Is APPLE’s trademark „APPSTORE“ too descriptive and not registrable?

11-01-12

According to several US press coverages Microsoft has filed a complaint, dated on 11th January 2011, against the trademark application „APPSTORE“ from APPLE. The trademark application from 2008 is a wordmark consisting of the syllables APP (= application) and STORE (= selling point).

The reason for Microsoft’s complaint is the fact that trademark protection shall not be available to signs that belong to the public domain, as the wordmark is descriptive.

In general, such definitions are excluded from registration if they merely describe the kind, quality or other characteristics of the goods or services claimed, because competitors shall be able to use such vocabulary in their own communicative environment for the designation of their products.

For this reason names which have been filed for application are examined and usually not registered because of absolute grounds for refusal by examiner’s decision. However, if such a descriptive term or a name which comes close to descriptive terms is registered in a singular case, it might be cancelled at the outcome of an opposition procedure due to its descriptive character.

Currently Microsoft is using exactly this argument in order to achieve the free availablity of the term „APPSTORE“ and to enable even itself to use the identical term. According to their argument, „APP“ is the definition for software which is offered in special shops, here called „STORE“.

Within the notice of complaint the attorneys refer to a statement of Mr. Steve Jobs, in which he explained that some competitors are already planning their own Appstores for Android software. His declaration documents that even he knows about the generic character of the name „APPSTORE“.

Whether Microsoft is, in fact, thinking about a longterm use of the name „APPSTORE“ or if the reason for the complaint is to proceed against a competitor - this remains to be seen.

(Thomas Schiefer, managing director of innomark, comments at irregular intervals on several naming topics which are up to discussion.)