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)

Apple denies that "store" is generic for online retail store services, averring that the term
"store" refers only to brick-and-mortar establishments. (Answer ¶ 7). However, Apple relied on
its online store use to establish use for retail store services (Durrance Decl. ¶ 9, Ex. 7 (Apple's
Specimen of Use)), and calls its App Store a "store" (1) in its press releases, (2) on its App Store
website, and (3) in its communications to app developers, as seen below:
1.

Apple Press Releases:

Apple's press release about its App Store calls it an "applications store," as seen
in excerpt below:
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 ...
Apple Press Release Sept. 28, 2009 (emphasis added) (Durrance Decl. ¶ 14, Ex. 12 at 1)
2.

Apple's App Store Website:

The specimens of use filed with Apple's APP STORE trademark application
show Apple's App Store being accessed from a personal computer. Consumers go to the
"Store" section of Apple's iTunes website to select the "App Store" and are also offered
the option to "Search the Store" in order to find music, apps, etc. (Durrance Decl. ¶ 9,
Ex. 7)
3.

Apple Communications to App Developers:

Apple's Developer Agreement for iPhone app developers defines "App Store" as
follows:
"App Store" means an electronic store and its storefront branded, and owned
and/or controlled by Apple or an affiliate of Apple.
(Durrance Decl. ¶ 15, Ex. 13 at 10) (emphasis added)
It is beyond dispute that "store" is a generic name for retail store services, including
online stores such as Apple's App Store.

10
Page 495

C.

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

"App store" is commonly used by the trade as the name for an online store featuring
apps, as evidenced by numerous articles in the trade press shown in Exhibit 14 of the Durrance
Declaration filed herewith. Representative examples include:
CNet.com, October 6, 2009
At last, inside the app store .... The Windows Marketplace for Mobile app store, which
launched Tuesday, looks a little plain compared with other app stores, like the darkerthemed BlackBerry App World and Google's Android Market. But the essential
elements are here, like a search bar and browsable categories.... As with other mobile
app stores, you can view screenshots of an app and other folks' ratings.
FierceMobileContent.com , October 13, 2010
Who will launch the next mobile app store? .... With Amazon making its move, Best
Buy CEO Brian Dunn recently admitted the big-box electronics giant is deliberating
whether to launch an app store of its own.... Expect the app store ranks to continue
multiplying like rabbits, according to Gartner analyst Ray Valdez. "New people will
continue to introduce app stores—carrier telcos, device manufacturers, e-commerce
sites," Valdez says.
PC World, November 4, 2010
So what's Verizon's Android app store really all about, and what'll it mean for you? ....
Verizon's Android app store will have a few hundred apps to start, I'm told, with heavy
growth expected over the months to come.
Androinica.com , October 8, 2010
A few weeks ago a rumor started that Amazon.com was going to build its own Android
app store, just like Verizon, and that rumor has now been confirmed to be true via a
document Amazon sent out to potential developers.
Androinica.com , January 8, 2010
Samsung promises new app store, convergence, and Digital TV Moment.
Gigaom.com , June 16, 2010
RIM's BlackBerry Mobile App Store Revamp: Better Late Than Never... [I]mproving a
mobile app store also helps bring developers to a platform.
(Durrance Dec1.1116, Ex. 14 at 1-4, 5-6, 7-8, 9-10)

11
Page 496

D.

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

"App store" is commonly used by the general press as the name for online retail stores
featuring apps, including articles in FORBES, TIIE WALL STREET JOURNAL, THE NEW YORK
TIMES, THE SAN JOSE MERCURY NEWS, and CNN.com . A recent search of Westlaw's US
ALLNEWS database found 1077 articles published since January 1, 2010 using "app store" as
the generic name for retail stores featuring apps. Significantly, 80% of those articles discussed
app stores other than Apple's. (Durrance Decl. ¶j 1-3, Ex. 1) Examples include:
WASHINGTON POST, July 27, 2010

Most cellphone app stores --- iPhone, Android, BlackBerry --- are filled with apps that
use your location to list free (or paid) Wifi hotspots near you.
STANDARD & POOR'S DAILY NEWS, August 3, 2010

Consumers can download the free application through several app stores including
BlackBerry(R) App World(TM) and Android Market(TM).
INVESTOR'S BUSINESS DAILY, September 29, 2010

