Apple's App Store and a little trademark history

Apple's App Store and a little trademark history

Summary: Apple is suing Amazon.com over use of the App Store trademark. Apple was granted the App Store trademark by the U.S. Patent and Trademark Office, but Microsoft is opposing the registration. This trademark fiesta started with Salesforce.com.

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Apple's App Store trademark began with Salesforce.com.

Bloomberg reports that Apple is suing Amazon.com over use of the App Store trademark. Apple was granted the App Store trademark by the U.S. Patent and Trademark Office, but Microsoft is opposing the registration.

It's a lot of hubbub for a trademark that was given to Apple by a former intern turned CEO. Way back in 2006---two years before Apple made the App Store term a household named---Salesforce.com outlined its AppStore vision. Salesforce.com's idea went like this:

Customers will be able to use AppStore as a single source for trying, buying and deploying on-demand applications on the AppExchange. AppStore will provide a complete package of commercial services and revenue-sharing programs for developers and partners, who will be able to use AppStore as a global distribution network to market, sell, invoice and deliver the applications they have built using the Apex programming language and platform and made available on the AppExchange.

So what happened? Salesforce.com CEO Marc Benioff recapped the App Store tale earlier this month at its CloudForce conference in New York. Speaking at a press and analyst lunch, Benioff made the following points:

  • Salesforce.com had the AppStore dream.
  • But thought AppExchange was a better term and sounded more enterprise-ish.
  • Benioff, a former Apple intern, ran this AppExchange idea past Steve Jobs, who informed Salesforce.com that it needed scale to become a real platform.
  • Notes were swapped.
  • Benioff, who idolizes Jobs and was grateful for a little help forming a business idea, gave Apple the www.appstore.com URL and the rest is history.

The lesson: One man's castoff is another man's zillion dollar idea.

In any case, the flap over the App Store trademark is quite the history lesson. If you scan the USPTO site you'll find:

Salesforce.com applied for a trademark in 2006, but dropped it in 2008.

From the 2006 application:

Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services. (15 U.S.C. Section 1051(b)).

International Class 035: Operating on-line marketplaces for buying, selling and exchanging computer software and on-demand applications International Class 042: Application service provider (ASP) featuring computer software in the field of business project management, business knowledge, information and asset management, customer relationship management, sales, marketing, e-commerce, electronic messaging, and web site development.

In Dec. 2008, Salesforce.com said:

The applicant hereby expressly abandons the application for trademark registration made under the serial number identified above.

Bottom line: Salesforce.com was rebuffed because its Appstore was merely descriptive (actually I would have turned the company down over the third grade logo on the documents). I'm pretty sure Benioff had access to even the most mundane graphic design software.

The effort to trademark Appstore goes even farther back. In 1998, Sage Networks applied for the trademark only to abandon it in 2000.

Despite this history, Apple filed for a trademark for its app market in 2008. Apple has a disclaimer that it is not claiming a right to the word "store." In a nutshell, Apple is claiming a trademark because it gave the word "app" meaning. You can see how this word app---short for application---has a few tech rivals flustered. There are a bevy of appy sites---RIM's App World, Google Apps, HP's App Catalog and the government's App.gov to name a few.

Topics: Apple, Enterprise Software

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29 comments
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  • prog store

    ms should go with prog store, they've always had programs and apple's always had applications.
    sportmac
    • RE: Apple's App Store and a little trademark history

      @sportmac wouldn't that be the exe store? Sorry, but "apps" have been used for years in Java and other venues. The fact that Apple was able to patent this is remarkable.
      dheady@...
      • RE: Apple's App Store and a little trademark history

        @dheady@...
        It's no more "remarkable" than "Windows" being trademarked by Microsoft.

        After all we see windows everyday in every home and building. In fact windows are MORE prevalent as a generic term than app is.

        So do you feel that "Windows" should be taken away from MS, and can any company now call its own software "Windows" freely?
        Harvey Lubin
      • RE: Apple's App Store and a little trademark history

        @dheady@... apps today is used differently. You have to take into account the CONTEXT of how it is used. When you hear apps today, people think of mobile applications - not of the generic term of computer applications. If you don't take things into context, then a Mac is a PC - which of course it is, but no one you know would refer a Mac as a 'pc'.
        veggiedude
      • RE: Apple's App Store and a little trademark history

        @dheady@... Call it a "software repository", then see if we Linux folks suddenly change our tune on patents, copyrights and trademarks. ;-) :-)
        jgm@...
    • That's pretty much BS

      @veggiedude

      considering Apple Computer's fight with Apple Records.

