Microsoft's "app store" trademark complaint (+ WOTY)

[Victor Steinbok]

Is anyone willing to comment on Apple's claim concerning "store"?? [Also
see the OED note in PS.]

p. 10
> Apple denies that “store” is generic for online retail store services,
> averring that the term
> “store” refers only to brick-and-mortar establishments. (Answer ¶ 7).

Consider this piece from 1994

> San Jose Mercury News (CA) - April 26, 1994 - 5E Business
>
> 'ON-LINE STORE' PLANNED FOR PRODIGY USERS
> Home Shopping Network Inc., known for its television shopping
> programs, said it and Prodigy plan to develop an on-line retail
> service targeted at a different audience: personal computer users. The
> St. Petersburg, Fla., direct retailer said the "on-line store" will be
> available to Prodigy's 2.2 million on-line subscribers by fall and use
> color photographs to display wares.

This is just the first paragraph of the story. Note the alternation
between "on-line store" and "on-line retailer" and other versions of the
same idea. It certainly appears that "store" is not a "brick and mortar
establishment".

That story is not unique to SJMN. Google News Archives also picks up
Orlando Sentinel and St. Petersburg Times stories from the same day. St.
Pete's Times abstract from GNA (TampaBay.com):

> Whatever the result, Home Shopping Network and Prodigy Services Co.
> announced Monday they plan to open an "on-line store" next fall, a
> kind of electronic mail-order catalog featuring some of the same
> products HSN hosts peddle on TV.
> So instead of Home Shopping customers turning on the TV, waiting until
> something catches their fancy and then dialing the phone to place an
> order, they can just log on to Prodigy. With the press of a button (or
> click of a mouse), they can peruse Home Shopping's offerings, even
> specifying the type of product they want.

Similarly from the ProQuest abstract of the Sentinel story:

> Home Shopping Network Inc. and Prodigy Services Co. said Monday they
> will develop an on-line store for personal computer users.

The story appears again in USA today for Sep. 7, 1994 (ProQuest:
http://goo.gl/RddhI) This one has an interesting abstract, suggesting
that "on-line store" was a Prodigy invention:

> HSN and Prodigy in May began developing an on-line "store" for
> personal computer users. "Prodigy has been very cable-friendly, and
> Prodigy has explored and played around with going on line more than
> AOL (America Online)," says Larry Gerbrandt, analyst with Paul Kagan
> Associates.

The next big date in "online store" history is July 7, 1995.

http://goo.gl/3vnZl
The Albany Herald
> A new on-line store on the Inter net offers shopping at the push of a
> button, plus delivery. "We can order whatever we want. The food is
> actually cheaper than the grocery store."

The story credits two MIT graduates with the idea of an on-line
store--not Apple. One of them comments in the story,

> "You have practically everything on the Internet right now. Why not
> food?" Vo said. "Young professional students, who've been most of our
> customers, can still go to the supermarket, but the elderly or
> handicapped people have a tougher time, so this should be great for them."
> Users can:
> ...
> Place their items in a computerized basket and keep a running tally of
> their bill.

This was an AP story, so it got wide play (and a number of hits in GNA).

I can actually see Apple lawyers ignoring this kind of precedent both
deliberately and out of ignorance, but how could Microsoft lawyers have
missed it? I can understand their reluctance to search for something
that requires nuanced search strings, but I simply plugged in
"on-line-store" into Google and got everything I wanted. A little
trickery might find some earlier examples still.

By the way, The Atlantic appears to have been running the "Atlantic
on-line store" since late 1995.

This, of course, does not make "store" generic for "online store"--quite
to the contrary, having to spell it out suggests otherwise. But it does
contradict the notion of a "brick-and-mortar" store as a base. And it
also point to where one can look for early occurrences of generic
"store" for on-line operations. All the citations MS lawyers give are
nearly contemporaneous with Apple's App Store usage.

VS-)

PS: The OED has "online" in a variety of conditions, but only one
"special compound"--here referred to as "special uses": "online dating".
I suggest exploring "online store", as well as retailer/retailing,
bank/banking, trade/trader, business, gaming, gambling, chat, status,
for "special compounds", as most of their meanings are not directly
derivable from the underlying combinations of meaning.

PPS: There is another interesting OED twist. Consider "store 12.a.":

> A place where merchandise is kept for sale.

This does not appear to help Apple, even though all the citations (only
through 1975!) appear to refer to a "brick and mortar" establishment.

Then, there is this troublesome note for the same entry:

> The use of the word in this sense has not become common in the U.K.
> except in Comb., as chain store n. at chain n. Compounds 3, department
> store n. at department n. 5 (see under the first elements), store
> detective n. at Compounds 1d(i), in which it still refers to a large shop.

So in the UK, Apple is completely out of luck, as the combination "App
Store" is /exactly/ what would have been expected (as opposed to "shop").



On 1/13/2011 4:25 PM, Ben Zimmer wrote:
> Microsoft has filed a trademark complaint against Apple over the use of "app store," and the complaint cites ADS WOTY.
>
> http://www.techflashpodcast.com/wp-content/uploads/2011/01/ttabvue-91195582-OPP-5.pdf
>
> On p. 9, it says, "'App' is so well known that it has just been named the "Word of the Year" for 2010 by the American Dialect Society, a leading group
> of US linguists."
>
> And on p. 14, our press release is quoted.
>
> --bgz

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