App Stores Offer Feast For Window-Shoppers Applications abundant for iPhone,
BlackBerry, Android smartphones
A smart phone is anything but a mere phone nowadays. The name of the game: apps.
When users poke around smart-phone app stores, they find a wide range of
applications...
Google won't be alone in providing Android app stores. Other companies have plans to
do so...
FORBES, Nov. 2, 2010

Consumer preferences for smartphones are influenced by the availability and quality of
smartphone apps. By making it easier for app developers to create new apps for Nokia's
Ovi app store, Nokia is trying to counter the success of competing apps stores such as
that of Apple and Google's Android.
WALL STREET JOURNAL, Oct. 26, 2010

Lexmark plans to open an app store and release specialized tools that allow developers
to create apps for four of its printers, which have touchscreens and Internet
connections.... Lexmark's app store comes as many companies try to adopt a model
honed by Apple Inc. with its iPhone and iPad devices. Introduced in 2008, Apple's app
store now sports a catalog of more than 300,000 apps which have been downloaded a
total of more than 7 billion times.

12
Page 497

CNN.com, Apr. 27, 2010
The success of Apple's app store has spurred rivals to launch their own versions. But
with the exception of Android, few other app stores — including the BlackBerry World
and the Palm app store — have come close to becoming a viable competitor to iPhone's
App Store.
(Durrance Decl. ¶ 17, Ex. 15 at 1, 3-5, 8, 11, 13) (emphasis added). Additional press references
to "app store" are shown in Durrance Declaration Exhibit 1.

E.

Competitors Use "App Store" to Identify Their Services

"Evidence of competitors' use of a term as the name of their goods and services is
persuasive evidence that the relevant consumers perceive the term as generic." In re Tires, Tires,
Tires, Inc., 94 USPQ2d 1153, 2009 WL 4075360 (TTAB 2009). "App store" is used by other
retailers in the names of their stores, such as the DIRECTV App Store shown in the
advertisement below:
APP S ic"
14 10 20
AR

3 4114

•
Maw 14 I 441,
ION

' Select the DIRECTV App Store icon at the top of the
TV Apps Dock and choose the apps you want.''

(Durrance Decl. II 11, Ex. 9)
Other retail stores that have used "App Store" in their name include:

-

AppStoreHQ
Shopify App Store
@metro App Store

-

WinMoAppStore.com

13
Page 498

PocketGear.com — World's Largest Mobile App Store
AndAppStore
Handmark Mobile App Store Solutions
HipLogic App Store
DirectTV App Store
MiKandi.com — The World's First Adult AppStore
Sentrion App Store
DC App Store
MobiHand, Inc. — The App Store Company
YoYo Games App Store

(Durrance Decl. It 19, Ex. 17)
Indeed, the arrival of app stores by Apple's competitors was cited by the American
Dialect Society as of the reasons it chose "app" as its Word of the Year for 2010, even though it
was not a new word. Linguist and American Dialect Society representative Ben Zimmer noted:
App has been around for ages, but with millions of dollars of marketing muscle
behind the slogan "There's an app for that," plus the arrival of 'app stores' for a
wide spectrum of operating systems for phones and computers, app really
exploded in the last 12 months.
(Durrance Decl. ¶ 24; Ex. 22) (emphasis added)
Microsoft would like the ability to use "app store" to fairly describe its own retail store
services for apps, but Apple asserts that such uses are infringements of its rights (Answer ¶ 1 0)
and it has sent demand letters to companies using "App Store" in their names. (Durrance Decl.
1

1 20-21, Exs. 18, 19)
Apple's demands have apparently caused some competitors to change their use to

"Application Store" or "App Marketplace." Id. Rather than negating this strong evidence of
genericness, Apple's assertions and demands underscore the necessity of finding "app store" to
be generic so that these competitors, along with Apple, can fairly describe their online stores

