Apple Inc. v. Amazon.Com, Inc.

Filing 43

EXHIBITS re 39 Declaration in Support, Continuation of Exhibits filed byAmazon Digital Services, Inc., Amazon.Com, Inc.. (Attachments: # 1 25a, # 2 25b, # 3 26, # 4 27a, # 5 27b, # 6 27c, # 7 27d, # 8 27e)(Related document(s) 39 ) (Givan, Sarah) (Filed on 6/1/2011)

EXHIBIT 25

Trademark Trial and Appeal Board Electronic Filing System. http://esttausptogov
ESTTA Tracking number:
Filing date:

Proceeding
Party

ESTTA387620
01/10/2011

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
91195582

Submission

Plaintiff
Microsoft Corporation
WILLIAM 0. FERRON, JR.
SEED IP LAW GROUP PLLC
701 FIFTH AVENUE, SUITE 5400
SEATTLE, WA 98104
UNITED STATES
[e-mail]
Motion for Summary Judgment

Filer's Name

William 0. Ferron, Jr.

Filer's e-mail
Signature

[e-mail] , [e-mail]
/William 0. Ferron, Jr./

Date

01/10/2011

Attachments

SJ-Brief.pdf ( 26 pages )(601790 bytes )

Correspondence
Address

Page 482

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
MICROSOFT CORPORATION,
Opposer,
V.
APPLE INC.,
Applicant.

)

) Opposition No. 91195582
)
) Serial No. 77/525433
)
)
) Attorney Docket No. 663005.80652
)
)
)

OPPOSER MICROSOFT CORPORATION'S
MOTION FOR SUMMARY JUDGMENT

Page 483

TABLE OF CONTENTS
I. Introduction and Summary of Argument

1

II. Summary of Undisputed Facts

2

III. Legal Standard for Summary Judgment — No Material Facts in Dispute and Moving
Party Entitled to Judgment as a Matter of Law

4

IV. Legal Standards for Genericness

5

A. General Standard for Genericness

5

B. The Generic Name for a Product, Followed by "Store," Is Generic for Retail
Store Services Featuring the Product

6

C. Appropriate Evidence to Prove Genericness

7

V. The Undisputed Facts Establish That "App Store" Is Generic for Retail Store
Services Featuring "Apps"

8

A. "App" Is a Generic Name for Software Applications

8

B. "Store" Is Generic for Retail Store Services

9

C. "App Store" Is Widely Used in the Trade as the Name for Online Stores
Featuring Apps

11

D. "App Store" Is Widely Used in the General Press as the Name for Online Stores
Featuring Apps

12

E.

Competitors Use "App Store" to Identify Their Services

13

F.

Apple Founder and CEO Steve Jobs Uses "App Stores" to Identify Competitors'
App Stores

16

G. Consumers' Use of "App Store" to Identify Competitors' Retail Stores Is Direct
Evidence of Genericness

16

II. "App Store" Is Generic for Retail Store Services Featuring Apps

17

I. Consumer Awareness or Fame of Apple's "App Store" Cannot Negate
Genericness

19

VI. "App Store" Is Unregistrable for Apple's Class 38 and 42 Services

19

A. Activities Merely Ancillary or Incidental to a Primary Service Are Not Separate
Services for Which a Mark Can Be Registered

19

B. When a Term Is Generic for a Primary Service, It Is Unregistrable for Services
Offered With the Primary Service

20

C. "App Store" Is Unregistrable for Apple's Class 38 and 42 Services, Which Are
Ancillary to and Offered With Its Retail Store Services

