From Apple: Why We Need An ‘App Store’ Trademark

Apple (NSDQ: AAPL) wants the term “App Store” to refer only to its own App Store, and not be a generic term for any company’s online shop for mobile-device software. In January, Microsoft objected, filing papers at the U.S. Patent and Trademark Office arguing that the term is generic and Apple shouldn’t be granted a trademark on it. Now Apple has filed a response, explaining why the term App Store should belong to it alone.

The crux of the argument is that there are lots of other “noun plus store” constructions, both online and off. For example, The Container Store is trademarked, and Apple lawyers found plenty of others you may not have heard of, including The Paper Store, The Radiator Store, The Shade Store, and Swag Store.

As to whether the mark is generic, Apple says it isn’t, and notes that plenty of other “arguably descriptive” terms have been trademarked for particular services, including “Books On Tape,” “Vision Center,” “Cash Management Account,” and “The Beef Jerky Outlet.” (Of course, one could just consider those examples evidence of the fact that trademark owners have been overreaching for a long time now, with little or no resistance from the Trademark Office).

In addition, Apple gets in a dig at Microsoft (NSDQ: MSFT), saying the company should really be familiar with the concept of “genericness” because of its long trademark battle over the term “Windows.” Which, of course, is still trademarked.

The full document is available at TechFlash, which first reported the story.