14
Page 499

featuring apps as "App Stores." The courts "have repeatedly recognized that 'No allow a
producer of goods to usurp a generic term as a protectable trademark would prevent competitors
from describing their own goods adequately.' Mil-Mar, 75 F.3d at 1157.
A review of the current store names and descriptors used by major online app stores for
mobile devices shows that other vendors are apparently in the same position as Microsoft — i.e.,
their stores are described as "app stores" in the press but pending a ruling in this Opposition they
cannot use "App Store" in their store names or descriptors without the possibility of claims from
Apple. Many, therefore, use other terms to describe their services, as shown in the chart below:
Vendor

Store Name

Descriptor

Press Description

Google

Android Market

marketplace

app store

RIM/Blackberry

App World

storefront

app store

Microsoft

Marketplace

virtual store for apps

app store

Nokia

Ovi Store

application store

app store

HP/Palm

App Catalog

application store

app store

Samsung

Samsung Apps

application store

app store

(Durrance Decl. ¶J 16, 23; Exs. 14, 21)
The fact that other terms may also describe something does not mean that a common
descriptive name is not generic. Professor McCarthy's treatise discusses the public policy in
favor of allowing competitors to use generic terms and not forcing them to use less common
alternative names. MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 12.2 (discussing
hypothetical trademark claim to generic name "cell phone" requiring competitors to use
"wireless phone," "portable phone," etc. as alternate names).

15
Page 500

F.

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

In an October 18, 2010 conference call with financial analysts, Apple's founder and
CEO, Steve Jobs, used "app stores" to identify competitors' app stores for phones that use
Google's Android operating system:
In addition to Google's 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.
(Durrance Decl. If 4, Ex. 2) (emphasis added). Mr. Jobs' comments were published by Apple
and widely reported online and in the press, including in MacWorld magazine and on NPR. Id.
G.

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

Consumers use "app store" to refer to online app stores offered by Apple's competitors,
which is direct evidence of genericness. See In re Jonathan Drew, 2009 WL 5253035 at *4-5•
A review of posting on Internet blogs shows that consumers use "app store" to identify stores
from Apple's competitors, such as:

Posted by tk772 on November 8, 2010 on engadget.com
If someone has apps from 5 different app stores, how do they update all their apps? Will
they have to log into each store and check for updates? Will they have to have 5 app
store updater background tasks running? ...

Posted by $320AShareMakesMeGrin>8-) on November 8, 2010 on engadget.com
If I want to open my own personal app store, I think it's perfectly fine. There is no set
number to how many Android app stores should be allowed.

Posted by pika2000 1 month ago on November 8, 2010 on engadget.com
HTC's Android, Moto's Android, Samsung's Android, etc etc) each with their own
update schedule, skins, and in this case, app store. It's the nature of open.

Posted by Kevin Krause on October 1 1th, 2010 on phandroid.com:
Now that it is all but confirmed that Amazon will be pitching their own Android app
store... We have long been familiar with the idea of carrier-centric app stores with

16
Page 501

Android.
Posted by Storm] 4K aka Phil on October 11, 2010 on phandroidcorn:
So the thing I'm not getting about everybody wanting to open an app store is how they
think they are going to get developers to their store.
Posted by Hendrix on October 11, 2010 on phandroid.com:
Yeah, I honestly don't see a need for 5000 app stores.
Posted August 5, 2009 on rnobilewhackcom:
Well it looks like Samsung is too very interested in having an app store of its own...
Now that Samsung has entered this app store frenzy we can't but wonder who's next.
Any hints?
Posted by Joshua Poje on April 9, 2009 on new.abanet.org
App stores are the means by which Smartphone users browse, preview, and purchase
software to add functionality to their Smartphones. The comparison looks at app stores
for the iPhone, Android, Blackberry, Windows Mobile, Palm, and Nokia (Symbian)

(Durrance Decl. ¶ 18, Ex. 16) (emphasis added)
H.

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

"App Store" falls squarely within the established cases holding that the generic name for
a product, followed by "Store" is generic for retail store services and cannot be registered as a
trademark. See Section IV. B., above. Like "Computer Store," "Discount Auto Parts Stores,"
"The Italian Store" and "Shoe Warehouse," "App Store" is generic and cannot be appropriated
by any single user.
Applying the two-part genericness inquiry from the H Marvin Ginn Corp. case confirms
that "app store" is generic and unregistrable:
1.

What is the category or class of the services at issue?

Retail store services featuring apps.

17
Page 502

2.

