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.


Reader Comments (rss)

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  1.  
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    T.Martin (profile), Mar 29th, 2011 @ 5:13am

    Owning language

    Thank goodness Apple is incorporating proximity payment technology in next gen. iPhones. I will be able to pay promptly when I use their proprietary language in the future. I didn't need all those words, anyway. I'm just glad the larger corporations are taking vocabulary in hand and allowing us to pay when we infringe upon their justifiably owned IP. Phew!

     

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  2.  
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    abc gum, Mar 29th, 2011 @ 5:37am

    Headline in the not too distant future:

    Health Club Claims Ownership of "Ab Store"

     

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  3.  
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    Joe (profile), Mar 29th, 2011 @ 6:06am

    Mike, once again you've missed the point. Trademarking descriptive words and phrases has everything to do with preventing consumer confusion. The fewer companies that consumers have to choose from, the less confusion consumers will have. Really, these companies are doing the consumers a great service by winnowing down the choices they have to worry about. Less choices are really what people want.

    ;)

     

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    Michial Thompson, Mar 29th, 2011 @ 6:18am

    Doesn't your very article explain WHY Apple should be suing??

    The very purpose of Trademark law by your definition is to protect the public from product confusion. Which is EXACTLY what Apple is trying to do.

    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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    Cipher-0, Mar 29th, 2011 @ 6:24am

    Re: Doesn't your very article explain WHY Apple should be suing??

    I'm going to have to agree on this one. I'm not a moron (at least my mom thunks I'm special) in a hurry, but when I hear "App Store" I immediately think Apple.

    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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    JackSombra (profile), Mar 29th, 2011 @ 6:35am

    The full name is "Apple App Store"

    "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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  7.  
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    fogbugzd (profile), Mar 29th, 2011 @ 6:37am

    Lower protection for common words

    There ought to be two different standards in trademark law. When a company takes a common word and uses it for a trademark it should be very clear that they do not own the word itself. There should be a bit more ownership for unique 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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  8.  
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    Kaden (profile), Mar 29th, 2011 @ 6:37am

    Re: Doesn't your very article explain WHY Apple should be suing??

    "Apple did not take a generic term and trademark it"

    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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    Dark Helmet (profile), Mar 29th, 2011 @ 6:59am

    Re: Re: Doesn't your very article explain WHY Apple should be suing??

    Well, then maybe I AM a moron. When I hear App Store, I immediately think of a place to buy applications. To be honest, the whole Apple correlation never even entered into my mind....

     

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  10.  
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    Anonymous Coward, Mar 29th, 2011 @ 7:09am

    First off, I have to ask: Considering that the NYT is (a) now using it's paywall, and (b) has mislead you in the past, why are you referencing them as a source?

    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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  11.  
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    Michael, Mar 29th, 2011 @ 7:10am

    Re: Lower protection for common words

    They still sell cables?

    I thought they switched to a litigation-only business model a few years ago?

     

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  12.  
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    Michael, Mar 29th, 2011 @ 7:12am

    Re: Doesn't your very article explain WHY Apple should be suing??

    So you think it would be ok to trademark "Book Store" or "Grocery Store" or "Clothing Store"?

    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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    Michael, Mar 29th, 2011 @ 7:14am

    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"

    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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  14.  
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    Anonymous Coward, Mar 29th, 2011 @ 7:28am

    Re: Re: Re: Doesn't your very article explain WHY Apple should be suing??

    "The App Score™ is where anyone can score an app! App Score™!"

     

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    fogbugzd (profile), Mar 29th, 2011 @ 7:29am

    Coffin Nail

    Steve Jobs is on record as using "app stores" to refer to offerings by Google and Microsoft, even though they had not been routinely using the terms themselves. Pluralizing the term and using it to refer to a generic type of business might very well be fatal to Apple's case.

     

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  16.  
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    Anonymous Coward, Mar 29th, 2011 @ 7:57am

    US trademark law, codified at 15 USC 1051 et seq., is generally referred to as the Lanham Act.

    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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  17.  
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    Gordon (profile), Mar 29th, 2011 @ 8:28am

    Re: Doesn't your very article explain WHY Apple should be suing??

    And Google doesn't use the term App store. It's the Android Market....always has been.

    By the way.

     

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  18.  
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    Gordon (profile), Mar 29th, 2011 @ 8:36am

    Re:

    In a sense you are right and partially wrong here. To a point I agree with what you're saying though I may be wrong with what comes beyond that point.

    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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  19.  
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    derekcohen (profile), Mar 29th, 2011 @ 8:37am

    If Facebook couldn't have trademarked "Facebook" there would have been nothing to stop someone setting up www.facebook.tv or whatever and providing a similar service.

    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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  20.  
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    Chris Ball (profile), Mar 29th, 2011 @ 8:43am

    TM law is about unfair competition, not consumer protection

    Mike,
    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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  21.  
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    Bengie, Mar 29th, 2011 @ 8:51am

    Re: Re: Doesn't your very article explain WHY Apple should be suing??

    Even better. App isn't just a "common abbreviation", it is an official word.

    App: an application; application program

    Recognized as a word itself.

    Like you said, Grocery Store.

     

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  22.  
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    Markus (profile), Mar 29th, 2011 @ 8:55am

    Re: Re: Doesn't your very article explain WHY Apple should be suing??

    And unfortunately it's working quite well. I mentioned a new "app" I found the other day to a colleague of mine, and they responded, "But wait, I thought you could only get 'apps' on the iPhone." True story..... (I felt like an jerk explaining that app was an abbreviation for application/program, because I could see them feeling embarrassed as I did).

