Apple Trademark Suit

Navigating the Complexities of Trademark Law: Lessons from the Apple Trademark Suit

The Apple trademark suit against Amazon over the use of “App Store” highlights the intricate nature of trademark law and the importance of protecting intellectual property. While this case represents a classic copyright infringment/TTAB cancellation case, what is interesting is that this case represents at least two of the largest trademark owners in the world, Apple and Microsoft.  Amazon is no slouch either.  Apple and Microsoft are traditional computer companies which in the past primarily targeted purchasers of personal computers while  Amazon is as an on-line retailer of books (and other stuff).  While this case may have been considered a trademark infringement case in the classic sense, the case highlighted a dispute over technology, a battle to gain a foothold in the software development and application marketplace.

This high-profile case offers valuable insights for businesses of all sizes.

The Apple Trademark Suit: Background

In 2011, Apple filed a trademark infringement lawsuit against Amazon for using the term “Appstore” to describe its Android app marketplace. The Apple trademark suit claimed that Amazon’s use of the term would confuse consumers and dilute Apple’s brand. This legal battle lasted for over two years before reaching a settlement in 2013.

Key Issues in the Apple Trademark Suit

Genericness and Descriptiveness

A central argument in the Apple trademark suit was whether “App Store” was a generic or descriptive term. Amazon contended that the phrase was too generic to be trademarked, while Apple argued that it had acquired distinctiveness through use.

Strength of Marks

Some words, inherently lack the distinctiveness required for exclusive ownership by anyone.   These words generally fall into one of the categories of personal names, genericness, descriptive or are misleading in nature.  Some arguments related to the App Store trademark may indicate the term should not qualify for protection and therefore should be cancelled.  For example, the term may be Descriptive or Generic.The Lanham Act, which governs trademark law in the United States, recognizes different levels of trademark strength:

1. Fanciful marks: Invented words with no dictionary meaning (e.g., Kodak)
2. Arbitrary marks: Common words used in an unrelated context (e.g., Apple for computers)
3. Suggestive marks: Words that suggest qualities of the product (e.g., Coppertone)
4. Descriptive marks: Words that describe the product (e.g., Sharp for televisions)
5. Generic terms: Common names for products (e.g., “smartphone”)

Descriptive Terms

These are words that simply describe the qualities, characteristics, functions or geographic origin of a good or service, such as Car Repair Shop. No trademark rights are granted to merely descriptive marks. However, it is possible for descriptive marks to become distinctive by achieving secondary meaning. Secondary meaning indicates that although the mark is on its face descriptive of the goods or services, consumers recognize the mark as having a source indicating function. Once it can be shown that a descriptive term or phrase has achieved a second meaning then a protectable trademark is developed. Secondary meaning can be achieved through long term use or large amounts of advertising and publicity.

Generic Words

Generic words are words that are associated with a good or service in general, without identification of any particular source of the product or service, such as aspirin. Generic words receive no trademark protection. Generic “marks” are devices which actually name a product and are incapable of functioning as a trademark. Unlike descriptive marks, generic devices will not become a trademark even if they are advertised so heavily that secondary meaning can be proven in the mind of consumers. The rationale for creating the category of generic marks is that no manufacturer or service provider should be given exclusive right to use words that generically identify a product. A valid trademark can become generic if the consuming public misuses the mark causing the mark to become the generic name for the product.

In the Apple trademark suit, Apple claimed that the term “App Store” fell into the suggestive or arbitrary category, while Amazon claimed it was descriptive or generic.

The Lanham Act and the Apple Trademark Suit

The Lanham Act provides the legal framework for trademark protection in the U.S. Under the Lanham Act, a trademark must meet three fundamental requirements: It must consist of a word, name, symbol, device or any combination thereof, or any other kind of designation which the courts or the Patent and Trademark Office have found to qualify as a valid trademark.

1. It must be adopted and used by a manufacturer or merchant or qualify for intent to use treatment.
2. It must identify the manufacturer’s or merchant’s goods and distinguish them from those manufactured or sold by others.

Under the Lanham Act, a cause of action related to trademark infringement may be brought based upon actual confusion or a likelihood of confusion.  In this case, Apple seems to be suggesting that because both Apple and Amazon are in the mobile software downloading business, and both are using the term App Store, there is likely to be confusion between purchasers of mobile applications.  Prior to filing the suit, Amazon has failed to sufficiently respond to three cease and desist letters sent by Apple’s counsel in an effort to resolve Apple’s concerns.  While Apple has a federally registered trademark, there are concerns about the descriptiveness of the term App Store.  In fact, prior to the filing of the suit by Apple, Microsoft had instituted a cancellation proceeding with the TTAB to cancel the federally registered App Store trademark.  In the context of the Apple trademark suit, several key provisions of the Lanham Act were relevant:

1. Likelihood of confusion: The Act prohibits the use of marks that are likely to cause confusion among consumers.
2. Dilution: Famous marks are protected against dilution, which weakens their distinctiveness.
3. False advertising: The Act also covers false or misleading statements in advertising.

Resolution of the Apple Trademark Suit

In 2013, Apple and Amazon reached a settlement, with Apple agreeing to drop the lawsuit. This outcome of the Apple trademark suit demonstrated the challenges in enforcing trademarks for potentially descriptive terms, even for well-established brands.

Lessons from the Apple Trademark Suit

1. Choose strong marks: Fanciful or arbitrary marks offer the strongest protection.
2. Consider genericness: Be cautious when attempting to trademark common terms.
3. Build brand recognition: Consistent use and marketing can strengthen descriptive marks.
4. Monitor competitors: Actively protect your trademarks to prevent them from becoming generic.

Implications for Businesses

The Apple trademark suit serves as a reminder of the complexities involved in trademark law. Even large corporations with substantial resources can face challenges in protecting their intellectual property.For smaller businesses, the lessons from the Apple trademark suit are particularly relevant:

1. Conduct thorough searches: Before adopting a trademark, contact an attorney to help with a trademark search.
2. Register early: Secure federal registration for your marks as soon as possible.
3. Use marks consistently: Maintain the strength of your marks through proper and consistent use.
4. Enforce your rights: Take action against potential infringers to protect your brand.

The Importance of Experienced Trademark Attorneys

As the case illustrates, the often the ability to use a term is relevant to your ability to compete in a designated market.  The battle in this case was about the ability to provide goods and services within an AppStore marketplace.  Litigating this issue before the TTAB and the U.S. District Court between three of the worlds biggest trademark owners highlighted the complexities of the Apple trademark suit and the need for expert legal guidance in trademark matters. An experienced trademark attorney can:

1. Conduct comprehensive trademark searches
2. Advise on the strength and registrability of proposed marks
3. Navigate the registration process with the U.S. Patent and Trademark Office
4. Develop strategies for protecting and enforcing trademarks
5. Represent clients in trademark disputes and litigation

Need for Experienced Trademark Attorney

Don’t let trademark issues jeopardize your business. Learn from the Apple trademark suit and protect your intellectual property with experienced trademark guidance. Contact our experienced trademark attorneys today to ensure your brand receives the protection it deserves. Our team can help you navigate the complexities of trademark law, from selection and registration to enforcement and litigation. Don’t wait until it’s too late – secure your brand’s future now.