On July 6, 2011, the U.S. District Court for the Northern District of California denied Apple Inc.’s motion for a preliminary injunction against its adversary Amazon.com Inc.’s “Amazon Appstore for Android,” concluding that Apple failed to establish a likelihood of confusion between its now-ubiquitous “Appstore” mark and Amazon’s mark.

Apple sued Amazon.com in March 2011, after learning that Amazon.com was seeking software developers for its proposed mobile software download service, the “Amazon Appstore for Android.” Having failed to register the “Appstore” mark with the U.S. Patent and Trademark Office, Apple argued that it possessed common law intellectual property rights to “Appstore” and that, as a suggestive mark with an acquired secondary meaning, “Appstore” was both legally protectable and registrable. In response, Amazon.com countered that the “Appstore” mark was generic; an “app store” is the name for an online store wherein consumers can search for, purchase, and download mobile software applications, more commonly known as “apps.” Such marks, it argued, are not legally protectable, and Apple has no basis through which to restrain Amazon’s independent app store venture.

The district court dodged the generic question altogether. Assuming without deciding that the “Appstore” mark was a descriptive mark with an acquired secondary meaning, the Court turned to the issue of whether the “Amazon Appstore for Android” was likely to create confusion within the mobile software download market. Ultimately, it concluded that Apple failed to meet its burden of proof on the likelihood of confusion issue, largely due to differences in the channels of trade between the Apple and Amazon.com “app stores,” and to technical barriers preventing users of either device downloading applications for the other.

The Court also rejected Apple’s argument that the “Amazon Appstore for Android” would dilute the “Appstore” mark. It observed that other companies used “app store” descriptively, found no evidence of blurring, and rejected Apple’s arguments that Amazon’s use of the expression “Appstore” would tarnish Apple’s mark. It remains to be seen whether, in pressing on with the case, Apple will be able to establish that Appstore is not generic, and, having lost the first round, whether Apple will go forward with the case anyway.

For further reading, the case is Apple Inc. v. Amazon.com Inc., et al., C 11-1327 PJH, U.S. District Court, Northern District of California.