Apple's App Store and a little trademark history

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.
Written by Larry Dignan, Contributor

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.

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