Forgot your password?
typodupeerror
Microsoft The Courts Windows Apple

If App Store's Trademark Is Generic, So Is Windows' 356

Posted by timothy
from the this-one-I-hope-apple-loses dept.
Toe, The writes "In response to Microsoft's attempt to dismiss Apple's 'App Store' trademark application, Apple references Microsoft's claim to the Windows trademark. 'Having itself faced a decades-long genericness challenge to its claimed WINDOWS mark, Microsoft should be well aware that the focus in evaluating genericness is on the mark as a whole and requires a fact-intensive assessment of the primary significance of the term to a substantial majority of the relevant public.'"
This discussion has been archived. No new comments can be posted.

If App Store's Trademark Is Generic, So Is Windows'

Comments Filter:
  • Are they kidding? (Score:3, Interesting)

    by Jumperalex (185007) on Wednesday March 02, 2011 @08:16AM (#35355784)

    It *is* generic because I was using the term well before Apple. In fact I was using it in a PC environment. At my job, which is a fairly large government agency, if we wanted to install software on our computers then we were told to "look in the appilcation store" to see if it had been approved. If it was then we could "order" the app and it would either automatically install at boot, install pending license validation, or hold for technician assistance. And often times amoung the more savy folks it would just be called the app store.

    So suck it Apple.

    • by bunratty (545641) on Wednesday March 02, 2011 @08:23AM (#35355824)
      Similarly, Apple used the term windows before Microsoft created Windows. If your argument that App Store is a generic term is valid, then Windows is also generic. That is Apple's point.
      • by commodore6502 (1981532) on Wednesday March 02, 2011 @08:28AM (#35355852)

        I don't see Microsoft suing anybody because they say they are using Ubuntu with a windows GUI.

        I can see Apple suing people to stop saying "app" or "app store"

        • Re:Are they kidding? (Score:5, Interesting)

          by bunratty (545641) on Wednesday March 02, 2011 @08:32AM (#35355898)
          But Microsoft does sue companies that make products with names similar to Windows. They sued Lindows [finnegan.com]. If Microsoft can successfully sue over the Windows trademark, why can't Apple successfully sue over the App Store trademark?
          • The court Decided that there was no infringement ...

            "After two and a half years of court battles, Microsoft paid US$20 million for the Lindows trademark, and Lindows Inc. became Linspire Inc."

            i.e. Microsoft did not win they just bought the opposition

          • They also got the widely used wxWidgets [wikipedia.org] toolkit to change their name from wxWindows. It was apparently amicable, but I MS requests are generally like the godfather's "offers".
          • by cgenman (325138)

            Don't shoot the Messenger Agent, but even a Student can see that Microsoft's Projects are all creatively named, protectable trademarks. My Word, your Office's Assistants and Publishers could easily tell you that. Movie Maker.

        • by itsdapead (734413)

          I don't see Microsoft suing anybody because they say they are using Ubuntu with a windows GUI.

          I can see Apple suing people to stop saying "app" or "app store"

          • Fullchester Windows - your one-stop-shop for double glazing!
          • Click on Ctrl-W to close all the windows on the screen.
          • Compatible with Windows.
          • Acme Linux - NOW WITH WINDOWS GUII!!

          If the courts do their job, then any claims about the first three of those should be thrown out with extreme prejudice, but anybody using the last one is definitely guilty of taking the piss and asking for a nastygram from MS lawyers.

          Likewise, if we could trust the lawyers not to go after references to "application stores" unless s

      • That isn't their point at all. Their point was that MS knows the dispute is BS because they have gone to GREAT lengths to try and protect "Windows." MS's cases ARE the legal precedent for why Apple feels it will this.
        • by bunratty (545641) on Wednesday March 02, 2011 @08:36AM (#35355930)
          Yes, the statement "if App Store generic, then so is Windows", is logically equivalent to (the contrapositive of) "Windows is not generic, then neither is App Store". Microsoft's success at defending the Windows trademark therefore is a precedent for Apple successfully defending the App Store trademark.
          • In a legal case, I would think that pointing out the past legal arguments of our opponent is a good tactic. Now if say RIM sued Apple, Apple couldn't use the argument but in this case, it was MS.
          • by uniquename72 (1169497) on Wednesday March 02, 2011 @11:42AM (#35358030)
            The 2 aren't equivalent at all. I'm not surprised Apple is trying to argue they are, but I'm pretty shocked that people on /. -- who generally get the whole IP thing -- can't see through it.