21

VII. Conclusion

22

Page 484

TABLE OF AUTHORITIES
CASES
Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986)
5
Buell Motorcycle Co. v. Honda Motor Co. Ltd., 2003 WL 21796056 (TTAB 2003)
6
Colt Defense LLC v. Bushmaster Firearms, Inc., 486 F.3d 701 (1st Cir. 2007)
7
Eastern Airlines, Inc. v. New York Airlines, Inc., 559 F. Supp. 1270 (D.C.N.Y. 1983)
18, 19
Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955 (TTAB 1986)
5
H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987,
228 USPQ 528 (Fed. Cir. 1986)
5, 17
In re A La Vieille Russie, Inc., 60 USPQ2d 1895, 2001 WL 862510 (TTAB 2001)
20
In re AEW, Inc., 1999 WL 285499 (TTAB 1999)
7, 9, 18
In re Candy Bouquet International, Inc., 73 USPQ 2d 1883, 2004 WL 2202265
(TTAB 2004)
6, 18, 19, 20
In re Computer Store, 211 USPQ 772 (TTAB 1981)
6, 9, 20
In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir.
2001)
5
In re Italian Store, 2010 WL 2104134 (TTAB 2010)
7, 9
In re Jonathan Drew, Inc. dba Drew Estate, 2009 WL 5253035, *4-5 (TTAB 2009)
7, 16, 18
In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979)
20
In re Lens.com , Inc., 83 USPQ2d 1444, 2007 WL 1196583 (TTAB 2007)
5, 7
In re Log Cabin Homes Ltd, 52 USPQ2d 1206, 1999 WL 974144 (TTAB 1999)
20
In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir.
1985)
7
In re Thunderbird Products Corporation, 406 F.2d 1389, 160 USPQ 730 (CCPA
1969)
5
In re Tires, Tires, Tires, Inc., 94 USPQ 2d 1153, 2009 WL 4075360 (TTAB 2009)
13
Matsushita Electric Industrial Co. Ltd v. Zenith Radio Corp., 475 U.S. 574 (1987)
5
Mil-Mar Shoe Co. v. Shonac Corp., 75 F.3d 1153 (7th Cir. 1996) .
6, 7, 14
Phoenix Closures, Inc. v. Yen Shaing Corp., 9 USPQ2d 1891 (TTAB 1988)
4
Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 222 USPQ 741 (Fed. Cir. 1984)
4
Sweats Fashions, Inc., v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed.
Cir. 1987)
5
Weeks Dye Works, Inc. v. Valdani, Inc., 2010 WL 2104147 (TTAB 2010)
6, 18, 19
OTHER AUTHORITIES
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 12.2
TMEP § 1301.01(a)(iii)
TMEP §1301.01(b)(v)

15
19
19

Page 485

I.

Introduction and Summary of Argument
Apple's "App Store" is an online store where users can purchase and download apps for

use on their iPods, iPads and iPhones. Microsoft opposes Apple's Application Serial No.
77/525433 for APP STORE on the grounds that "app store" is generic for retail store services
featuring apps and unregistrable for ancillary services such as searching for and downloading
apps from such stores.
Microsoft moves for summary judgment refusing registration of APP STORE. The
following undisputed facts establish that "app store" is generic for retail store services featuring
apps:
•

"App" is a common generic name for the goods offered at Apple's store, as shown in
dictionary definitions and by widespread use by Apple and others.

•

"Store" is generic for the "retail store services" for which Apple seeks registration, and
indeed, Apple refers to its "App Store" as a store.

These facts alone establish genericness as a matter of law under the cases holding that a generic
product name followed by "store" is generic for retail store services featuring the product. See
Section IV.B., below.
The undisputed facts further show that the combined term "app store" is commonly used
in the trade, by the general press, by consumers, by Apple's competitors and even by Apple's

founder and CEO Steve Jobs, as the generic name for online stores featuring apps. A search of
Westlaw's US ALL NEWS database found over 1,000 current articles using "app store" as the
generic name for stores featuring apps. Indeed, in a recent interview, Apple CEO Steve Jobs
criticized the proliferation of app stores for Google's competing Android platform as follows:
In addition to Googles own app marketplace, Amazon, Verizon and Vodafone
have all announced that they are creating their own app stores for Android.
There will be at least four app stores on Android which customers must search
through to find the app they want and developers will need to work to distribute
their apps and get paid.
(Declaration of Nathaniel Durrance ("Durrance Decl.,") It 4, Ex. 2) (emphasis added). This
undisputed evidence confirms that "app store" is generic.

1
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The Class 38 and 42 services for which Apple seeks registration (e.g., downloading,
searching for, and updating apps from its app store) are offered with and ancillary to its primary
retail store services. Like bagging groceries in a grocery store, they are not separately registrable
services. Further, a generic name for a primary service cannot be registered for services offered
with the primary service lest competitors be prevented from fairly describing their services.
"App store" is a generic name that Apple should not be permitted to usurp for its
exclusive use. Competitors should be free to use "app store" to identify their own stores and the
services offered in connection with those stores. Microsoft's motion for summary judgment
should be granted and Apple's application to register APP STORE refused.
This motion is supported by the Declaration of Nathaniel Durrance filed herewith.
Summary of Undisputed Facts
The following facts are not in dispute:
1.

Apple seeks registration for APP STORE, inter alia, for "retail store services."

Application Serial No. 77/525433 (emphasis added).
2.

"App" is used in the trade, by the press, by relevant consumers, by Apple's

competitors and by Apple as the name for software applications, especially applications for
mobile devices. (Durrance Decl. ¶J 1, 4, 9-19, 22; Exs. 1-2, 7-17, 20)
3.

