Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: Filing date:
Proceeding
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD 91195582
Party
Plaintiff Microsoft Corporation
Correspondence Address
Submission
WILLIAM O FERRON JR SEED IP LAW GROUP PLLC 701 FIFTH AVENUE, SUITE 5400 SEATTLE, WA 98104 UNITED STATES
[email protected] Other Motions/Papers
Filer's Name
Nathaniel E. Durrance
Filer's e-mail
[email protected],
[email protected],
[email protected]
Signature
/Nathaniel E. Durrance/
Date
03/29/2011
Attachments
Durrance Reply Decl.pdf ( 9 pages )(329580 bytes ) Durrance Dec-Exh1.pdf ( 2 pages )(32649 bytes ) Durrance Dec-Exh2.pdf ( 26 pages )(1775168 bytes ) Durrance Dec-Exh3.pdf ( 4 pages )(132733 bytes ) Durrance Dec-Exh4.pdf ( 3 pages )(180439 bytes ) Durrance Dec-Exh5.pdf ( 22 pages )(1569720 bytes ) Durrance Dec-Exh6.pdf ( 8 pages )(492961 bytes ) Durrance Dec-Exh7.pdf ( 23 pages )(790166 bytes ) Durrance Dec-Exh8.pdf ( 46 pages )(2753963 bytes ) Durrance Dec-Exh9.pdf ( 4 pages )(80952 bytes )
ESTTA400436 03/29/2011
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD MICROSOFT CORPORATION, Opposer, v. APPLE INC., Applicant.
) ) Opposition No. 91195582 ) ) Serial No. 77/525433 ) ) ) Attorney Docket No. 663005.80652 ) ) )
DECLARATION OF NATHANIEL E. DURRANCE IN SUPPORT OF OPPOSER MICROSOFT CORPORATION’S MOTION FOR SUMMARY JUDGMENT I, Nathaniel E. Durrance, hereby declare and state that: 1.
I am an attorney at Seed IP Law Group PLLC, counsel for Opposer Microsoft
Corporation (“Microsoft”) in this proceeding. The following facts are true of my own knowledge unless otherwise stated. 2.
I reviewed the Lexis/Nexis “MegaNews/US News” search results attached as
Exhibit 5 to the Declaration of Dr. Robert Leonard, submitted by Apple Inc. in this proceeding. Dr. Leonard describes his Lexis/Nexis “MegaNews/US News” search as being conducted on February 17, 2011, using the search term “app store” without any limitations such as capitalization. (Leonard Decl. ¶ 29). 1
3.
Apple criticizes Microsoft’s Westlaw USNEWS search results on several bases
that I believe are unfair. First, searching for press articles that use “app store” in lower case is a legitimate way to locate articles that make generic use of the term. (Butters Decl. at 29 & 46). Second, Apple objects to Microsoft providing 30 words before and after “app store” (Apple Resp. at 19), yet Apple provides only 3-5 words (Leonard Decl. Ex. 5; see ¶ 4(d) below)). Similarly, Apple’s complains about 6% repeat in Microsoft’s results (Jones Decl. ¶ 4), while Apple has 21% repeats for hits about its new Mac App Store (see ¶ 4(a) below). 4.
