Microsoft and Apple are engaged in a trademark battle over the phrase “App Store.” Apple has filed a petition with the USPTO for permission to register the phrase “App Store” as an Apple-owned trademark, but Microsoft is challenging the move, claiming the phrase is too generic to warrant special trademark status.

Apple coined the term and filed for trademark status in 2008, when it originally opened its online store. But since then, “App Store” has fallen into common usage as a term that can refer to many of several app stores–not just Apples. In the same way, people use the word “Kleenex” to describe all facial tissues and the term “Xerox” to describe photocopying on any brand of copy machine.

But unlike the terms “Kleenex” and “Xerox,” the phrase “App Store” is less of a brand name and more of a generic description, which is why Microsoft is challenging the trademark application on the grounds that “App Store” is too generic a term to warrant trademark status.

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Under national trademark law, the USPTO can refuse to grant trademark status for terms that are not distinctive. The agency analyzes where proposed marks fall on a legal “distinctiveness spectrum.” The more distinctive a mark is, the more likely it is to receive trademark status.  Generic terms can never be trademarked. Descriptive terms such as “Fish-Fri” are not considered inherently distinctive, but they can be trademarked if the term acquires a secondary meaning that is associated with the trademarking company, and if competitors do not need to use the term. Trademarks that are suggestive of a product (such as “Glade, Tide,” or “Coppertone” are likely candidates for trademark status.  But the USPTO considers “fanciful or arbitrary” terms such as “Kodak, Zippo,” or “Tylenol” to be the most distinctive and worthy of trademark protection.

Interestingly, even though “Apple” is a common word in everyday usage, the USPTO considers the use of “Apple” as a company name to be trademark-worthy because the company arbitrarily decided to apply it to computers, which puts it in the “fanciful or arbitrary” approved end of the trademark spectrum. The same rule applies to the trademark for Windows.

Microsoft has filed a notice of opposition and a motion for summary judgment in attempt to block Apple’s trademark registration attempt.

What do you think?

When someone talks about an “App Store,” do you immediately think of Apple’s app store or someone else’s?

Is there an argument that “App Store” might actually be trademark-able as a “descriptive” term on the grounds that people think of Apple when they think of “App Store,” and thus the term has acquired a “secondary meaning” ? It’s your turn to play lawyer. . . Go!