Apple uses "app" to name the goods offered at its "App Store." (Durrance Decl.

T119-10, 12-15; Exs. 7-8, 10-13)
4.

Dictionaries define "app" as a software application. (Durrance Decl. TT 5-6;

Exs. 3-4)
5.

Apple refers to its "App Store" as a "store." (Durrance Decl. TT 12, 14-15;

Exs. 10, 12-13) For example, Apple has described its "App Store" in a September 2009 press
release as follows:
"Apple today announced that more than two billion apps have been downloaded
from its revolutionary App Store, the largest applications store in the world.
There are now more than 85,000 apps available...."

2
Page 487

(Durrance Decl. ¶ 14, Ex. 12 at 1) (emphasis added); See also Id. at 4-6 (Apple press releases
from July 14, April 24, and November 4, 2009).
6.

Apple refers to its other online retail stores as "store(s)" (e.g., iTunes Store").

(Durrance Decl. ¶ 14, Ex. 12)
7.

Dictionaries define "store" as a place where goods are sold. (Durrance Decl.

TT 7-8, Exs. 5-6)
8.

"App store" is used in the trade press, the general press, by consumers, by

Apple's competitors and by Apple's founder and CEO, Steve Jobs, as the name for online stores
offering apps for download. (Durrance Decl. ill 1, 4, 9-19, 24; Exs. 1, 7-17, 20-21, 22)
9.

Apple filed Application Serial No. 77/525433 on July 17, 2008, for APP STORE

listing the following services:
Class 35: Retail store services featuring computer software provided via the internet and
other computer and electronic communication networks; Retail store services featuring
computer software for use on handheld mobile digital electronic devices and other
consumer electronics.
Class 38: Electronic transmission of data via the internet, global computer networks,
wireless networks and electronic communication networks; Providing access to global
computer networks, wireless networks and electronic communications networks for
transmission or receipt of data.
Class 42: Maintenance, repair and updating of computer software; Providing a website
featuring technical information relating to computer software provided; Providing
computer software consulting services; technical support services, namely, troubleshooting
in the nature of diagnosing and repairing computer software problems; Computer services,
namely, providing search engines for obtaining data via electronic communications
networks; Providing temporary use of non-downloadable computer software to enable
users to program, organize and access audio, video, text, multimedia content and thirdparty computer software programs; Internet services, namely, creating indexes of
information, sites, and other resources available on global computer networks for others;
Searching and retrieving information, sites, and other resources available on global
computer networks and other electronic communication networks for others.
10.

Apple's trademark application for APP STORE disclaims "store." (Application

Serial No. 77/525433)

Page 488

11.

Apple's "App Store" allows customers to view, search, purchase and download

apps. (Durrance Decl. III 9-10, 12; Exs. 7-8, 10)
12.

All of the services claimed in Apple's APP STORE trademark application are

offered in connection with its online retail store services. (Durrance Decl. ¶ 9-10, 12; Exs. 7-8,
10)
13.

Consumers who access Apple's "App Store" from a personal computer do so

through the "STORE" option on Apple's iTunes website as shown in the specimens of use filed
by Apple in its APP STORE application, which are screenshots from its iTunes store. (Durrance
Decl. ¶ 9, Ex. 7)
14.

Apple's specimens of use show the "App Store" as an option to select under the

iTunes "Store" category. (Durrance Decl. ¶ 9, Ex. 7)
15.

Apple's specimens show a search box that allows users to search for apps, music,

movies, etc. with the text "Search Store" in the search box. (Durrance Decl. ¶ 9, Ex. 7)
16.

Apple's Class 38 specimen shows an app being downloaded from its App Store.

(Durrance Decl. ¶ 9, Ex. 7)
17.

Apple's Class 38 specimen shows a "Get App" button used to purchase apps from

its App Store. (Durrance Decl. ¶ 9, Ex. 7) The current version of Apple's App Store uses a
"Buy App" button for this purpose. (Durrance Decl. II 12, Ex. 10 at 5)
III.

Legal Standard for Summary Judgment — No Material Facts in Dispute and Moving
Party Entitled to Judgment as a Matter of Law
Summary judgment is encouraged in inter partes trademark proceedings before the

Board, Phoenix Closures, Inc. v. Yen Shaing Corp., 9 USPQ2d 1891, 1892 (TTAB 1988),
because the issues are limited to registrability and are therefore "particularly suitable" for
disposition by summary judgment. Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 222 USPQ 741, 744
n.2 (Fed. Cir. 1984).
Summary judgment is appropriate where there is no genuine issue of material fact and the
moving party is entitled to judgment as a matter of law. Giant Food, Inc. v. Standard Terry

4
Page 489

Mills, Inc., 229 USPQ 955, 961 (TTAB 1986). No genuine issue for trial exists where the record

taken as a whole could not lead a rational trier of fact to find for the non-moving party.
Matsushita Electric Industrial Co. Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1987). A

dispute is genuine only if, on the entirety of the record, a reasonable trier of fact could resolve a
factual matter in favor of the non-moving party. Sweats Fashion, Inc. v. Pannill Knitting Co.,
833 F.2d 1560 (Fed. Cir. 1987), citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986).
Disputes over facts that will not affect the outcome under the governing law are immaterial and
do not preclude summary judgment.
IV.

