I generally agree with Microsoft that the term “app” is generic – meaning it is a general word used commonly and not associated with any company or brand. Certainly the term “killer app” has been around for decades so the use of the term “app” is not new. The term “store” too is generic so it is tough to consider “app store” to be anything but generic.
It is worth pointing out I don’t recall the term “app store” to be exceedingly common before Apple started using it.
In the nineties I was involved in a preliminary injunction suit where a competitor sued us because the name of one of our magazines was something they didn’t like. Incidentally we had a registered trademark on the term but we were still sued. Over a million dollars later the plaintiff settled with us because they weren’t able to prove any confusion.
In our lawsuit the company which sued us had the burden of proving there was confusion between our two brands. Based on surveys the company did, they could not prove any confusion and this is why they settled.
This suit taught me a tremendous amount about the US legal system and helped shape much of my business ideas and actions in the future.
Not to gloat but the company which sued us subsequently stopped printing the publication and changed its name and went through bankruptcy. I often wonder if they had focused more resources on serving customer and less on lawyers, would they have avoided the bankruptcy.
Although I am no attorney I learned in the suit that McDonalds owns a family of brands which begin with “Mc” so if you launch a “McVeal” sandwich in your restaurant expect a potential lawsuit. You could make the argument that Apple has a family of brands which beginning with “i” but they certainly weren’t first which is why you can buy iPod accessories from iHome.
I also learned that Lexis the information company sued Lexus the car company because of a confusingly similar name but the courts ruled that you can’t confuse companies in different industries – in other words, you don’t put a child seat in an information service.
Perhaps most interesting is you have to protect a brand from becoming generic which means Xerox has to run ads and launch lawsuits to ensure their trademark is not used generically. This is why Rollerblade had to stop competitors from using the term rollerblade generically – this is how the term “inline skating” came about. If you don’t protect your mark from becoming generic then when you eventually sue someone they can show the term is used as a generic mark.
One common way of solving disputes such as the ownership of “App Store” is a settlement where companies agree to use their company name in association with a product. Such as always making sure the word “Chevy” precedes the word “Volt.” Or in this case, “Microsoft App Store” Vs. “Google App Store” Vs. “Apple iTunes App Store,” etc.