Back in 2008, Apple, Inc. filed an application for trademark for “APP STORE” (Serial Number 77525433). Who knew that it would present a wonderful opportunity for us to discuss disclaimers and the distinction between descriptive and generic marks? Thanks, Apple! And thank you, too, Microsoft! But I’ll get to that in a bit. We need to start with a discussion of what a disclaimer is, how a mark can be merely descriptive or, worse, generic, and what it means to a trademark owner and the public. A very thorough discussion of disclaimers, merely descriptive marks, and generic marks can be found in the Trademark Manual of Examination Procedure (“TMEP”) §1200 and 15 U.S.C. §1056; my explanation is definitely the abridged version. Let’s start with descriptive marks, shall we?
Matter that “merely describes” the goods or services on or in connection with which it is used is not registrable. Ever. This is because we don’t want to prevent a business owner from being able to describe her goods or services and we don’t want to let a single person inhibit competition in the marketplace for a particular good or service. A descriptive mark describes an ingredient, quality, characteristic, function, feature, purpose, or use. It doesn’t have to describe all of the characteristics of a product; it just has to describe a particular attribute. So a person who wanted to claim ownership to the word “BLUE JEANS” for her blue jeans company would be out of luck because allowing that would prevent other blue jean selling companies from telling their customers that they sell blue jeans. Levis® brand blue jeans? Totally OK. Blue Jeans brand blue jeans? Not a chance.
But just because you can’t claim exclusive ownership of a descriptive term doesn’t mean you can’t use it in your trademark. You just can’t assert rights apart from the mark’s non-descriptive elements. A disclaimer is just a statement that no rights are being asserted in the disclaimed term by itself, but only for the mark as a whole. Names of places and words like tortilla, computer, coffee, shoes, etc. are good targets for a disclaimer. The Trademark Office can (and often does) require a disclaimer as a condition of registration if the mark is merely descriptive. So if your proposed trademark is “CRUMPY CLOTHING”, the Examiner can make you say “No claim is made to the exclusive right to use CLOTHING apart from the mark as shown.” No disclaimer, no trademark. Done deal. In our fact pattern, Apple’s 2008 “APP STORE” application includes a disclaimer to the word STORE. This is important, because now the issue turns on exclusive ownership of the word “APP”.
Fast forward from that disclaimer in 2008 to present day. The Apple application for “APP STORE” (The “App App App”, if you will.) is currently in opposition proceedings at the Trademark Trial and Appeal Board (“TTAB”). Here’s the skinny in 4th grade prose. Back in ’08, Apple opened up its first app store. Shortly thereafter, it filed a trademark application for “APP STORE” in the United States Patent and Trademark Office (“USPTO”). The Examiner said “No way! That mark is descriptive!” Apple said “Nu-uh!” Examiner said “Yes huh!” Apple said, “Nu-uh!!!”, and appealed. Examiner said “OK, fine” and published the application for opposition. Then Microsoft said, “No way! That mark is descriptive!”, and filed an opposition. Now we wait to see what happens. In the mean time, lets wax theoretical for a bit, shall we?
Take a look at Application 78907865 for the proposed mark “APPWORLD” by Salesforce.com. It was filed back in 2006. The first Office action rejected the application because, you guessed it, APPSTORE is merely descriptive. There was a request for reconsideration, subsequent publication for opposition, and then *poof!*, Salesforce expressly abandoned the application. This was in late December, 2008. Incidentally, Salesforce.com also used to own the domain name appstore.com. Apple owns it now. There was another application for “APP STORE” back in the late 1990’s (Serial Number 75542841 filed by Sage Networks, Inc.). It went abandoned in early ‘01 for failure to provide a statement of use. Incidentally, there was a petition to revive in 2002, which was denied. ¬ All three proposed marks are/ were in International Class 042 for computer software applications.
The litmus test in determining whether a trademark is generic or descriptive is to look to whether competitors need to use the term to describe their good or service. If they do, it’s likely descriptive and maybe even generic. For example, a descriptive mark would be COMPUTER STORE. A generic word would be COMPUTER. Good luck claiming ownership to either. Words like these can’t function as a source indicator, no matter how much we may want them to. They are not registrable. Period. End of story. This is such an important concept in trademark law that the Trademark Act even provides for the cancellation of a registration of a mark at any time if the mark “becomes the generic name for the goods or services, or a portion thereof, for which it is registered….” Yo-yo (my personal favorite), escalator, aspirin, trampoline, and a bunch of others found this out the hard way. Not only can you not register a generic word, but you can lose your rights in a word if it later becomes generic. We call it “death by genericide”. So our inquiry here is can a computer software application company adequately describe their goods without using the word “app”, and if even if they can, what meaning does the consuming public currently attribute to that term?
Microsoft argues that the term “APP” is generic and that Apple is unfairly preventing other companies from referring to their application retail stores as app stores. Apple says the term “APP” is arbitrary (opposite of generic) because even though the term can sometimes be used as a slang abbreviation for the word “application”, the term has many other “incongruous meanings”. Here’s the thing. Generic terms are terms that the public understands are just a name for some good or service. Ask yourself what you think of when you hear the word “app”. Do you think “software application” for whatever flavor of PDA or computer you have or do you think “Apple, Inc. software application for my Apple, Inc. product”? I think the better argument in this context is that even if the term “APP” was dubiously capable of being a source indicator for Apple at one point in time, it no longer is. It has moved from merely descriptive to generic at this point.
Just for grins, I typed “define: app” in a commonly used Internet search engine. Guess what? Most of the definitions refer to some sort of software for a computer or PDA. My personal favorite was “App is really a generic term for any standalone bit of software.” I didn’t find a single reference to an Apple created bit of software as part of a definition- just software in general. Go figure. Besides, what would you call a store that sold software apps? “The store that sells small software application programs designed to accomplish a certain task on an individual’s computer or PDA, but those programs are most certainly not apps, even though that’s what you’ve always called them”? Boy, that’s catchy. It seems pretty straightforward that preventing a person from describing their application store as an app store is a little, uhm, stifling.
There’s even a test, courtesy of the Federal Circuit, to make it real easy for us. Ask: (1) What is the class of goods or services at issue; and (2) Does the relevant public understand the designation primarily to refer to that class of goods or services? H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986). The Marvin Court said “[t]he critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be registered to refer to the genus of goods or services in question.” Id. Trademark applications for “APP STORE” all in the same International Class for software programs? Check. Boolean Internet search showing several definitions of the word “app” saying that it is a term for a software program? Check. I think we have our answer.
Maybe the Examiners were wrong back in 2001 and maybe even in 2008. I don’t think so, but maybe. But even if “APP” wasn’t descriptive back then, it certainly is now. I’d be willing to bet it’s generic at this point. Merriam-Webster defines “APP” as an abbreviation of the word “application”, and “application” as a computer program. Apple might be able to overcome this if they could somehow show that the consuming public attributes “APP STORE” only to Apple. It’s a stretch, but it could be possible; the term “App Store” yields a fair amount of Apple hits. And Apple is still pretty popular for apps. But Google (Google Apps), Blackberry (App World), HP (App Catalog), the US Government (www.apps.gov) and lots of other folks all describe their various software applications as apps. Oh, and Macworld Magazine used the term as a descriptor in an article featuring an interview with Steve Jobs. That doesn’t help their cause much.
Final thought- you can’t disclaim two generic terms and create a trademark. Much like disclaiming “BLUE” and “JEANS” won’t operate to create Blue Jeans brand blue jeans, Apple can’t disclaim “APP” to create App Store brand app store. Sorry, kids, but if you ask me, “APP” as a source indicator has gone the way of the yoyo.