            Let me spell it out:
            "Windows" isn't actually a window -- it's an operating system. If they had called it "The Operating System" they'd have a hard time trying to keep anyone else from calling their OS "The Operating System."

            There's no comparison between "Windows" and "App Store". It's not about "this name has been used before"; it's about a trademark-able name vs. a generic name. If I call my car parts store "Car Parts" you'd still be able to refer to your store as a car parts store.

            It's called "descriptive trademarks" and you can read about it and its weaknesses -- assuming you can read -- here. [registerin...demark.com]
      • by PiSkyHi (1049584)
        I agree with Apple, both trademarks should be dismissed as generic.
      • by EMN13 (11493) on Wednesday March 02, 2011 @08:40AM (#35355960) Homepage

        The question, however, depends on context. Within the context of OS's, Windows is not generic - there's no generic Windows OS, just microsoft's. Outside of that context, microsoft can't assert its trademark: you can still sell windows (the glass panes) or software using windows (the GUI element) irrespective of the fact that an OS has that name.

        Similarly, Apple is allowed to call itself Apple despite the fact that an apple (the generic fruit) is a common word, and despite the fact that the name famously could cause confusion with Apple Records - context matters.

        Within the context of application stores, the term app store is rather generic. Comparing this the the mark Windows seems like a publicity stunt rather than a real legal argument - it's not convincing at all. If they were selling a phone called app store, or shoe polish or whatever - they'd have a case. But they're calling an app store (the generic term) app store (the trademark).

        That's like trying to trademark the word Apple for a particular brand of apples - good luck with that...

        • I agree with nearly everything you said, however... Apple did not compare it's mark to Windows. The /. headline did. Apple's response included a line saying that MS should understand the topic of trademarks because they have worked so much defending their mark Windows. Now, where we disagree is if the term "App Store" is generic or not. And that is what will ultimately what we will need a ruling on.
        • by beelsebob (529313)

          The question, however, depends on context. Within the context of OS's, Windows is not generic - there's no generic Windows OS, just microsoft's. Outside of that context, microsoft can't assert its trademark: you can still sell windows (the glass panes) or software using windows (the GUI element) irrespective of the fact that an OS has that name.

          Sure there is – Xerox coined the term windows for the little rectangles put on screen, and the term was well in use by apple when MS named their OS windows.

          • by zeroshade (1801584) on Wednesday March 02, 2011 @10:09AM (#35356862)

            You do realize that you completely missed the point right? In the context of Gui elements, windows was the term for the rectangle on the screen containing the application. However, in the context of an Operating System (not Gui Elements) there is no generic Windows, only the microsoft Operating System product which is named Windows. There is no generic term Windows when speaking about Operating Systems, if you are talking about them and say Windows, everyone knows what you are talking about.

            If you say "App Store" do you think people will instantly think of Apple's App Store, or do you think that they will think App Stores in general? Can someone tell you're talking about Apple's App Store without any clues other than the words App Store?

      • It's a bit different. you can trademark the same thing but in different areas. "windows" are generic objects in walls and objects within an application. however if i create a *program* and call it windows i'm infringing. if i create a new car and name it windows it's likely not to be confused with the software.

        same for "apple" and "apple" and "apple" one is a record label one is a computer another is fruit, once again calling above said car an "apple" its not likely to be confused with any of them. if i

      • by dskzero (960168)
        But Apple didn't made any OS named "Windows". That's the point.
      • But Apple's point is wrong.

