Amazon opposes Apple's false advertising claim in app store suit

(CNET) In Apple's continuing trademark battle with Amazon over its use of the "App Store" name, the Internet retailer has asked a federal judge to dismiss Apple's false advertising claim.

The dispute stems from a lawsuit Apple filed in April 2011 accused Amazon of misappropriating the moniker for which Apple applied for the trademark in 2008, a week after the company launched its iPhone App Store. The lawsuit sought and injunction against Amazon's use of App Store to describe its digital download store.

Apple amended its complaint last November to include claims of false advertising. Apple contended that since the Android tablet was unveiled a year ago, Amazon began altering its "Amazon Appstore for Android" moniker to de-emphasize the "for Android" suffix in ads for the device.

But Amazon argued in a filing today with the U.S. District Court in Oakland, Calif., that the term has become generic and as a result can't be considered misleading, according to a Reuters report.

"Apple presumably does not contend that its past and current CEOs made false statements regarding to those other app stores to thousands of investors in earnings calls," Amazon said in its filing, referring to instances in which Apple CEOs Steve Jobs and Tim Cook publicly referred to competitors' online marketplaces as "app stores."

"To the contrary, the use of the term 'app store' to refer to stores selling apps is commonplace in the industry," Amazon said.

Apple did not immediately respond to CNET's request for comment.

In a countersuit last year, Amazon argued that the term "App Store" is too generic and requested that Apple's lawsuit be dismissed. In July 2011, a judge denied Apple's injunction request, ruling it had not established the likelihood of confusion between the competing brands. But she also said she did not agree with Amazon's contention that the mark is purely generic.

The case is scheduled to go to trial in August 2013.

This article originally appeared on CNET

[DarcyBlaze]

A very interesting case, Apple has no option but to defend its trademark. Technically Amazon are attempting to ride off the name Apple invented, if they called their store the Amazon Application Outlet or AAO and built their own reputation from scratch, they would have no problem but they are trying to gain some of Apple's cool reputation for free.

Generic words common to a trade cannot be trademarked in that CLASS but can be trademarked in a different class. For example WRISTWATCH cannot be trademarked in class 14 because that class includes watches. However WRISTWATCH could be trademarked as a perfume in class 3 for perfumes. The idea being that common words used in the trade are free for all to use. Diesel Jeans is a good example, no oil company could trademark the word Diesel.

Here App meant nothing until Apple made it something, if it had meant something in the relevant class Apple would not have been able to trademark it. Branding is all about reputation, it is the mark of a manufacturers quality upon which the public can really.

With the power of today's communication App has quickly fallen into common parlance and if Apple does not defend what it invented and paid to trademark, the word App will become a generic term and available for use by all in that class.

Good examples of companies who have had a similar problem are Biro, Hoover and Lego. In the case of Lego the basic building brick patent has run out and competitors including Hasbro produce a copy. In the US Lego bricks have generically become known as Legos but Lego vigorously defends its trademark as Apple must. If not other manufactures would brand their bricks as Legos to gain from Lego's hard built reputation and this is exactly what Amazon is attempting to do with the word App.

Darcy Blaze

http://www.darcyblaze.com