Apple’s Appetite for Trademark Warfare

This isn’t a rhetorical or philosophical question, nor is it the proper response to a clue on Jeopardy! In fact, it may soon be decided in a court of law.

On March 18, 2011, Apple Inc. filed a complaint in federal court against Amazon.com over Amazon’s “unauthorized use of Apple’s APP STORE™ trademark.” Apple claims that Amazon has been unlawfully using the term “APP STORE” in connection with Amazon’s “Appstore Developer Portal” and “Angry Birds Rio” software. Of course, what this is really about is that Apple is annoyed by Amazon’s “Appstore for Android” — whose name bears a certain resemblance to Apple’s own iTunes App Store.

Phones with Google’s Android operating system are a major competitive concern for Apple. The obvious solution to this would be for Apple to take advantage of its marketing juggernaut and already superior market share to beat out Android in the marketplace. But there are no lawyers involved in that, rendering it totally un-American. So instead, Apple has followed in the proud footsteps of luminaries like Donald Trump (tried to trademark “you’re fired!”), Paris Hilton (tried to control the phrases “that’s huge” and “that’s hot”), and Subway (claimed to own the word “footlong”), by going to court to claim trademark rights in the phrase “APP STORE.”

Trademark Law 101

We often talk about trademarks on this blog, but sometimes, it’s good to get back to basics. So let’s do just that. A trademark is a word or symbol by which goods of one firm are distinguished from goods of another — in other words, a word or symbol which serves a source-identifying function. The theory of trademark law is to protect consumers by allowing them to make informed product decisions by relying on a firm’s reputation. The key requirement for a trademark is that it must be distinctive. There are five general categories of marks, which can be organized in order of their strength/level of protectability as follows:

Fanciful: First, some trademarks are known as “fanciful” or “inherently distinctive,” e.g., newly coined words like “Clorox” and “Kodak.” This is probably why Apple’s complaint alleges that it “coined” the term “APP STORE.” (You know, just in case the judge doesn’t realize that “APP” is short for application.) Fanciful marks are considered the strongest under trademark law, and subject to the most robust legal protection.

Arbitrary: The next strongest category of marks are so-called “arbitrary” marks, which are real words which have no logical connection to the products or services they are being used to describe. Apple, Inc. is the perfect example. “Apple” is a preexisting word which — prior to Apple, Inc. effectively inventing the modern Super Bowl ad — had no relationship with computers whatsoever. Other good examples are Camel cigarettes and Jaguar cars.

Suggestive: The third batch of trademarks are known as “suggestive,” a category which refers to marks whose literal meanings have some attenuated relationship to the products they describe, e.g., Dove soap, Chicken of the Sea tuna, Aladdin Bail Bonds, Citibank, and Hula Hoop. Suggestive marks are not as vigorously protected as fanciful and arbitrary marks, but are still, by default, subject to protection under trademark law.

Descriptive: Descriptive marks are exactly what they sound like — they describe the products or services to which they are applied. In days of yore, IBM used to be known as International Business Machines — exactly the products they supplied. “Sharp” televisions are probably trying to tell you something about the quality of their pictures. And by default, descriptive marks are not protectable under trademark law — unless the party claiming trademark rights can show that the mark has acquired “secondary meaning.” What does that mean? More on that soon.

Generic: Finally, the weakest marks are known as “generic” marks, which are words or phrases which essentially define the underlying product or service, and can never acquire trademark protection. A good way to remember this category is to think about Paris Hilton or Donald Trump, as most things they say end up being uncreative and generic. Other generic terms include “cola” and “baby oil.” Interestingly, the category of “generic marks” represents thegraveyard of some of the most successful marks of the twentieth century: words like “aspirin,” “butterscotch,” “escalator,” “thermos,” and “yo-yo” used to be protected trademarks, but became so synonymous with their underlying products — which were so difficult to define by any other terms — that they actually lost trademark protection. This sad fate is known as “genericide” (which also sounds like a medical term that could describe the affliction shared by Hilton and Trump). And it’s the reason why manufacturers of unique products push consumers to use awkward and too-long phrases like “Frisbee flying discs,” “make a copy on a Xerox machine,” and “search for it on Google.”

Why Apple Will Lose…And Why It Might Not

Unless Apple scores a real luddite of a judge who doesn’t know that the term “APP” is short for “application,” its mark will languish in the second weakest category of trademarks — descriptive marks (as in, “the APP STORE” is “a place where you can go buy apps”) — and, by default, will not be subject to trademark protection. (Sometimes putting two otherwise generic or descriptive terms together can get you a distinctive mark, e.g., Virgin Galactic. But “APP STORE?” I don’t think so.)

But that brings us back to the “secondary meaning” concept I mentioned above. Apple’s one hope is to prove that, even though “APP STORE” seemingly refers simply to a “a store where you go to buy apps,” consumers who have become accustomed to hearing about Apple’s APP STORE over the last few years now see that phrase and specifically think “Apple’s store where you go to buy Apple apps.” With a phrase as straightforward as “APP STORE,” it’s a tough road for Apple to climb — and if, like me, you believe in preserving the flexibility and free use of language for everyone, it should be. But as much as Apple’s lawsuit smacks of trademark bullying (and it might be just that), we still have a case in front of us.

 

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