In reviewing the search results from Exhibit 5 to the Leonard Declaration, I found
the following: (a)
220 of the hits are the same repeated text stating “now available from the Mac
App Store and has made Apple top”. These 220 repeated hits account for over 21% of the 1017 total hits in Exhibit 5. The document numbers for the repeated texts in the Leonard search results are as follows: 185-189, 196-202, 224-234, 260-271, 300-315, 338-346, 363-386, 389390, 400-407, 421-429, 471-541, 695-704, 734-742, 781-792, 813-821, and 960-965. (b)
335 of the hits (including the 220 listed above) are articles reporting about the
“Mac App Store” (or 39% of the 857 articles Leonard claims mention the Apple App Store in his search). The additional document numbers are: 8, 13-17, 21, 24, 28, 31, 51, 57-59, 151-152, 176-181, 183, 214, 217, 241, 243, 250, 255, 274, 276, 285, 290, 291, 293, 295, 330, 347, 359, 387-388, 398, 455, 459-460, 551, 555, 570, 581-586, 637-638, 649, 651, 665, 675-677, 680, 686, 690, 692-694, 719, 733, 743-744, 748, 768, 775, 780, 796, 805, 810, 868, 870, 877-887, 892, 910-923, 954, 966, 976, 981, and 985-988. (c)
72 of the hits are articles reporting about Apple’s new subscription service for its
app store (or 8.4% of the 857 articles Leonard claims mention the Apple App Store in his search). The document numbers are: 18, 25-26, 29-30, 37, 55, 60-65, 68-70, 75-78, 82-115, 119, 122-123, 125, 133-134, 136, 138-144, 147, 149-150, and 560. (d)
each hit in the Leonard search results has no more than between 3 to 5 words on
either side of each instance of the term “app store”. 2
(e)
Dr. Leonard admits that 130 of the hits he reviewed show generic use of “app
store” related to companies other than Apple (Leonard Decl. ¶30), and these include numerous examples ranging from large general circulation publications to technology and consumer publications, for example: •
NEW YORK POST “Google refashioned its Android app store to give developers …” (Doc. 449)
•
WALL STREET JOURNAL “Google opens online app store” (Doc. 467)
•
CNET NEWS.COM “app sales have skyrocketed as app stores have popped up everywhere” (Doc. 754)
• 3.
PR NEWSWIRE “subscribers on the Blackberry app store” (Doc. 356). In Dr. Leonard’s declaration at paragraph 38, he cites a definition of “App Store”
found at computer.yourdictionary.com that in turn references a definition for “mobile app stores” not provided by Dr. Leonard. The definition for “mobile app stores” found at computer.yourdictionary.com is “Web sites for downloading free and paid applications to smartphones” and lists “the various vendor app stores” such as the Android, BlackBerry, iPhone and Windows Mobile app stores. A true and correct copy of the definition of “mobile app store” found at computer.yourdictionary.com is attached hereto as Exhibit 1. 4.
Apple submitted the declaration of attorney Alicia Grahn Jones in this
proceeding. In paragraph 2 of Ms. Jones’ declaration, she presents a table she characterizes as having “federal trademark registrations, which I understand to subsist on the Principal Register.” A review of these registrations shows that the following are on the Supplemental Register: Reg. Nos. 3773696 (SWAG STORE), 3367291 (THE GENERATOR STORE); 3022200 (THE RADIATOR STORE), and 3080989 (DIGITAL MAP STORE). 5.
In my January 10, 2011 declaration, I detailed a November 10, 2010 Westlaw
USNEWS search I conducted for “app store” (lower case only). As discussed in my January 10 declaration, those search results revealed 867 general press articles that used “app store”
3
generically between January 1 and November 10, 2010, or about 84 general press articles a month. (1/10/10 Durrance Decl. ¶¶ 2-3). 6.
In Apple’s response, it submitted Ms. Jones’ declaration where she puts forth
Apple’s characterization of each of the search result hits as either “(i) a use of ‘App Store’ as a reference to Apple, (ii) a generic use of the phrase ‘App Store,’ (iii) a combined use of ‘App Store’ as a reference to Apple and as a generic phrase in different parts of the article; and (iv) an ambiguous use of the phrase ‘App Store.’” (Jones Decl. ¶ 5). Ms. Jones included a chart, labeled Exhibit B, showing Apple’s categorization of each article. As shown in Exhibit B to Ms. Jones declaration, she aggressively tried to move as many of the 867 generic press articles into another one of her categories. For example, Ms. Jones categorizes the following statements found in the Westlaw USNEWS search as “a use of ‘App Store’ as a reference to Apple” and not as a generic use of “app store”: •
“The new programs will go on sale in a Mac app store in a few months” (No. 17)
•
“Apple launches online, app store in China” (Nos. 57 & 58)
•
“The new Mac app store, meanwhile, will open within 90 days” (No. 69)
•
“Apple may be looking to a Mac app store to boost interest in its computers” (No. 76)
•
“[t]he company opened a new app store for Macs” (Nos. 85, 104)
7.