Is the term soulit to be registered understood bv the relevant public primarily to
refer to that category of services?

Yes. Relevant consumers understand "app store" to refer to the entire category of retail
stores featuring downloadable apps, not just Apple's "App Store." The record amply
shows that the trade, the press, consumers, competitors and even Apple's founder and
CEO Steve Jobs, all use "app store" to refer to an entire category of online stores that
allow users to download apps for their mobile phones.
The fact that Apple was an early and successful entrant into the app store market does not
give it the right to usurp a generic term and prevent competitors from using it. As the Board held
in a similar situation:
We do not question that applicant may be a "leading maker" or perhaps a
"pioneer" of "infused cigars" or even that applicant coined the term. The problem
is that none of these facts overcomes the generic meaning of "infused cigars" or
makes this generic term registrable.
In re Jonathan Drew, 2009 WL 5253035 at *5. See also, Weeks Dye Works, 2010 WL 2104147
at *6 (first user of term for new product does not make term protectable, "Generic terms, by
definition incapable of indicating source, are the antithesis of trademarks, and can never attain
trademark status."); In re Candy Bouquet, 73 USPQ2d 1883, 2004 WL 2202265 at *7.
Nor does the fact that alternate names may be available (e.g., "app marketplace" or "app
catalog") have any bearing on the present determination — especially when "app store" is the
most common and straightforward name for these services. Weeks Dye Works, 2010 WL
2104147 at *6 ("the fact that another term is available for use by competitors does not transform
a generic term into capable matter."). Generic terms are in the pulblic domain and free for all
competitors to use. As with "Discount Auto Parts Stores" the combination of the generic terms
"app" and "store" in APP STORE "creates no different commercial impression; the generic
meaning is not lost. Thus, the composite designation is likewise generic." In re AEW, Inc., 1999
WL 285499 at *3.

18
Page 503

I.

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

Apple's assertions of consumer notoriety and fame of its "App Store" (Answer ¶ 5) offer
no help to avoid genericness. The case law recognizes that when an applicant uses a generic
term as its name, the applicant's customers and others who know of the applicant's business will
likely associate the generic term with the applicant. In Eastern Airlines, Inc. v. New York
Airlines, Inc., 559 F. Supp. 1270, 1275 (D.C.N.Y. 1983), the Court held that evidence that

consumers associated "Shuttle" with Eastern Airlines did not mean "shuttle" was a trademark as
opposed to a generic term. "All it demonstrates is that a likely response to any generic word is
the name of the best known producer or manufacturer of that product." Id. Such evidence is
considered "de facto secondary meaning" that has no legal impact on the status of the generic
term. A generic term can never be a trademark, no matter how much secondary meaning it
acquires. In re Candy Bouquet, 73 USPQ2d 1883, 2004 WL 2202265, *7; Weeks Dye Works,
2010 WL 2104147 at *6.
Here, Apple was an early and successful entrant into the app store marketplace.
Competitors are rushing to develop smartphone products to compete with Apple's iPhone, and
with those products to offer their own app stores. 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. 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.
VI.

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

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

Activities that are part of, or ancillary to, an applicant's primary service are not
considered separate services for which a mark can be registered. The TMEP uses the example of
bagging groceries in a grocery store to explain this distinction, noting that:
[O]perating a grocery store is clearly a service. Bagging groceries for customers
is not considered a separately registrable service, because this activity is normally

19
Page 504

provided to and expected by grocery store customers, and is, therefore, merely
ancillary to the primary service.
TMEP § 1301.01(a)(iii) (emphasis in the original).
Whether a mark is separately registrable for an activity turns on "whether the activity
identified in the application is in any material way a different kind of economic activity than
what any provider of that particular product or service normally provides." TMEP
§ 1301.01(a)(iii), citing In re Landmark Communications, Inc., 204 USPQ 692, 695 (TTAB
1979). Similarly, services that are incidental to the primary business activity, such as providing
general information about an applicant's goods or services, are not a separate service. Id., citing
TMEP §1301.01(b)(v).

B.

