lifestyle' as if Apple products were ubiquitous and were the only technology platform people used - true enough for many of the firm's devoted fans. This reflected in the deliberately generic naming patterns for Apple offerings - iTunes, iPhone, iMovie and so on. But Jobs got into talking about apps and the app store as generic items, because he was preaching to the converted; if he had kept emphasizing 'the app store' then maybe it would have reinforced the term as 'the specific software distribution service offered by Apple, Inc.'. It's a fine line to walk, of course; ubiquity and inevitability are usually good connotations for a brand to have, but so are freedom and exclusivity. In Apple's case, they were running up against the limits of their famous 1984 Think Different ad, and trying to balance the actuality of vendor lock-in with the feeling of openness and user-centricity. If they had sought a trademark for 'appstore' or variations thereon at the same time they launched the iPhone, it would probably have attracted little notice, but it seems as if they took a gamble on the strength of their secondary meaning, and lost. [Edit: Apple has applied for trademarks on 'appstore' in many countries but no registrations have been granted. Foolishly, I referred back to my comment in the other paragraph instead of to the judgement, and confused myself in the process.] Lovely work by Amazon's lawyers, at least to my amateur eyes - the blend of reason, case law and statute makes Apple's overreach look all the more strained, and the longer the Amazon appstore stays up and the sky in Cupertino fails to fall, the weaker Apple's arguments look. At least, weaker by comparison - they still made a good case. If nothing else, I'm grateful for discovering the existence of Interstellar Starship Services Ltd. v. Epix, Inc.