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Apple Files Suit Against Amazon Over APP STORE Mark

In March 2011, Apple filed a trademark infringement lawsuit against Amazon, claiming that Amazon is infringing on Apple’s APP STORE mark. Apple alleges that Amazon is in the process of launching its own application store using the APP STORE mark. Apple’s complaint, filed in the U.S. District Court for the Northern District of California, states that it is seeking preliminary and permanent injunctive relief, as well as damages.
Video games play a role in Apple’s complaint. The company’s complaint reproduces an Amazon ad saying “Angry Birds Rio is Coming Soon,” one indication of the popularity of the Angry Birds game and brand. Apple’s complaint also cites Amazon’s advertisement stating that the Amazon Appstore Developer Portal” and developer program are now running.

In seeking to protect APP STORE as a mark, Amazon is likely going to claim that “App Store” is a generic phrase, or at least a descriptive expression of the kind of store that Apple is operating. Trademark law does not permit a party to protect a generic phrase as a mark. Moreover, descriptive marks have no protection, unless their owners can show “secondary meaning” where the consuming public comes to associate the mark with the company offering products using that mark. Companies can obtain secondary meaning for their marks through advertising and marketing their products using the mark. Apple argues in its complaint that it has widely marketed applications and its store using the APP STORE mark.

Given the volume of applications sold on Apple’s store and its wide popularity, Apple may be able to prove secondary meaning if it can overcome the argument that APP STORE is simply a generic term. Amazon will certainly fight hard to claim that APP STORE is generic. If Apple can prevail, it will have broad rights that it can use for its store selling both iOS and Mac OS software.