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 got from the facts to the conclusion.  I suspect what happened here was that there was a good deal of conflicting evidence of the extent to which APP STORE has been used to describe any website that sells computer applications, and that the court wasn’t willing to destroy a mark based on conflicting evidence.

As I mentioned in my last post, once a term has been found to be generic for a set of goods and services, it can never be used as a mark for those goods and services, no matter how much the consuming public might associate it with a particular provider of those goods and services.  To take an extreme hypothetical, if 90% of the consuming public thought “McDonald’s!” when they heard the word hamburger, McDonald’s still couldn’t use HAMBURGER to describe their hamburgers.  The policy reason is that this use of hamburger would allow private individuals and companies to encroach upon the public’s language.  Put differently, hamburger to describe patties of ground beef is in the public domain, and once it’s there, it can’t be taken out again.

Another way to look at it is that marks have meaning.  And what it the mark needs to mean is you, somehow, someway.*  Consumers don’t need to know that you specifically are behind the product.  They don’t necessarily know that OREO® brand cookies are made by Nabisco, which is in turn a division of Kraft Foods; and even if the consumer knew that, for all she knew the actual manufacturing and distribution was outsourced to someone else entirely.  All the consumer needs to know is that someone is standing behind the product, making sure that the product is of a certain quality and has certain characteristics.  If OREO® ever came to signify nothing more than a kind of creme-filled chocolate sandwich cookie (and Kraft would NEVER EVER let this happen), the mark would lose this special meaning, become generic and pass into the public domain, never to be retrieved.

In trademark jargon, this means the mark functions as a “source-identifier.”

That process, by the way, is known as genericide:  death of a mark because it fell  into common usage to mean the class of products it was being used to promote.  It doesn’t happen very frequently, but it does happen.  Aspirin, thermos and zipper were all once strong trademarks, but they are part of our language now.  It’s the ironic result of a mark that had become too powerful.  It’s great when consumers think of your mark when they think of the product associated with the mark, but even so, they still need to think of you–somehow, someway–when they do.

Genericide plays some role in the APP STORE dispute.  Apple claims it started using APP STORE in July 2008, but little if any of Microsoft’s and Amazon’s** evidence pre-dates that alleged first use.  It is as if they are saying that APP STORE may or may not have been generic in 2008, but it certainly was by 2010 or so.  This is, in a sense, a genericide argument.  Apple started using the term in 2008 (so the argument goes), and immediately, everyone else starts using it in a generic sense.  APP STORE might have been born a protectable mark, but it didn’t live long.***  I think Apple’s response might be that the mark grew up in a hurry–thanks to Apple’s marketing–and that it survived its bout of genericide.  Sure, some of the technocratic use APP STORE in a generic sense, and if Apple marketed exclusively to them, then Apple would be in trouble.  But ordinary consumers still expect an Apple-like experience when they visit an “App Store” and will notice it when they don’t.

** Recall that they are both attacking Apple’s claim to APP STORE, but in different places.  Microsoft is trying to prevent Apple from registering APP STORE on generic-ness grounds, and Amazon is trying to secure the right to use APP STORE over Apple’s objections, in part on generic-ness grounds.

***  Is the difference between garden-variety generic-ness and genericide be just academic?  I think it shouldn’t.  I think they should admit to slightly different types of evidence.  In the garden-variety situation, evidence of the public’s association of a pre-existing generic word with provider of the goods or services shouldn’t matter:  the term is in the public domain and no amount of consumer association should change that.  In the genericide situation, such evidence ought to be relevant to see whether the mark really has been drained of its trademark meaning.  This difference has implications in the APP STORE disputes because Microsoft and Amazon are making both kinds of generic-ness arguments.

Rick Sanders

Rick is an intellectual-property litigator. He handles lawsuits, arbitrations, emergency injunctions and temporary restraining orders, opposition and cancellation proceedings, uniform dispute resolution proceedings (UDRPs), pre-litigation counseling, litigation avoidance, and other disputes, relating to copyrights, trademarks, trade secrets, domain names, technology and intellectual-property licenses, and various privacy rights. He has taught Copyright Law at Vanderbilt University Law School. He co-founded Aaron | Sanders with Tara Aaron-Stelluto in 2011.