        Apple used the term windows before Microsoft created Windows, that is true. However Apple was talking about Gui Elements, there was no product or operating system named Windows that would be trademarked. This is why using windows talking about Gui Elements does not infringe on the trademark. However, App Store is a generic phrase which represents the specific thing they are trying to trademark it for. Since the general public sees an App Store as any store that sells applications,

  • Secondary Meaning (Score:3, Interesting)

    by shentino (1139071) on Wednesday March 02, 2011 @08:18AM (#35355804)

    Windows, in its literal meaning, implies a hole in the wall, often filled with glass, for the purpose of providing visual penetration or airflow.

    Windows, in its secondary meaning, refers to an operating system written by Microsoft.

    "App Store" has no secondary meaning as far as I can see, as its literal and "secondary" meanings are identical.

    Now, losing a trademark on grounds of genericness, aka "being adopted by webster", is something else.

    For examples, I see "xerox" and "google" in danger in this way.

    • by mikael_j (106439)

      Well, there's another fairly generic meaning for the term "Windows", in reference to windows in a WIMP GUI environment. Microsoft basically named their GUI shell/OS after a generic user interface element.

      Now, as for "app store", it does have other uses but I'd have to say it's less generic than "Windows".

      • by ecuador_gr (944749) on Wednesday March 02, 2011 @08:35AM (#35355918) Homepage
        I think you are not seeing it correctly, the GP post is right. They did take a general user interface element and named their OS after it. That does not mean you cannot use "windows" to describe the GUI element, but you cannot ALSO name your OS "Weendows" or "Window OS" or whatever is confusingly similar to Windows. IANAL but as I understand it you could call your OS "Mouse Pointer" and trademark it, and no-one could use such a name for another OS. Now, what Apple is similar to trying to trademark "OS" as a name for their Operating System. Well, Application Store is the description of the item in question, and App Store is the short version used in many cases way before apple. I remember using the term myself.
    • Re:Secondary Meaning (Score:5, Interesting)

      by andrea.sartori (1603543) on Wednesday March 02, 2011 @08:30AM (#35355882) Journal
      On the other hand, "Apple" implies a fruit of the apple tree (Malus domestica L.), generally used for the purpose of nourishment.
      Ok, trolling, I just couldn't resist. And I see your point.
      However it always surprises me when people (Apple, Microsoft, you name it) waste time in scolding each other on such trivialities. (To anybody who is going to say trademarks are not trivialities as lots of money are involved etc... I am aware of all that. I just find it all meaningless.)
    • "Windows" also refers to GUI elements: rectangular areas of the screen that can contain other GUI elements...
    • by beelsebob (529313)

      Windows, in its secondary meaning, refers to an operating system written by Microsoft.

      You mean windows, in its secondary meaning, refers to small rectangles of screen real estate that can be moved around using a mouse, and existed for long before microsoft named their OS after them?

  • Generic Trademarks (Score:5, Insightful)

    by Sonny Yatsen (603655) * on Wednesday March 02, 2011 @08:23AM (#35355832) Journal

    You get a generic trademark when a product or service has become so ubiquitous in the field that the mark's name comes to represent the field rather than a specific company's product. (For example, escalators, or zippers, or Pilates.) I don't think Apple's argument that Windows is generic really flies very well. When the word "Windows" or "Microsoft Windows" are said, it creates a very clear image of what is being discussed - specifically, Microsoft's own operating system. However, when you say the word "App Store", I think that conjures up images of just about any sort of app stores that we have nowadays - Palm's, Blackberry's, Windows Phone's Android's, etc. Even though none of the other companies precisely use the term "App Store" in their product's name, the mark itself immediately conjures up the entire field instead of Apple's specific App Store service.

    • There are 7 windows on my screen right now -- what do you think "windows" refers to in that context? Let me assure you, I am not using any Microsoft software.
      • When you talk about Operating Systems, not GUI elements, it is very clear what you are talking about. As far as I know, Microsoft doesn't claim to have trademarked the word "Windows" with regards to the gui box to which it is commonly applied, only to their operating environment.
      • by Kr3m3Puff (413047)

        This reminded me of my good ole days in tech support (actually Apple). A customer called in with a problem and I said "ok, we need to start by closing all your windows" followed with an "OK" and the sound of the phone being set down. As I sat there in silence for a minute or two, he came back and said "OK, I closed them all now". I then said "I did mean all the windows open on your computer" followed with the response of "Ooooooooh, sorry."

