Amazon asks judge to dismiss Apple's 'App Store' suit

Amazon on Wednesday asked a federal judge to dismiss Apple’s allegation of false advertising over the online retailer’s use of the term “app store” to describe its online Android app marketplace.

The claim is part of an ongoing trademark lawsuit Apple first brought against the online retailer in March 2011 in the U.S. District Court for the Northern District of California. The lawsuit—which accuses Amazon of infringing on Apple’s rights to the app store name—was filed shortly after Amazon launched its own app marketplace, the Amazon Appstore for Android.

In the original filing, Apple asked for an injunction prohibiting Amazon from using the name as well as unspecified damages. The preliminary injunction was denied by U.S. District Court Judge Phyllis Hamilton.

In September 2011, Amazon introduced its $200 7-inch Kindle Fire tablet, and subsequently began marketing its Amazon Appstore for Android as the “Amazon Appstore.” Apple jumped on this change, and submitted an amended complaint in November 2011, claiming that Amazon had dropped the suffix phrase to deliberately confuse customers.

“This deception is likely to influence consumers’ purchasing decisions about Amazon’s service and products, thereby diverting revenues from Apple to Amazon,” Apple wrote in its amended complaint. “Amazon’s use is also likely to lessen the goodwill associated with Apple’s APP STORE service and Apple products designed to utilize Apple’s APP STORE service by associating Apple’s APP STORE service with the inferior qualities of Amazon’s service.”

In the amended complaint, Apple once again asked for an injunction against Amazon, as well as all profits made by Amazon attributable to its allegedly unauthorized use of the term “app store.”

However, according to a report from Reuters, Amazon argued in a filing Wednesday with the U.S. District Court in Oakland, Calif., that the term “app store” has become generic and thus cannot constitute false advertising, .

Amazon also noted that even Apple chief executive Tim Cook and former CEO Steve Jobs seem to think that “app store” is a generic term, noting that Cook once talked about the “number of app stores out there,” while Jobs referred to the “four app stores on Android.”

“Apple presumably does not contend that its past and current CEOs made false statements regarding those other app stores to thousands of investors in earnings calls,” Amazon said in a statement to Reuters. “To the contrary, the use of the term ‘app store’ to refer to stores selling apps is commonplace in the industry.”

This whole issue, of course, raises the question of whether Apple really has a claim to the term “app store.” The company didn’t invent the term “app” to describe specific-task software—that term has been around for quite awhile. But Apple has, arguably, given consumers the mobile phone app as it exists today. That said, it’s hard to measure the strength of Apple’s case, given the generic nature of “app store.” (In contrast, Google’s Android store is called “Google Play,” while Microsoft’s Windows Phone store is called the “Windows Phone Store”, and RIM’s BlackBerry store is called “BlackBerry App World”).

Microsoft previously attempted to bar Apple from trademarking the name “app store” in January 2011, when it asked the U.S. Patent and Trademark Office to deny Apple’s application. According to Microsoft, “app” is a generic term for what is sold at the App Store, and “store” is a generic term for a place that sells things. Therefore, “app store” is generic term for a store in which apps are sold.

“‘App Store’ is a generic name that Apple should not be permitted to usurp for its exclusive use,” Microsoft said. “Competitors should be free to use ‘app store’ to identify their own stores and the services offered in conjunction with these stores.”

Microsoft’s case has been placed on hold, however, as a result of the Apple-Amazon lawsuit.

The Apple v. Amazon trial is scheduled for Aug. 19, 2013; Amazon’s motion to dismiss Apple’s “false advertising” claim will be heard on Oct. 31.

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