Legal Standards for Genericness
A.

General Standard for Genericness

"A term is generic and not a mark if it refers to the class, genus or category of goods
and/or services on or in connection with which it is used." In re Lens.com , Inc., 83 USPQ2d
1444, 2007 WL 1196583, *2 (TTAB 2007), citing In re Dial-A-Mattress Operating Corp., 240
F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) and H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).

"The determination of whether a term is generic involves a two-part inquiry: First, what
is the category or class of the goods or services at issue? Second, is the term sought to be
registered understood by the relevant public primarily to refer to that category of goods or
services?" In re Lens.corn, Inc., 83 USPQ2d 1444, 2007 WL 1196583, *2 (TTAB 2007), citing
II. Marvin Ginn Corp., supra.

Whether a term is generic is determined at the time the issue arises. In re Thunderbird
Products Corporation, 406 F.2d 1389, 160 USPQ 730, 732 (CCPA 1969); see also Buell
Motorcycle Co. v. Honda Motor Co. Ltd, 2003 WL 21796056, *3-4 (TTAB 2003) (non-

precedential). Thus, the appropriate inquiry in this Opposition is whether "app store" is currently
generic.

5
Page 490

Once an applied-for mark is determined to be generic, registration must be denied and
secondary meaning evidence proffered by the applicant is irrelevant. In re Candy Bouquet
International, Inc., 73 USPQ2d 1883, 2004 WL 2202265, *7 (TTAB 2004) ("If applicant's mark
is generic, which we have found in this case, then no amount of evidence of acquired
distinctiveness can establish that the mark is registrable"); see also Weeks Dye Works, Inc. v.
Valdani, Inc., 2010 WL 2104147, *6 (TTAB 2010) (non-precedential) (collecting cases).
B.

The Generic Name for a Product, Followed by "Store," Is Generic for Retail
Store Services Featuring the Product

Terms that combine the generic name of a product with the generic designator "store" or
"warehouse" are generic and unregistrable for retail store services featuring the product. THE
COMPUTER STORE, for example, was held generic for stores selling computers. In re
Computer Store, 211 USPQ 72 (TTAB 1981). In that case, the applicant's marketing materials
described its services as a "store" and the Board reasoned that:
... there is no question that the word "store" in the mark "THE COMPUTER
STORE" conveys the meaning of a business establishment where goods are
collected and kept for retail sale ... It follows that a "Computer Store" is a retail
outlet where computers and computer parts are sold and serviced.
Id. at 74. The Board held that THE COMPUTER STORE was generic and therefore
unregistrable for the service of selling computers and for ancillary services offered at the store
such as photocopying, technical support, use of a blueprint library. Id.
The same result was reached by the Seventh Circuit in Mil Mar Shoe Co. v. Shonac
-

Corp., 75 F.3d 1153, 1157 (7th Cir. 1996), where SHOE WAREHOUSE was held generic for
stores selling shoes. After concluding that "warehouse" was a commonly used name for a type
of retail store where goods are sold "in high volume, from a relatively large store, at discount
prices," id. at 1159, the Court found that 'Shoe Warehouse,' like 'Shoe Outlet' or 'Shoe Mart'
definitely qualifies as generic; it is the generic term for a type of retail store that sells shoes." Id.
at 1159-60 (footnotes omitted) (emphasis added).

6
Page 491

The Board has followed this rule in other cases, such as In re AEW, Inc., 1999 WL
285499 (TTAB 1999) (non-precedential) (DISCOUNT AUTO PARTS STORES generic for auto
parts stores) and In re Italian Store, 2010 WL 2104134 (TTAB 2010) (non-precedential) (THE
ITALIAN STORE generic for delicatessen selling Italian food).
C.

