The Virginia Business Litigation Blog
Apple Inc. has done very well with its App Store, a service that permits users to download programs of every type for use on their iPhones, iPods, iPads, and computers. With more than 350,000 software offerings, it’s by far the largest place online for people to get hold of the programs they want for their Apple devices. Apple’s trademark lawyers are now seeking to protect and enforce a trademark in the name “App Store,” a phrase they claim exclusive rights to, by filing a lawsuit in federal court against Amazon.com. It claims Amazon’s “Appstore” is infringing upon Apple’s trademark. Amazon’s activities, Apple alleges, are causing irreparable harm to Apple, and Apple is trying to get an injunction and damages from Amazon.
The case raises a lot of interesting issues. First, is the term “app store” even subject to trademark protection? Generic terms like “grocery store” and “shoe store” generally cannot be trademarked because they merely identify the product or service being offered. If an “app store” is merely a store that sells “apps,” which is usually viewed as a shorthand term for computer applications or software, the courts may treat the term no differently than it would a proposed trademark for a “shoe store.” In that case, Apple’s efforts would fail.
On the other hand, Apple will no doubt contend that it has used the term “app store” exclusively since 2008 and has advertised it extensively – and thus that the term has acquired a “secondary meaning” under trademark law. That means that when consumers think of an “app store,” they think of Apple’s highly popular service. So if Amazon uses the term, the argument runs, consumers will come to the incorrect conclusion that Amazon’s “app store” is identical with the Apple service, and Apple’s business will be harmed.
There are some interesting twists here. First, it’s not clear from the complaint whether Apple is claiming that “App” is actually a shortened form of its own name, “Apple.” The 
two words certainly have a lot in common, yet it seems unlikely that many people would associate them with each other. Second, Apple doesn’t have a registered U.S. trademark on the term “App Store,” although its application for the mark was approved by the U.S. Patent and Trademark Office. Its efforts to trademark the term have at least temporarily been stymied by Microsoft, which has opposed the registration before the Trademark Trial and Appeal Board. Among other things, Microsoft contends that the word is a generic term.
Finally, the absence of a registered U.S. trademark is probably not fatal to Apple’s efforts. It still claims trademark infringement because of its extensive use of the mark in commerce. It also claims common-law trademark infringement as well as claims under California state law.
Ultimately, this battle of the tech giants may turn on what the evidence says about consumers’ perception of the words “app store”: Are these words inevitably connected in people’s minds with Apple, or do they just give the common name of a well-known type of software service?