The Great Language Landgrab... A Result Of Misunderstanding Trademark Law
from the descriptive-uses dept
We've covered the ongoing legal fight over who can use the phrase "app store" to describe their store for apps, and the NY Times is highlighting how there's a "great language landgrab" concerning this and other similar legal battles. But the real issue is that this is simply an abuse of trademark law -- an abuse brought on by a few decades of people falsely telling the world that concepts and words can be "owned." Trademark law, of course, was never supposed to be about "ownership." It was always designed as a consumer protection statute, to avoid consumer confusion. It's only in the last few decades, as lawyers worked hard to expand the definition and coverage of trademark law... and to lump it in with copyright and patents by calling it "intellectual property," that this idea of "ownership" became more common place. And, once people think they can own such things, it's inevitable that they try to expand what they can "own" via this tool. When it comes to trademarks, the USPTO should have put an end to this early on by simply barring any registered trademarks on obviously descriptive terms like "app store" or simple prefixes and suffixes like "book" for "Facebook." Instead, we're left in a situation where we see regular lawsuits from companies who are simply trying to cause trouble for other companies, in a way that has nothing to do with preventing consumer confusion.
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Filed Under: free speech, language, trademark
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Owning language
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Health Club Claims Ownership of "Ab Store"
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;)
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Doesn't your very article explain WHY Apple should be suing??
Before Apple created the App Store there was no such thing, they created it, they named it, and they put it into production. Just because it became so popular that it also become a generic household name does not justify someone else using the name.
Apple did not take a generic term and trademark it, they created a product, then named that product and then trademarked it. The public turned that name into a generic term.
No different that Kleanex, Q-Tip and the thousands of other "Generic" terms which started life as a product name.
To take matters further by your very own definitions, Amazon and Google aren't just using the name, they have created an IDENTICAL product with IDENTICAL uses. They can't even argue that they are using the term "App Store" for something un-related to Apple's App Store. Their only claim is that it is for a different product.
But it is also only a matter of time before Apple will also be forced to allow other "App Stores" to sell Apps for their products too, what they do Amazon and Google get to use the term Apple App Store too?????
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Re: Doesn't your very article explain WHY Apple should be suing??
I'm not sure if the "App" in App Store is shorthand for Apple or Application, but regardless in my mind it's tied to Apple Computers.
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"App store" is just a description of service provided, so having a trademark on that would be akin to being able to trademark "Food store" "bike shop" "bar" "restaurant"
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Lower protection for common words
Monster Cable is the poster child for trying to take over the word "monster." For example, if I open a company and call it "Pepsi Trucking" people might reasonably assume that the company is a subsidiary of Pepsi/Frito Lay and that it hauls around sugar water and salty corn chips. On the other hand, if I name it "Monster Trucking" it isn't reasonable to assume that I carry around overpriced cables and cease and desist orders.
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Re: Doesn't your very article explain WHY Apple should be suing??
Yeah, actually, they did.
Apple is trying to *create* confusion in the marketplace by insisting that 'App' is somehow a contraction of 'Apple', when it in fact has been a common and widely used abbreviation of 'Application' for at least a decade.
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Re: Re: Doesn't your very article explain WHY Apple should be suing??
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Second, trademark isn't about ownership, never was and never will be. It's about allowing a specific phrase or name to be limited in it's commercial use to a single entity, to avoid confusion. You are attempting to create all sorts of confusion here yourself be using "ownership" over and over again in the post, when you know there is no "ownership" angle.
Where you should be going with this is that Apple is too late to the game. "App Store" has been used over and over again already, it has already reached (at least in my mind) the level of being a generic term. Trademarks generally should be requested before something is used in trade, not after it has been in use for a while. What Apple is trying to do is take a now commonly used term and claim it as their branding, which is the inappropriate use of the trademark law.
The other part is that the error made by some companies (as someone mentions about Monster Cable) is that companies seem to feel that they have some control over each of the words in the trademark. Apple seems to be acting as if they will have some magic control over "app", which just isn't supportable.
Those are probably your better arguments. Now I will wait for you to come back and say that the NYT article is without foundation, and is misleading, and how you have caught them at it before. Then we can all scratch our heads wondering why you keep pointing to a newspaper that you think is failing and wrong often enough.
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Re: Lower protection for common words
I thought they switched to a litigation-only business model a few years ago?
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Re: Doesn't your very article explain WHY Apple should be suing??
That is what Apple has done.
In the software world (at least in the North East US) "App" has been a common abbreviation for "Application" for a couple of decades now. Putting "Store" on the end of that sounds pretty descriptive to me.
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Re: Re: Doesn't your very article explain WHY Apple should be suing??
That shouldn't matter.
If I said "Book" was short for my new made up word "Bookinglydeliciousbooks", is it ok for me to trademark "Book Store"?
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Re: Re: Re: Doesn't your very article explain WHY Apple should be suing??
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Coffin Nail
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Quite unlike patents and copyrights, trademarks are not alienable en gross. It is a longstanding rule of law that trademarks may only be alienated (i.e., sold) as a part of the sale of the underlying business with which it is associated. Because of this, it is inaccurate to equate trademarks with "property". Its true character is as an integral part of the goodwill associated with a business, and the two may not be separated and sold off as piece-parts. This is the antithesis of general property principles. In fact, separating a trademark from the associated business, and then attempting to sell it all by itself has long been a basis for trademark/service mark invalidation.
The above is consistent and in keeping with the notion underlying trademarks that their sole purpose is associated with the avoidance of customer confusion as to the source of goods and/or services.
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Re: Doesn't your very article explain WHY Apple should be suing??
By the way.
