TechFlash reports that Microsoft has filed a motion (PDF) asking the U.S. Patent and Trademark Office to deny Apple's application for a trademark on the term "App Store", arguing that the term is a generic one that other entities should be free to use.
"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."
Microsoft notes that Apple's claims on the "App Store" term have forced its competitors to tweak references to their own stores, calling them "Application Stores" or "App Marketplaces". The company also references cases in which the courts have decided that companies may not "usurp a generic term" for trademark purposes if it would prevent competitors from adequately describing their own products.
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 signaled its opposition to the trademark approval in July of last year, and followed that up with the motion for summary judgment filed earlier this week in an effort to speed the dismissal of the trademark using the argument that generic terms can not be protected even if they have achieved notability.
