Computer technology and the internet move at lightening pace. A few years ago, the word app did not even exist. Now it has become commonplace and we hear about apps all the time. In 2008, Apple tried to get out in front of the curve and register a trademark for the term “App Store”, exclusively reserving the term for their use. Since that time, the term “app” has become increasingly popular.
Playing off this popularity, Amazon has started to use the term “Amazon App Store” to name their online app marketplace. Unsurprisingly, Apple has asserted its trademark registration and sued Amazon for trademark infringement. However, in response, Amazon claims that Apple is no longer entitled to trademark protection on the term because app and App Store have become generic terms. So who will win this battle? (see article here: http://www.reuters.com/article/2012/09/27/net-us-apple-amazon-appstore-lawsuit-idUSBRE88Q00C20120927)
Trademark law serves to protect distinctive terms that indicate the source of goods. The law is established to carve out a space around a mark and allow the mark holder to identify the source of his goods to consumers. One space that is not eligible for protection is generic terms. For example, one could not obtain a trademark for a brand of candy called “Candy”. A generic term is often a noun or noun phrase that refers to a class of goods or services or to a member of a class of goods or services, like the “candy” example just given. Thus, the reason a trademark registration may not be obtained for a generic term is to prevent stifling free commercial speech regarding a class of goods or services, which could occur if trademark litigation were permitted for infringement of generic terms.
When Apple obtained a trademark registration for “App Store” in 2008, app was not a generic term. In fact, most people did not know what an app was. However, in 2012 app is much more common and people don’t know what to call an online store where you purchase apps anything other than an App Store. Does that mean that app and App Store have become generic terms? Good question – one that will likely be answered by a federal court.
Trademark genericism, as it is called, has been an issue for some time. It becomes a problem when the trademark name becomes so associated with the product that that is what everyone starts calling it. An example of this is Xerox or Kleenex. These terms became so common that instead of referring to the copy machine or tissue box, people would say the “Xerox machine” or the “Kleenex box”. Amazon is hoping that such “genericism” has occurred with the term App Store.
This will be an interesting case to follow because of the amazing pace at which a term may become generic. If the ruling is in favor of Amazon, “App Store” would have gone from non-existent to a generic term in only a few years. With such speed and ever changing trademark landscapes, it is a good idea to consult with an experienced trademark lawyer who can suggest some strategies to help maintain your trademark rights and avoid “genericism” of your mark.