     

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  23.  
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    Sean T Henry (profile), Mar 29th, 2011 @ 8:58am

    Re: Re: Doesn't your very article explain WHY Apple should be suing??

    You are correct.

    "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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  24.  
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    Sean T Henry (profile), Mar 29th, 2011 @ 9:03am

    Re: Re: Lower protection for common words

    They just use the cables as a front now.

     

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  25.  
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    techflaws.org (profile), Mar 29th, 2011 @ 9:21am

    Re: Re: Doesn't your very article explain WHY Apple should be suing??

    Why not try? Micros~ got away with misappropriating .net.

     

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  26.  
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    techflaws.org (profile), Mar 29th, 2011 @ 9:23am

    Re:

    "Considering that the NYT is (a) now using it's paywall, and (b) has mislead you in the past, why are you referencing them as a source?"

    Because he can and ppl around here like stupid questions from ACs.

     

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  27.  
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    Markus (profile), Mar 29th, 2011 @ 9:25am

    Re: TM law is about unfair competition, not consumer protection

    And what do you think the purpose of unfair competition law is exactly? To "help" businesses, in some sort of vacuum? You're unnecessarily splitting hairs. Generally, the confusion that occurs is determined from the point of view of the consumer. You are merely describing the other side of the coin here. Of course businesses want to protect their brand from unfair competition. But there is a corollary interest in protecting consumers from confusion in the marketplace. These forces work together to create a more efficient market. Unfair competition law in general promotes an efficient marketplace, and trademark law specifically does so by addressing consumer confusion.

     

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  28.  
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    Anonymous Coward, Mar 29th, 2011 @ 9:30am

    USPTO

    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."

    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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  29.  
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    Anonymous Coward, Mar 29th, 2011 @ 9:37am

    Re: Re: Doesn't your very article explain WHY Apple should be suing??

    I'm going to have to agree on this one. I'm not a moron (at least my mom thunks I'm special) in a hurry, but when I hear "App Store" I immediately think Apple.

    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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  30.  
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    Anonymous Coward, Mar 29th, 2011 @ 9:41am

    Re: Re:

    Would you continue to reference a source that is both operating in a manner against your ideals, and also providing false or misleading stories?

    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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  31.  
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    Anonymous Coward, Mar 29th, 2011 @ 10:00am

    Re: Re: Re: Doesn't your very article explain WHY Apple should be suing??

    Doesn't "Microsoft" mean small and limp anyway?

     

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  32.  
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    Ccomp5950 (profile), Mar 29th, 2011 @ 11:26am

    Re: Doesn't your very article explain WHY Apple should be suing??

    I have a "Computer Shop" I own.

    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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  33.  
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    Mike Masnick (profile), Mar 29th, 2011 @ 12:33pm

    Re: Re: Re:

    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"... ;)

    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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  34.  
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    AWA, Mar 29th, 2011 @ 2:29pm

    Dilution

    If we're discussing the expansion of trademark law beyond mere "likelihood of confusion," it's probably important to mention the concept of dilution, the doctrine that well known marks should be protected from ANY use of "their" mark in ANY market, REGARDLESS OF any issue of confusion. If we wonder why big corporations (i.e. "well known" or "famous" corporations)seem to think they own all uses of certain words, it's because, under the law, they pretty much do.

     

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  35.  
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    Togashi, Mar 29th, 2011 @ 6:46pm

    Re: Re: Re: Re:

    Point #3 cracked me up. Don't you love how the crazies just make things up then state them as incontrovertible fact?

     

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  36.  
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    Togashi, Mar 29th, 2011 @ 6:49pm

    Re:

    I'm pretty sure Mike's fine with their trademarking "Facebook". It's when they start trying to keep anybody from using the suffix "-book" under trademark pretenses that confuses and frustrates us.

     

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  37.  
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    Paul Keating, Mar 30th, 2011 @ 6:39am

    Re: USPTO

    You really can't blame the PTO (although there are plenty of examples of stupid tm filings that have been approved. An example: "Hot Russian Brides" (Reg. No. 3159522)for guess what? an online dating site where you can meet Russian women who want to get married ("dating and marriage partner introduction services"). The applicant disclaimed "Russian Brides" but argued that "Hot" was not descriptive (to which the obvious is then why go to the site?).

    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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  38.  
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    Paul Keating, Mar 30th, 2011 @ 6:42am

    Re: Dilution

    If dilution standards were reserved only for truly FAMOUS marks I would not have much of an issue. To be famous, it should be a household name in the vast majority of households. The trouble is that it is not limited in that fashion and the evidence now required to show fame is minimal. I regularly get demands from TM counsel asserting that their brand is "famous" even though it fails even the most basic "Google test".

     

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    Brian Schroth (profile), Mar 30th, 2011 @ 6:43am

    Got any good sources

    Hey Mike, random favor to ask.

    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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  40.  
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    Paul Keating, Mar 30th, 2011 @ 6:57am

    Re: TM law is about unfair competition, not consumer protection

    I must disagree. The rules of unfair competition, etc are all founded on consumer protection. Infringement is unfair because it confuses my customers into thinking you are me and thus they buy your products instead of mine. This hurts me because I lose money. If you infringe AND produce crappy products it hurts me because customers who are confused into thinking that you are me, will no longer buy my product at all. This hurts me because I lose money on the 1st lost sale and again because they stop buying anything from me. Infringement damages are measured from my point of view as the TM holder - my damage. Infringement damage CAN be the subject of a consumer action based on false advertising, etc and in that case damages would be based on the damage to the actual consumer (e.g. the cost of the crappy product).

    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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