Appropriate Evidence to Prove Genericness

Evidence of genericness may be obtained from any competent source, including
testimony, surveys, dictionaries, trade journals, newspapers, and other publications. In re
Lens.com , Inc., 83 USPQ2d 1444, 2007 WL 1196583 at *2, citing In re Northland Aluminum
Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985). The Board and federal courts
frequently find the following sources to be relevant:
•

Dictionaries are a credible source of evidence of genericness "[b]ecause generic use
implies use consistent with common understanding." Mil Mar, 75 F.3d at 1158.
-

•

"Significant use of a term by competitors in the industry has traditionally been
recognized ... as indicating genericness." Mil Mar, 75 F.3d at 1159.
-

•

Generic use by the party seeking trademark protection is relevant because "[a] kind of
estoppel arises when the proponent of [a] trademark use is proven to have itself used
the term before the public as a generic name." Colt Defense LLC v. Bushmaster
Firearms, Inc., 486 F.3d 701, 707 (1st Cir. 2007).

•

Generic use by consumers is direct evidence of genericness. See In re Jonathan
Drew, Inc. dba Drew Estate, 2009 WL 5253035, *4-5 (TTAB 2009) (nonprecedential) ("consumer blogs, discussion groups and forums" are direct evidence of
genericness).

7
Page 492

V.

The Undisputed Facts Establish That "App Store" Is Generic for Retail Store
Services Featuring "Apps"
A.

"App" Is a Generic Name for Software Applications

The Oxford English Dictionary defines "app" as lain application, esp. an application
program" and indicates that "app" has been in use since 1985. (Durrance Decl. ¶ 5, Ex. 3 at 1)
Other dictionaries confirm that "app" is a shorthand term for "application."
•

New Oxford American Dictionary (app for Apple's iPhone) defines "app" as "short
for application" and defines "application" as "computing: a program or piece of
software written to fulfill a particular ptirpose of the user"

•

Merriam-Webster Online defines "app" as "application," and defines "application"
as "a program (as a word processor or a spreadsheet) that performs one of the major
tasks for which a computer is used"

(Durrance Decl. 7 5-6, Exs. 3-4)
"App" is commonly used in the trade as a generic name for software applications of the
type featured at Apple's store. Indeed, Apple advertises its App Store as having "The World's
largest collection of mobile apps," invites users to "Download apps" and "Find more perfect
apps," and lists categories of "Apps" in a scrollable banner at the bottom of the screen (i.e.,
"Apps for iPhone," "Apps for Cooks," "Apps for Work," "Apps for Music," etc.) as seen
below:

iPhone

Features

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Gallery

Tech Specs

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Awe to find hundreds of thousands morg. all designed specifically for iPhone.
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The world's largest
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The App 5rom is the ultimate

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couldn't be simpler lust find

and counting cr practically every

the ones you want, then tap to

category. Many are eine free.

download them.

Get updates fast.

Find more perfectrFP.

iPhone tells you when new versions

The Genius feature recommends

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of your F4
i'7are available.

new

Download the updates one at a

already have Or you can browse

time or all at once.

best sellers, staff picks, and more,

APPehor
Xeeenng
Current

8
Page 493

Apple's iPhone website, November 8, 2010 (red emphasis added) (Durrance Decl. ¶ 10, Ex. 8).
See also Apple's App Store Facebook page, which prominently displays its App Store Logo with

the tagline "Apps for iPhone iPod touch and iPad" (Durrance Decl. ¶ 13, Ex. 11).
Like these advertisements, Apple's App Store is replete with generic uses of "app" to
identify the products offered at its store, including:
•

"App of the Week"

•

"Apps from iPhone TV ads"

•

"Great Free Apps"

•

"Apps Starter Kit"

•

"Buy App" button selected by users to buy apps from the store

(Durrance Dec1.11 9-10, 12; Exs. 7-8, 10); See also "app store" uses cited in Section V.C. and
Section V.D., below, which include generic use of "app."
"App" is so well known that it has just been named the "Word of the Year" for 2010 by
the American Dialect Society, a leading group of US linguists. (Durrance Decl. ¶ 24; Ex. 22)
It is beyond dispute that "app" is a generic name for software applications of the type
offered at Apple's "App Store."
B.

"Store" Is Generic for Retail Store Services

"Store" is a common, generic name for retail store services. See, e.g., In re Computer
Store, 211 USPQ at 74, In re Italian Store, 2010 WL 2104134 at *1, In re AEW, Inc., 1999 WL

285499 (all cases where the Board found "Store" to be generic for retail store services).
Various dictionary definitions confirm the common understanding of the term "store":
•

New Oxford American Dictionary (app for Apple 's iPhone) defines "store" as "a
retail establishment selling items to the public"

•

Dictionary.com defines "store" as "an establishment where merchandise is sold,
usually on a retail basis"

(Durrance Decl.

IN 7-8; Exs. 5-6)

9
Page 494