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Re:
Though I can't be sure what Mike meant with the words he typed, what I got from the article is companies have this "sense" that they should be allowed ownership of words or control of them. What they really want is people to believe that they own a certain word or phrase.
That whole NYT thing you speak about.....you might have something there.
My 2 cents.
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However, where the name is generic it is usual to require that there is a mark (ie logo) which is distinctive as well.
And trademarks are always (as far as I know) assigned for specified groups of products and services.
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TM law is about unfair competition, not consumer protection
While I agree with you in the end, I disagree with your characterization of trademark law as being intended for consumer protection. Preventing consumer confusion is a crucial part of it, but I would say that is ancillary to the true purpose of trademark law, which is to prevent unfair competition between businesses. As with any law though, a lot of businesses treat trademark law as an instrument for pursuing whatever end they want. So you get abuses like companies trying to claim that a generic term is their trademark to prevent other companies to use the term (which wouldn't really be unfair competition because consumers aren't confused -- in fact, consumers are potentially confused when a company claims exclusive rights to the term), or companies trying to use their trademarks to stifle free speech (which, again, wouldn't be unfair competition unless it confuses the public about the source of the product or service).
The history of how the law has developed is very clear on this. We have lots of laws intended to protect consumers, but trademark law is merely intended to protect businesses from other businesses that might steal their customers by confusing them.
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Re: Re: Doesn't your very article explain WHY Apple should be suing??
App: an application; application program
Recognized as a word itself.
Like you said, Grocery Store.
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Re: Re: Doesn't your very article explain WHY Apple should be suing??
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Re: Re: Doesn't your very article explain WHY Apple should be suing??
"App" is a generic term (abbreviation) that has been used for over 25 years. Originally used in the WARZ market to distinguish between a game and an APPlication. They took a generic term for a generic thing and tried to make it non generic. If they actually called it Apple Store instead of Apple App Store and others tried to call there store the Apple Store and were selling applications in it they might have a case.
To show that App is an old term check out:
http://dictionary.reference.com/browse/app
When did Apple start the Apple App[lication] Store? Answer July 10, 2008
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Re: Re: Lower protection for common words
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Re: Re: Doesn't your very article explain WHY Apple should be suing??
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Re:
Because he can and ppl around here like stupid questions from ACs.
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Re: TM law is about unfair competition, not consumer protection
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USPTO
Are you kidding? You think the USPTO might do something like that? Not likely. The more the USPTO can expand the idea of "intellectual property", the more important and powerful they become.
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Re: Re: Doesn't your very article explain WHY Apple should be suing??
I'm not sure if the "App" in App Store is shorthand for Apple or Application, but regardless in my mind it's tied to Apple Computers.
Yeah, I know what you mean. Another example: Whenever I hear the terms "automobile", "car" or "truck", I immediately think of Ford. Therefore, it's obvious, "in my mind" at least, that anyone other than Ford using those terms is infringing upon what should rightfully be Ford's. I wonder if Ford could get ICE involved in some takedowns and seizures.
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Re: Re:
Mike's fascination with the NYT the last couple of weeks suggests he should stay away from it. But then again, he hates on the Hollywood movies, and subscribes to Netflix. So clearly it's "do as I say, not do as I do"... ;)
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Re: Re: Re: Doesn't your very article explain WHY Apple should be suing??
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Re: Doesn't your very article explain WHY Apple should be suing??
Should I be worried some old bearded guy from the 80's is going to come sue me for my business?
"App Store" is descriptive. "Computer Shop" is descriptive. "Muffler repair" is descriptive.
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Re: Re: Re:
Just for fun, even though I've pointed this out directly to you in the past and you still ignore it...
1. I don't hate Hollywood. I actually like Hollywood quite a bit.
2. My complaints are in how the companies there have not done a very good job adapting. I want to help them adapt better so they can continue to make movies I enjoy.
3. I don't, and have never, subscribed to Netflix, even though you keep claiming I do.
Why do you lie?
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Dilution
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Re:
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Re: USPTO
In judging TM applications at the PTO level virtually all presumptions are cast in favor of the applicant and doubt is resolved in favor of registrations.
So, it is not the PTO that needs to be dealt with but the rules and regulations under which the Examiners operate.
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Re: Dilution
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Got any good sources
I've recently been in a discussion with an educated and reasonable gentleman who mostly agrees with me on the philosophy of imaginary property. However, he made the claim that trademark law's purpose was not, as you claim, to protect the consumer, but instead to protect the producer. I pointed out that a quick search of "trademark law purpose" reveals a page worth of sources all stating the purpose is consumer protection. However, this reasonable gentlemen responded with "I do disagree about the original purpose (not any modern stated purpose) of trademark, but that's of minor consequence. Thanks for the research regardless".
Do you know of any sources you could recommend that might change this gentleman's mind? Perhaps a source that mentions the justifications the folks who actually proposed original trademark laws in the US used, since he seems to think that somehow modern sources are not talking about the original purpose of the law and instead talking about how the law is used today.
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Re: TM law is about unfair competition, not consumer protection
The argument that this is about the TM holder is based on the confusion that because I am hurt and because damages are measured with reference to me, the law must be about protecting my interests. This leads to a sense of entitlement and claiming property interests in the TM.
In point of fact, it is and always was all about the consumer.
Although I doubt I will see it in my lifetime it would be nice to see the courts revisiting the entire foundational concept. They have done it before (e.g. the Dred Scott decision). However, given that the US is so reliant upon "IP" as a basis for its GDP, I don't hold out much hope. After all, the Dred Scott case was decided at a time (1857) when slavery still underpinned the US economy and it took until the 1950s to rectify.
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