Apple has not established that its ‘App Store’ mark is famous, in the sense of being ‘prominent’ and ‘renowned,’ and there is also evidence that the term ‘app store’ is used by other companies as a descriptive term for a place to obtain software applications for mobile devices, District Judge Phyllis J. Hamilton of the US District Court of the Northern District of California said in an 18-page order.
Apple did have substantially exclusive use of ‘App Store’ when it launched its service a little over three years ago, and spent a great deal of money in advertising and publicity, but the term appears to have been used more widely by other companies as time has passed, Judge Hamilton said.
Moreover, there is no evidence that Amazon intended to create an association between its Android apps and Apple’s apps, and there is no evidence of actual association, Hamilton added.
Apple filed the suit in March against Amazon’s use of Appstore for its online store of applications for devices using the Android mobile operating system. One of Apple’s arguments is that as both companies sell through the internet, and Amazon also offers products from Apple, consumers may be confused when they find Amazon using Apple’s mark for a mobile download service.
The term App Store figures in a list of service marks on Apple’s website. Service marks are used for services, in the manner that trademarks are used for products. Apple’s bid to register the mark in 2008 with the US Patent and Trademark Office was opposed by Microsoft which claimed that the mark could not be registered as it was generic, the Judge noted.
Amazon contends that the App Store’ mark is generic, because Apple’s App Store is simply an online store where consumers can search for, choose and download apps, the Judge said. Amazon has argued that its use of the term ‘Amazon Appstore for Android’ constitutes fair use and is not actionable, even if it is assumed for the sake of argument that ‘App Store’ is famous, a claim which Amazon denies, she noted.
Amazon asserts that it does not use ‘App Store’ as a trademark, but simply to tell the customer that the service is an app store , and that it offers apps for Android, she added.
In a separate order, the judge set October 15, 2012, as the trial date for the case.