A Legal Blog by Aaron | Sanders, PLLC


Apple v. Amazon: BONUS COVERAGE

Or, What Amazon’s Generic-ness Argument Can Teach Us About the Nature of a Trademark

I’ve had a few questions about what is perhaps the most controversial part of the Apple v. Amazon decision:  the court’s conclusion that APP STORE is not generic.  The court provided no real explanation for her conclusion, other than to reference her description of Apple’s arguments on the subject.  That description, however, doesn’t explain very much, only that there is “ample evidence that APP STORE is not “primarily understood to mean the genus of services” (which explains nothing), that Apple’s competitors have found other ways to describe this genus of services (maybe because they don’t want to draw a lawsuit from Apple rather than anything to do with the merit’s of Apple’s position), and that you can’t find app store in a dictionary (which doesn’t prove much).

While it’s nice for judges to explain their conclusions, they don’t have to.  All they need to set forth in their opinions is (1) the relevant facts, and (2) the necessary legal conclusions they draw from those facts after applying the relevant law (known in the business as a holding).  It’s up to us to figure out how the judge…

Read More»

How Amazon Held off Apple in the Fight over APP STORE (Part 2)

And What You Can Learn About Trademark Law

In my last post, we set the stage for the trademark conflict between Apple and Amazon over APP STORE, and saw that Apple operated under a number disadvantages.  In particular, Apple lacked a U.S. trademark registration, and was asking the court do so something extraordinary.  We’ll see now that Apple did pretty well despite these problems, but in the end, Amazon was able to carry the day by attacking Apple’s arguments at their points of (seeming) greatest strength.  We’ll also see that a judge wasn’t willing to hold to a lazy, un-nuanced view of eCommerce, and that helped Amazon, too.

Amazon attacked Apple on two fronts.  First, Amazon contended that Apple couldn’t prove that it had a protectable mark in APP STORE.  In fact, Amazon APP STORE wasn’t a mark at all–it was just plain English words.  Second, Amazon contended that no one was likely to be confused between Amazon’s and Apple’s APP STORE, mostly because there wasn’t much to the mark and the applications Amazon wanted to sell wouldn’t work on Apple products.*

* You might ask why Amazon didn’t attack Apple very hard on irreparable harm.  That’s because, in trademark…

Read More»

How Amazon Held Off Apple in the Fight over APP STORE (Pt. 1)

And What You Can Learn About Trademark Law Basics from the Decision

If you are a trademark lawyer, you’ve probably heard by now that Amazon last week fought off Apple’s attempt to block Amazon from using the mark APP STORE for its online shopping site.  It’s a high-profile decision (download here) that made the front pages of most online news sites.  But it’s also a really handy case for non-trademark lawyers to learn about trademark law because it touches nearly every major issue involved in a trademark lawsuit:  the importance of registration, the elements of proof, the evidence you need to prove those elements, and the additional challenges posed by preliminary injunctions.

To prove trademark infringement, you have to prove two things:  first, that you own a protectable mark; and, second, that there is a “likelihood of confusion” between your mark and the mark you want to stop.  (You also sometimes have to prove “seniority,” that is, you used it first in the relevant market–but that didn’t come up in the Apple v. Amazon decision.)

Sounds simple, but it isn’t.  That second factor–“likelihood of confusion”–is very fact-intensive (and we’ll go into it in more detail below).  The first factor is usually not…

Read More»