        True, if someone walked up to me in the street and said "Windows"

    • by Culture20 (968837)

      when you say the word "App Store", I think that conjures up images of just about any sort of app stores that we have nowadays - Palm's, Blackberry's, Windows Phone's Android's, etc.

      I imagine Babbage's.

    • However, when you say the word "App Store", I think that conjures up images of just about any sort of app stores that we have nowadays - Palm's, Blackberry's, Windows Phone's Android's, etc

      That is rather Apple's point: the others are living off the goodwill created by Apple's innovation ("passing off", in the parlance). ie, Apple's argument is that it has become generic because others lifted it. And I believe US trademark law operates on a "use it or lose it" principle that requires trademarks to be defend

      • Also, I would bet a reasonable amount of cash that if you did a survey of non-geek smartphone users, most would think "iPhone" to the prompt "App store".

        I think the opposite is true. Geeks may know the difference between App Store, Marketplace, App Catalog, App World and Phone Marketplace, but most people don't.

    • However, when you say the word "App Store", I think that conjures up images of just about any sort of app stores that we have nowadays - Palm's, Blackberry's, Windows Phone's Android's, etc.

      I think that's true on Slashdot, but probably not if you wandered around a shopping mall asking people. This will hinge on what is determined to be relevant consuming public.

  • by MikeRT (947531) on Wednesday March 02, 2011 @08:23AM (#35355834) Homepage

    "App Store" by itself is inherently generic. It literally just means "place where apps are sold." Trademarking it is as ridiculous as trademarking "shoe store" or "electronics store." Windows, used in the context of a computer product, is not generic. Rather, it's a specific, well-known product.

    • by kyrio (1091003)
      I'd give you all of my mod points, if I could.
    • Re: (Score:2, Redundant)

      Actually, "windows" is also generic, since it refers to specific GUI elements -- I, for example, have 7 windows open right now, and I certainly do not use Microsoft's software. Additionally, I am using "X Windows," which has nothing to do with Microsoft's operating systems.

      One could argue that "the app store" is a specific and well known software repository. The problem, in both cases, is that the term was already generic before some large corporation claimed a trademark on it. Microsoft has managed t
      • by bws111 (1216812)

        Except that Microsoft does not claim trademark over the generic usage (the GUI elements), only the specific usage (a computer OS). Apple, on the other hand, is trying to claim trademark on the generic usage of a place where apps are sold.

    • by beelsebob (529313)

      However, app means "an OS X/iOS application" and has done for a long time –windows had exe to mean the same thing, linux users often used program to mean the same thing.

    • by Theaetetus (590071) <.moc.liamg. .ta. .todhsals.suteteaeht.> on Wednesday March 02, 2011 @09:34AM (#35356474) Homepage Journal

      "App Store" by itself is inherently generic. It literally just means "place where apps are sold." Trademarking it is as ridiculous as trademarking "shoe store" or "electronics store." Windows, used in the context of a computer product, is not generic. Rather, it's a specific, well-known product.

      That doesn't mean it's "inherently generic", but rather that it's "descriptive". There are four categories of trademarks - arbitrary or fanciful, suggestive, descriptive, and generic. Only the last is barred from protection.

      To show that "App Store" is not generic, but is instead descriptive, Apple has to show that it refers to a specific store - theirs. Consider the restaurant "Cafeteria", as well as "The Container Store" and "Staples". And to show it's got protectable secondary meaning in the minds of the consuming public, they must show that people hearing "App Store" think "Apple", rather than "Palm" or "Google". And I think they've got a good choice. Slashdot aside, the rest of the consuming public may not even know that other App Stores exist.

      • by Rennt (582550)

        Slashdot aside, the rest of the consuming public may not even know that other App Stores exist.

