Although corporate lawsuits are, for the most part, dull and boring, they can occasionally provide comedic relief. Back in January, we told you about a little nomenclature spat brewing between technology giants Microsoft and Apple. The Redmond-based Windows maker filed a complaint with the U.S. Patent and Trademark Office claiming that Apple was attempting to trademark a generic term, “App Store.” In its January filing, Microsoft argued that the term App Store is “generic for retail store services featuring apps” and that Apple should not be granted a trademark due to the “genericness” of the phrase. Kind of a funny choice of words from a company holding trademarks on Marketplace, Windows, and Office, don’t you think? Fast forward to today, and Apple has submitted its rebuttal.
Having itself faced a decades-long genericness challenge to its claimed WINDOWS mark, Microsoft should be well aware that the focus in evaluating genericness is on the mark as a whole and requires a fact-intensive assessment of the primary significance of the term to a substantial majority of the relevant public. Yet, Microsoft, missing the forest for the trees, does not base its motion on a comprehensive evaluation of how the relevant public understands the term APP STORE as a whole. What it offers instead are out-of-context and misleading snippets of material printed by its outside counsel from the internet and allegations regarding how the public allegedly interprets the constituent parts of the term APP STORE, i.e., ‘app’ and ‘store.’
It’s been a fairly humorous affair up to this point. No word on when the USPTO will be rendering a decision on the case.