April 29, 2011
For those unfamiliar with the story, Apple sued Amazon over the latter’s use of “App Store” to describe its mobile application marketplace, and Apple had already claimed the trademark (and registered it with the USPTO).
As predicted in my earlier post, Amazon does indeed claim that “App Store” is generic and not eligible for trademark protection.
However, Amazon is not claiming that “App Store” was generic only prior to Apple’s registration of the mark.
Amazon is also claiming that since Apple started using the mark in 2008, the mark has been the victim of “genericide.”
For those not well-versed in intellectual property vernacular, “genericide” refers to a process by which a previously-protected trademark loses that protection because it has become sufficiently generic in the public’s mind.
This has happened to several notable trademarks in the past, such as with “Thermos,” “escalator,” and “zipper.”
“Genericide” is initiated by two processes, often concurrently.
The first is the trademark owner’s failure to protect the mark, which results in its competitors’ common usage of it.
Unfortunately for Amazon, Apple has fervently sought to protect the mark, immediately sending cease-and-desist letters to any competitor that used “App Store.”
Conversely, the second – the public’s inability to call the product by any other name – has a little more traction.
While there are certainly other ways of labeling digital distribution platforms for mobile devices such as Apple’s App Store, there aren’t any in the public’s mind that stand out nearly as much as “App Store.”
While due in large part to Apple essentially creating the market for such a store (thus establishing “App Store” as a household name), Apple also had a more active role.
Namely, Apple not only failed to provide an alternative generic name, it actually used “App Store” generically, as Amazon pointed out in their response.
In October 2010, Steve Jobs describe Apple’s App Store as “the easiest-to-use, largest app store in the world.”
Amazon’s other evidence of genericide isn’t as convincing, such as claiming that official Apple press releases labeling the App Store an “application store” is generic usage, and pointing out through various sources that “app” and “store” separately are generic terms.
Nevertheless, because of Jobs’s generic treatment of the trademark and because of the lack of a strong alternative term, Amazon is able to make a credible case for App Store’s genericide.
If Apple were to lose protection over “App Store,” though, it would be unique.
Genericide typically, although not necessarily, occurs over a long period of time. For example, it was over 50 years until “Thermos” became generic.
Apple only started using “App Store” in 2008.
The court may find that a time span of less than three years is insufficient for genericide.
On the other hand, such a short time period may just be an indicator of today’s market environment.
Even if Apple loses the fight, the case should serve as a lesson to Apple and others in a similar position: protect your trademark, because genericide can strike at any time in today’s world.