        People keep saying this - but consumers have been buying Android phones at a faster than iPhones, and everyone agrees that trend isn't going to end soon.

        • by Theaetetus (590071) <.moc.liamg. .ta. .todhsals.suteteaeht.> on Wednesday March 02, 2011 @11:46AM (#35358084) Homepage Journal

          Slashdot aside, the rest of the consuming public may not even know that other App Stores exist.

          People keep saying this - but consumers have been buying Android phones at a faster than iPhones, and everyone agrees that trend isn't going to end soon.

          "Everyone" being market analysts. They don't determine whether consumers actually think of "App Store" meaning Nokia, or Motorola, or any of those. If you Google "App Store", the entire first page - except for this news story - is Apple related. On the second page, you get three non-Apple hits, but they're labeled "Shopify App Store," "Samsung Store," and "Chrome Web Store". Flipping through the first five pages, I didn't see anything Android related except for a news story about Amazon's Android Store. Even the Wiki article for "App Store" refers to it as solely meaning Apple's App Store.

    • by halber_mensch (851834) on Wednesday March 02, 2011 @09:39AM (#35356538)

      "App Store" by itself is inherently generic. It literally just means "place where apps are sold." Trademarking it is as ridiculous as trademarking "shoe store" or "electronics store." Windows, used in the context of a computer product, is not generic. Rather, it's a specific, well-known product.

      "Window" is a graphical user environment concept, predating MS Windows by a good many years. X Windows predates Microsoft Windows by one year. Microsoft trademarking the term "Windows" forced the X Consortium to change the name to "X Window System". Pot, kettle, dark color, etc.

  • by Vapula (14703) on Wednesday March 02, 2011 @08:28AM (#35355862)

    AFAIK, Microsoft got rejected when they tried to register "Windows" as a trademark and went for "MS Windows" and "Microsoft Windows" which both are valid trademarks.

    Apple had trouble with it's name as Apple was used by a record company before... They got through it by agreeing to not sell music... Untile they started iTunes and the whole issue came back...

    "App Store" by itself is a généric name and should not be copyrightable (same for App Market and so on). But Apple can trademark "iTunes" and "Apple App Store" if they want...

    But they'll have trouble enforcing the "App Store" trademark...

  • That's stupid (Score:5, Insightful)

    by moonbender (547943) <moonbender@NoSPaM.gmail.com> on Wednesday March 02, 2011 @08:32AM (#35355896)

    That's stupid. "Windows" may well be generic, but it's a very different situation from "App Store". What does the App Store do? It sells licenses to executables (and implements an infrastructure to that end). Those executables can be referred to by a very small set of words: application, program; others are overly specific (tool, utility, game) or overly technical (executable, binary). The place where one sells things can also be referred to by only a few words: market, store, shop (and those names for physical places are routinely metaphorically extended to refer to virtual places).

    What I'm saying is that the name "App Store" is a fairly accurate description of what the App Store is. It's a natural name for it in the same manner that Red Truck is a natural name for certain kinds of large red vehicles. What's more, it's one of a fairly small set of accurate short names for such things.

    So what about "Windows"? Certainly, the graphical user interface objects you often deal with are also windows. But what does Windows do? Well, it's an operating system, etc. etc. It does not do windows, though, neither is it a window or windows. Maybe it's a windows operating system, a compound noun similar to app store? I guess that'd be a fairly daft (or, possibly, creative) way of referring to an operating system that contains a GUI: in which case it'd be acceptable to refer to OS X as a windows operating system. Doesn't work very well.

    So maybe the Windows trademark is generic since it's derived from a prominent/visible constituent object. But unlike app store, the trademarked name doesn't describe the whole thing. Instead it's is a case of metonomy, arguably a more creative process than compounding two very salient concepts.

    Why yes, I am a linguist. Which I guess makes me quite unqualified to participate in a legal discussion. But sometimes it's fun to talk about these things as if they were bound to reason.

    • by Rob Kaper (5960)

      But what does Windows do? Well, it's an operating system, etc. etc.

