A Setback For Apple In “App Store” Trademark Battle

Published on July 7, 2011
by John Paczkowski

Apple best get used to the idea of seeing the term “app store” alongside Amazon’s brand, because it’s looking more and more like the battle it’s fighting to trademark the term is a losing one. A federal judge has rejected Apple’s request for a preliminary injunction that would prevent Amazon from using the “App Store” name to describe its Android apps storefront.

In an opinion filed Wednesday with the U.S. District Court for Northern California, Judge Phyllis Hamilton said Apple has so far failed to convince her that Amazon’s Android Appstore will confuse and mislead customers.

“The court finds that Apple has not established a likelihood of success on its dilution claim,” Hamilton wrote. “First, Apple has not established that its ‘App Store’ mark is famous, in the sense of being ‘prominent’ and ‘renowned.’ … The mark does appear to enjoy widespread recognition, but it is not clear from the evidence whether it is recognition as a trademark or recognition as a descriptive term. Moreover, there is no evidence that Amazon intended to create an association between its Android apps and Apple’s apps, and there is no evidence of actual association.”

That said, she did concede that the term “App Store” isn’t purely generic.

“The evidence does show that Apple has spent a great deal of money on advertising and publicity, and has sold/provided/furnished a large number of apps from its App Store, and the evidence also reflects actual recognition of the ‘App Store’ mark,” Hamilton continued. “However, there is also evidence that the term ‘app store’ is used by other companies as a descriptive term for a place to obtain software applications for mobile devices.”

So it would seem that Apple does have a bit of purchase left here from which to restate its argument. And to be fair, it is still early in the case. But to win the injunction it seeks, Apple must demonstrate real evidence of confusion among consumers. Which may be difficult to find, considering its App Store is the only one catering to Apple devices.

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