      >>You have to take into account the CONTEXT of how it is used.<<
      sackbut
  • RE: Apple's App Store and a little trademark history

    Mr. Jobs learned his lesson about both trusting competitors and patents after Mr. Gates got away with the family jewels and created "FrankenMac", aka "Windows" basing the whole thing on his access to Apple's UI designs. Can't blame them for being patent happy.
    It would seem that they have an issue if they selectively defend it, however. Allowing the various vendors to use some variation of AppStore and only targeting major competition like Amazon won't stand up in court very long.
    dheady@...
    • Get over it already

      @dheady@...
      [i]Mr. Jobs learned his lesson about both trusting competitors and patents after Mr. Gates got away with the family jewels and created "FrankenMac", aka "Windows[/i]

      With Job's prior history he learned a lesson alright - how to steal and cheat your friends.

      He's gotten away with it for this long, why not keep trying?
      Will Farrell
      • RE: Apple's App Store and a little trademark history

        @Will Farrell
        Right church, wrong pew. Microsoft is the company with a long history of stealing other?s ideas. The started by stealing the GUI Apple created, then went on to Screw a partner (Spyglass), and the cycle has repeated itself many time. Steal, cheat, repeat.
        Rick_K
    • RE: Apple's App Store and a little trademark history

      @dheady@...

      I don't blame companies at all for being patent happy. Business is, after all, about competition, and holding stupid patents is more useful than not holding stupid patents.

      What I do blame are the absurd patent and copyright laws that allow companies to claim ownership over something like "app store". Hopefully that last patent bill can take some of the stupidity out of patents at any rate but we seem to be trending the wrong direction on copyright.
      SlithyTove
      • RE: Apple's App Store and a little trademark history

        @SlithyTove

        Before you rant, you should learn the difference between patents, copyrights and trademarks.

        Do you also find it absurd that companies hold the trademarks for All, Cheer, Dove, Ivory, Cascade, Mustang, Tabasco, Focus, Fiesta or Windows?
        msalzberg
  • RE: Apple's App Store and a little trademark history

    As much as I like my iPhone and somewhat admire Apple for their products this whole lawsuit thing is getting ridiculous... I can see suing for proprietary tech but for the term "App Store"? This suit is a bit nitpicky IMHO.
    athynz
    • Apple gave the phrase current actual meaning, so it has to right to protect

      @athynz: ... it against any confusion that would absolutely raise if Amazon will be allowed to market its own "AppStore".

      <b>There is only one "AppStore", and it is Apple's rightfully.</b>
      DDERSSS
      • RE: Apple's App Store and a little trademark history

        @denisrs
        Wrong. An App Store is anywhere you can buy Applications.

        Apple has the Apple App Store. Sure.
        Droid101
      • RE: Apple's App Store and a little trademark history

        @Driod101
        I'd bet had it been some Android vendor who had the Droid Appstore first and was sueing Apple for using Appstore you'd be singing a different song.
        observer1959
    • Generic like

      @athynz <br>I agree. Apps is kind of generic at this point. My guess is that Apple will label the trademark as based on <b>App</b>le <b>Store</b>, that Amazon is infringing on it's "Apple" trademark.

      That's the only way I can see as how they got it trademarked.
      Will Farrell
      • RE: Apple's App Store and a little trademark history

        @Will Farrell

        They got it trademarked because they made an application for it, and the application met all legal standards required.
        msalzberg
    • RE: Apple's App Store and a little trademark history

      @athynz
      IF a company created a music player, and called it the Xune. How fast do you think Microsoft would sue? I am honestly surprised that Microsoft hasn?t gone after Motorola, for the Xoom; (Zoom/Zune) say it out loud a few times and you?ll get my point.
      Rick_K
      • RE: Apple's App Store and a little trademark history

        @Rick_K <br><br>If the Zune was as successful as Apple's App Store, then it would be no question. Microsoft would hunt down anyone using anything close to the word Zune. Rumor is right now they may rebrand that name to "Ventura" or something, so they don't care that people are currently mistaking Xoom for Zune is my guess. Which is also unfortunate for Moto for choosing that name. <br><br>Apple launched something that's widely successful in the App Store. Other companies came alone and launched their own competing store with varying names (Ovi Store, Microsoft Marketplace, Palm's App Catalog, Google's Market etc). Apple imo have every right to protect their "App Store" naming and brand as any other competing company has with theirs.
        dave95.
  • RE: Apple's App Store and a little trademark history

    Amazon should just use App Marketplace. That way there would be no confusion at all. Today over 90% of the population hears App Store they think iTunes. Now someone?s grandmother get s a gift certificate to an App Store, the poor child now has a certificate for Android apps and an iPod touch. Based on history Apple should easily win this. After all if Microsoft could win when the words are spelled different (Lindows/Windows), this should be a no-briner.
    Rick_K