      No, the underlying operating system was single-tasking MS-DOS on top of which Windows offered... windows for multi-tasking. Just like the X Windowing System did for UNIX.

    • by c (8461)

      > But unlike app store, the trademarked name doesn't describe the whole thing.

      Presently, no. Back when "Windows" was just graphical shell sitting on top of MS-DOS, it wasn't entirely inaccurate to say it was just a window system, conceptually comparable to the X Window System.

      It grew, admittedly. But I wouldn't argue they should have renamed it anymore than I'd suggest iTunes is no longer the correct name for device synchronization software.

      • by omnichad (1198475)

        Even then, "Windows" is more of a creative name than "Window System." If they had called it "Window System" and tried to trademark that, they'd have a smaller chance of getting it.

    • by KeithJM (1024071)
      Windows is not a description of the OS, it's a description of the UI. The point Apple is making is that it's a description of EVERY modern UI, and it's not one that Microsoft invented. Everyone's heard the story of Xerox's windowed UI, followed closely (in no particular order) by Apple, various Unix/Linux UIs and Microsoft. The generic description of any modern UI is "a collection of windows." You COULD come up with another term for what those boxes on the UI are called, but the term for them was windows l
    • So maybe the Windows trademark is generic since it's derived from a prominent/visible constituent object. But unlike app store, the trademarked name doesn't describe the whole thing. Instead it's is a case of metonomy, arguably a more creative process than compounding two very salient concepts.

      Why yes, I am a linguist. Which I guess makes me quite unqualified to participate in a legal discussion. But sometimes it's fun to talk about these things as if they were bound to reason.

      The legal terms you're looking for are "descriptive" vs. "suggestive". They represent different classes of marks, specifically those which need to show acquired distinctiveness, and those which have inherit distinctiveness. "Generic" marks are ones which describe an entire class of products rather than a specific one.
      So, "windows" describe those things you see through, and also describe those things that applications fill with content. But "Windows" is more suggestive than descriptive, since while related,

  • We, the geeks, know that there is only One True Windows System [wikipedia.org]. :)

  • Apple would have a point only if Microsoft had called their OS "Operating System". Calling their OS "Windows" after a major element of the GUI is more like trademarking a car "Engine" or "Trunk".
  • Windows tried to sue Lindows for violation of their trademark, but the court said that Windows was a generic term and the trademark only were valid for "Microsoft Windows". So, yes! Windows is generic, but I guess that was not their only defense....

  • by dkleinsc (563838) on Wednesday March 02, 2011 @08:46AM (#35356010) Homepage

    Please? There's a reason why you can't place a trademark on normal everyday words as "intellectual property".

  • by Charliemopps (1157495) on Wednesday March 02, 2011 @09:04AM (#35356164)
    My vendor had no problem just using a different name for their store and don't have a problem with people finding it. They call their store "Warez"
  • by lilfields (961485) on Wednesday March 02, 2011 @09:06AM (#35356196) Homepage
    The huge difference is that Microsoft doesn't actually sell actual windows, they sell software. Just like Apple doesn't actually sell apples they sell computers. An App Store sells apps...that's the difference here. If Windows were the brand of actual windows it wouldn't be a trademark because it would be too generic. This is really a really stupid argument.
  • With trademarks we get such great company, product, and website names as (compiled from the web):

    Doostang, Twubs, Ftags, Blews, Opodo, Putacart, Plurk, Flickr, Cuil, Awind, Twitter, Flizo, Fluidux, Exaact, Galxz, Linqto, Tilili, or E-On

    This alone should be reason enough to stop this idiotic legislation and get rid of trademarks altogether. Seriously, please stop this madness! These name abominations hurt everyone's eyes and ears.

    • by bws111 (1216812)

      If there were no trademarks, how would you ever know what you are buying? Anyone could slap together a phone and call it an Apple iPhone. Every car could be a BMW. Every refrigerator a GE.

  • by kikito (971480)

    Apple. You hardly can get more generic than that.

No man is an island if he's on at least one mailing list.

Working...