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

When a term is generic for a primary service, denying registration for ancillary or
incidental services takes on special import because registration for those services would restrict
competitors from using the generic term to describe their own services. Thus, generic terms are
unregistrable for services offered in connection with the primary service. In In re Computer
Store, for example, the Board held that "The Computer Store" was generic for stores selling
computers and also unregistrable for photocopying, technical support and blueprint library
services offered at the store. 211 USPQ at 74.
Similarly, in In re Log Cabin Homes Ltd, 52 USPQ2d 1206, 1999 WL 974144, *3-4
(TTAB 1999), the Board held that because "Log Cabin Homes" was generic for homes made of
logs, it was also unregistrable for architectural services and retail services offered with such
homes. Id. at *3; see also In re Candy Bouquet, 73 USPQ2d 1883, 2004 WL 2202265 ("Candy
Bouquet" generic for a floral-type gift arrangement of candies and service of selling those
goods); In re A La Vieille Russie, Inc., 60 USPQ2d 1895, 2001 WL 862510 (TTAB 2001)
("Russianart" generic for dealership services in the field of fine art, antiques, furniture and
jewelry).

20
Page 505

C.

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

Apple's Class 38 and Class 42 services are offered in connection with and are ancillary to
its Class 35 retail store services. Indeed, the specimens of use filed by Apple in its application
are screenshots from the "App Store" portion of its iTunes store website.
An examination of Apple's claimed services quickly reveals why registration of APP
STORE for these services must be refused. In Class 38, Apple claims "access to global
computer networks ... for transmission or receipt of data" and "electronic transmission of data
via the internet." Put in simpler terms, Apple claims (a) accessing its online store, and
(b) downloading apps from its store.
A review of Apple's Class 42 services yields the same result. Apple claims (c)
"updating of computer software" for updating apps offered at its store, (d) "providing a website
featuring technical information relating to computer software provided" for offering information
about apps offered at its store, (e) "providing search engines ..." for allowing users to search for
apps offered at the store with a "Search the Store" search tool, and (f) "providing temporary use
of non-downloadable computer software to enable users to ... organize and access ... computer
software programs" for allowing users to organize apps purchased at its store.
These services are clearly ancillary to Apple's online store services — the Internet
equivalent of bagging groceries at a grocery store. Apple promotes these services as features of
its store, as seen in the Apple advertisement on page 8, above, promoting "Get updates fast,"
"Download apps with a tap" and "Find more key apps" as key features of its App Store. These
services are typical, if not required, offerings for Apple and its competitors. Indeed, Microsoft,
Google, Blackberry/RIM, Palm, Verizon, and Nokia all offer these services at their app stores.
(Durrance Decl. ¶ 22, Ex. 21). Insofar as "app store" is generic for retail store services featuring
apps, Apple should not be entitled to register it for ancillary services that are included within the
app store service.

21
Page 506

VII.

Conclusion

Apple seeks to exclusively appropriate the phrase "App Store" for use with its own store
offering apps. The undisputed evidence shows that "app store" is a generic name for a store
offering apps. Under established law, APP STORE is unregistrable for retail store services
featuring apps and for ancillary and other services offered by Apple at its app store. Apple
cannot leverage its early success to prevent competitors from using this generic term for their
own app stores. Accordingly, Microsoft's motion should be granted and Apple's application
refused.

DATED this 10th day of January, 2011.
Seed IP Law Group PLLC

oukti qov
William 0. Ferron, Jr.
Nathaniel E. Durrance
Seed IP Law Group PLLC
701 Fifth Avenue, Suite 5400
Seattle, Washington 98104-7092
Telephone: [phone]
Facsimile: [phone]
Attorneys for Opposer
Microsoft Corporation

1778771_5.DOCX

22
Page 507

CERTIFICATE OF SERVICE
I hereby certify that on this 10 th day of January, 2011, the foregoing OPPOSER
MICROSOFT CORPORATION'S MOTION FOR SUMMARY JUDGMENT was served upon

Applicant's attorneys of record by depositing same with the U.S. Postal Service, first-class
postage prepaid, addressed as follows:
Joseph Petersen, Esq.
Jason Vogel, Esq.
KILPATRICK STOCKTON LLP
14th Floor
31 West 52nd Street
New York NY 10019
Alicia Grahn Jones, Esq.
KILPATRICK STOCKTON LLP
1100 Peachtree Street, Suite 2800
Atlanta, Georgia 30309

Annette Baca

23
Page 508