Imagine a friend asking you, “Hey, where did you get that app where you chuck the birds into the tower?” Would you first ask what kind of phone or service he or she had, or would you simply say,  “Oh, you mean Angry Birds? Go onto the App Store and look for most popular.” The APP STORE is a familiar name in most mobile phone users minds.  However, is the APP STORE synonymous with Apple or rather, just a typical name for mobile marketplaces in general? That is the question currently facing Apple as it tries to trademark APP STORE with the United States Patent and Trademark Office (USPTO).

Apple wishes to acquire the name as a distinctive mark for a service that offers both free and paid applications for download on a mobile phone or table PC device.  If Apple should succeed in obtaining the mark, it would become an even greater giant in the mobile industry by having rights to a mark that truly personifies the essence of the mobile phone/table PC application business.  This would be a huge move for Apple since competitors would be forced to come up with different and possibly less catchy names for their own respective mobile phone application marketplaces.  “Application hub” or “app finder” does not have the same ring to it.  Moreover, competitors would be precluded from describing their own services as “app stores” and maybe even “application stores”, due to potential trademark infringement or dilution claims.

Due to such a potential advantage for Apple, competitors such as Microsoft are opposing Apple’s trademark registration of the mark.  These competitors main argument is that the mark APP STORE is generic, meaning it is a common term that has been placed in the public domain to signify application marketplaces.  As Microsoft’s lawyers contend, “Any secondary meaning or fame Apple has in ‘App Store’ is de facto secondary meaning that cannot convert the generic term ‘app store’ into a protectable trademark…Apple cannot block competitors from using a generic name.”  While potentially trademarkable when first introduced, the mark has become generic over time.

Is the mark generic? Apple’s competitors do make a valid point that the name APP STORE may be too common and non-distinctive to trademark.  After all, software application platforms launched by such developers as Palm Inc., RIM, and Nokia have been described as “application stores” or “app stores”.  Also, the competitors contend that many mobile business websites refer to such application platforms as “app stores”.  Microsoft has even gone as far as to say that Apple’s CEO Steve Jobs used APP STORE in a recent interview to refer to the Android market.  Perhaps Apple was not proactive enough in protecting its rights to such a mark when it first launched the App Store back in 2008.  While the mark is important and sought after, the main issue here is that it is not strong in a truly distinctive sense.  It is not arbitrary or fanciful in a way in which Apple would gain the most legal protection.  Apple’s best argument would be to assert that the mark is descriptive of the service by which users can purchase applications, but the mark can become distinctive through secondary meaning.  Apple would then contend that it has tried to build up secondary meaning of its association with the mark through several public endeavors, while simultaneously limiting the use of the term APP STORE by outside competitors.  One such activity has been the launch of the “App Store Twitter Feed”, which many commentators believe is an effort by Apple to further strengthen the mark within the minds of consumers, especially while the USPTO is deciding the trademark issue.

The USPTO will have to weigh both sides of this argument when determining the APP STORE mark’s place in the legal world.  While rights to the mark are being decided, what is the consumer left to do? As far as Apple is concerned, you can say you love Fruit Ninja, but you had better not tell your Android user friends that they could easily download the game from their app store!