What do you do when your company has 66 billion dollars in revenue from last year? Invest in lots of hot startup companies and acquire more talented employees? No. You hire a highly-paid team of lawyers to file a pathetic motion for trademark denial to the U.S. Patent and Trademark Office.

That’s exactly what the giant industry grandfather, Microsoft, has done. Apple has already trademarked the phrase, “There’s an app for that.” But Microsoft doesn’t think that Apple should have the rights to also trademark the term “App Store.”

Although it’s unclear as to whether Microsoft will win this appeal, it seems that Apple would have a stronger case. After all, the App Store has practically become a household name…

Microsoft’s motion is interesting to read. The document argues that Apple’s trademark is too generic, and that other variations of the term should be free to use by all companies.

“Any secondary meaning or fame Apple has in ‘App Store’ is de facto secondary meaning that cannot convert the generic term ‘app store’ into a protectable trademark,” write lawyers for Microsoft in a motion for summary judgment, filed yesterday with the Trademark Trial and Appeal Board.

“Apple cannot block competitors from using a generic name. ‘App store’ is generic and therefore in the public domain and free for all competitors to use.”

MacRumors gives a little history behind this new feud Microsoft has with Apple,

“Apple has been trying since July 2008 to convince the Patent and Trademark Office to grant a trademark on the phrase, with examiners initially denying the application under the rationale that the term is merely descriptive of the services offered by Apple.

Apple appealed the decision a few months later, submitting a stack of evidence showing that the term had acquired distinctiveness in marketing materials and media coverage. In response, examiners tentatively decided to award Apple the trademark and published it for opposition in January 2010.”

Microsoft thinks it’s unfair that Apple can trademark such a “generic” term when other companies could benefit from using the term to describe their products more effectively.

If you think about it, all of the other companies with mobile “app stores” use different variations of Apple’s famous term. It is clear that Apple seems to hold the monopoly with the public’s perception of what constitutes an “App Store”, but should other companies be able to implore this term? It seems like a bunch of different “App Stores” would only confuse the average consumer.

Microsoft’s motion does have some good points. For instance, it quotes when Steve Jobs himself used the term generically to describe “app stores for Android.” Ouch.

What do you think about all this? It seems like Microsoft may just want to throw a little temper tantrum (their Windows 7 app “Marketplace” is little vacant), but perhaps there is a real, valuable reason behind this plea. I guess the courts will decide.

[via TechFlash]

  • warnerve

    I sense too much fanboyism behind the phrase “file a pathetic motion for trademark denial”. It’s Apple the company that has patented or tried to patent even gestures (WTF!) and things that already existed for years in other phones (multitasking). Why? It’s business, you gotta have all grounds covered, and as a lawyer, while I think that those are smart moves from Apple -as clever as its marketing tactics are-, the “App Store” claim from MS could be valid, since that name couldn’t be more generic.

    • Totally agree with you!

    • UhdL

      Couldn’t have said it better myself.

  • JWalker

    I’m sorry but what phone had gestures (muti touch) before the iphone??? I would love to know.

    • warnerve

      None, but how could you patent a gesture? It is out of the rules of logic. Could Nintendo have patented the gestures used when a person uses a Wii remote? Or Ford would have succeded in patenting the gestures needed for driving a car? Or Colgate trying to patent the gestures used for brushing you teeth? I’m talking about two kinds of things that Apple has tried to patent: Gestures, AND things that already existed, like multitasking. It is not less absurd -or more clever- than MS’s claim about the “App Store” name.

  • Manuel

    If that’s the case, Nintendo should sue the PS3 for making the PS3 Move, which is 100% the same thing as a Wiimote

  • Joey

    Im sure applications such as “Windows” or “Word” are more generic then AppStore

    • UhdL

      “Windows” and “Word” are not generic for programs (or operating systems). “Program” would be generic for programs.

  • Microsoft seriously has way too much money and not enough imagination. Instead of spending money suing Apple for this stupid lawsuit, why not just find a better name that will ring with Windows mobile consumers.

    • AppleBits

      I’m kind of with Joey and Ted on this.
      The first thing I ever think of when I hear “app” or “app store” I instantly think of Mac or iphone.
      When I hear “Windows” or “Word”, I instantly think of either Microsoft or PC.

      All MS has to really do is be a little more creative, and I believe they can be if they stop worrying about this sort of time-wasting lawsuit stuff.

      It will be interesting to see how it plays out, I suppose.