Apple, Inc. v. Amazon.com Inc., No. C 11–1327 PJH, 2011 WL 2638191 (N.D. Cal. July 6, 2011)
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On July 6, the District Court for the Northern District of California denied Apple’s motion for a preliminary injunction to enjoin Amazon.com from using the term “App Store.” The court found that Apple’s claims of trademark infringement and dilution were unlikely to succeed on the merits.
In her decision, Judge Phyllis Hamilton held that Apple failed to show that it was likely to prevail on its trademark infringement claim, based on the weakness of its argument regarding the “likelihood of confusion” element. With regard to the dilution claim, Judge Hamilton was not convinced by Apple’s contentions that the “App Store” mark is distinctive and that it can be diluted by blurring and/or tarnishment. The main issue in this case seemed to be whether the mark “App Store” should be classified as distinctive or descriptive, as the court rejected the idea that the mark is purely generic.
Ars Technica provides background and a brief summary of the dispute. An additional brief summary is available at News Daily. Eric Goldman hones in on particular aspects of the opinion and criticizes the case for the ridiculousness of the claims and the court’s inadequate treatment of the issues.
Addressing the trademark infringement claim, the court considered separately the two factors at issue: whether the mark is generic, descriptive, or suggestive; and whether Apple will be able to show a likelihood of confusion. As to the first element, the categorization of “App Store,” the court determined that the mark is neither generic nor suggestive. Assuming the mark to be descriptive, however, Judge Hamilton was unwilling to make a determination as to whether the mark has acquired a secondary meaning. Instead, the court applied the Sleekcraft factors to hold that Apple did not make a sufficient showing of consumer confusion. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). The court found that some factors weighed in favor of Apple, others weighed in favor of Amazon, and some were neutral. On balance, however, Apple did not prove a likelihood of success on the “confusion” element, and the infringement claim was therefore undeserving of a preliminary injunction.
The court’s consideration of the dilution claim involved a similar factor-by-factor analysis with respect to dilution by blurring. Judge Hamilton determined that Apple had not established that its mark is “famous” or that it is distinctive rather than merely descriptive. The evidence did not demonstrate whether the widely recognized term “App Store” is recognized as a trademark or just as a description. Furthermore, there is no evidence of intended or actual association between the two companies’ “apps,” which operate on two distinct devices (the Android and the iPhone). Finally, the court found no factual support for Apple’s claim that it would be tarnished by Amazon’s use of “App Store” since Amazon does not offer apps on Apple devices.
This opinion is significant because the court has set the bar high for Apple to succeed on its trademark infringement and dilution claims in the upcoming trial (set for October 2012). Assuming Apple is defeated on its infringement and tarnishment claims in court, the term “App Store” will officially become part of the public domain and Apple will not have exclusive rights to the mark.
Samantha Kuhn is a 3L at Harvard Law School.