Searching for Generic Usage

January 19, 2011

Microsoft’s brief to the Trademark Trial and Appeals Board opposing Apple’s trademark application for “App Store” notes:

A search of Westlaw’s US ALL NEWS database found over 1,000 current articles using “app store” as the generic name for stores featuring apps.

Do you suppose the folks at SeedIP Law Group read every reference to “app store” in the allnews database?  I can’t say.  But, here’s a strategy I’d try.  It’s simple, really.  The purpose of the research is to demonstrate generic usage of the mark — usage of the mark in a manner that “neither signifies the source of goods nor distinguishes the particular product from other products on the market” George & Co. LLC v. Imagination Entertainment Ltd., 575 F.3d 383. 

Does not signify source: So, first, try a search for “app store” that simply eliminates references to Apple products:

app-store % itunes ipad iphone mac! apple

Of course, generic usage doesn’t necessarily exclude references to Apple’s product. In fact, Microsoft offers these examples:

WASHINGTON POST, July 27, 2010

Most cellphone app stores— iPhone, Android, BlackBerry — are filled with apps that use your location to list free (or paid) Wifi hotspots near you.

STANDARD & POOR’S DAILY NEWS, August 3, 2010

Consumers can download the free application through several app stores including BlackBerry(R) App World(TM) and Android Market(TM).

Does not distinguish: So, alternatively, one might try queries for Apple products AND its competitors:

app-store & ipad iphone mac! apple ipod & android & blackberry; or

app-store & ipad iphone mac! apple ipd & android blackberry

No results from the above queries include over 1,000 results, but if I were looking for examples, I think these queries might increase efficiency for this project.

In sum, unique US news references in the allnews database include:

references in app-store only: over 4351

references to app-store and apple brands: over 4117

references to app-store but not to apple products: just over 200

refrences to app-store and apple products and competitors: at least 500

Fore more on generic use of marks, try searching the federal intellectual property case law database (FIPTM-CS) for 382Tk1034, the KeyNumber for Generic Terms or Marks. Or, see Chapter 12 of the McCarthy treatise.