I understand that references to a “Mac app store” are to a new online store
operated by Apple to download applications for its MAC personal computers, and not a reference to the Apple App Store where users download apps for its iPhone and iPad mobile devices. 8.
Even with its aggressive culling, Ms. Jones admits in her Exhibit B that the
Westlaw USNEWS search resulted in 570 search hits that are references to generic uses of “app store” and 49 search hits that are combined references to generic uses of “app store” and reference to Apple, for a total of 619 general press articles that Apple admits generically used “app store” from Jan. 1 - Nov. 10, 2010, or about 60 general press articles a month. (Jones Decl. Ex. B at 84). 4
9.
In Ms. Jones declaration, she also alleges that the Westlaw USNEWS search
results had 125 hits that were “initially categorized as ambiguous” (all listed by article number) (see Jones Decl. ¶ 5 & fn. 1). Ms. Jones’ declaration goes on to say that each of these “initially ambiguous” references were pulled up and the entire article was reviewed. Looking at the chart Ms. Jones attached to her declaration as Exhibit B, which provides Apple’s categorization of each of the hits in the search by the document number, Apple categorizes 98 of the “initially ambiguous” references as generic use of “app store.” 10.
In paragraph 19 of my January 10 declaration, there was a list of 13 competitors
using “app store” to refer to their own services of offering apps for download. In the Declaration of Thomas LaPerle, paragraph 38, Apple submitted evidence of an additional 3 competitors using “app store” to refer to their own services of offering apps for download, for a total of 16 competitors using the term “app store.” At the time of Apple’s Response, 11 of the 13 competitors identified by Microsoft and 12 of the 16 competitors identified by the parties were still using “app store” to refer to their own services. Below is a chart prepared based on my review of the true and correct webpage printouts attached as Exhibit 2 from each of the listed competitors showing their use of the term “app store” with underlining added to highlight use: Store Name 1 2 3 4 5 6 7 8
AppStore HQ @metro App Store WinMo AppStore AndAppStore Mobile App Store Solutions DirectTV App Store Sentrion App Store The World’s First App Store for Adults
In MS Brief? Yes Yes Yes Yes Yes
LaPerle Decl.? Yes Yes No No No
Yes
No
Yes Yes
No No
1
Still using “app store” generically? YES, see www.appstorehq.com YES, see www.metropcs.com/products/atmetro/ YES, see www.winmoappstore.com YES, see www.andappstore.com YES, see www.handmark.com/company/solutions/ YES, see online demo tvapps.directv.com/index.do YES, see www.sendmail.com/sm/apps/ YES/No, stopped use of “App Store” in slogan but continues generic use of “app store” to describe products and services, see http://www.mikandi.com/GettingStarted.php1
According to the article attached as Exhibit 3, MiKandi.com changed its slogan only because it did not have the resources to fight Apple after receiving a cease and desist letter.
5
Store Name
In MS Brief? Yes
LaPerle Decl.? Yes
9
MobiHand App Store and “The App Store Company” slogan
10
“World’s Largest Mobile App Store” by Pocketgear.com (now Appia.com)
Yes
Yes
11
HipLogic App Store
Yes
No
12 13
YoYo Games App Store DC App Store
Yes Yes
No Yes
14 15
Shopify App Store The Digital Signage App Store by Treefort, Inc.
No No
Yes Yes
16
GreenAppStore.com
No
Yes
11.
Still using “app store” generically? YES/No, stopped use of “App Store ” in name and slogan but continues generic use of “app store” to describe products and services, see www.mobihand.com/appstore.asp and http://corporate.mobihand.com/ YES/No, stopped use of “World’s Largest ...” slogan but continues generic use of “app store,” see www.appia.com/, www.appia.com/2011/02/03/appia-launches/ and venturebeat.com/2011/02/03/appia-launch/ YES/No, store discontinued but continues use “app store” generically to identify its services, see www.hiplogic.com/partners.php No, now YoYo Games No, changed name to “DC Apps”, see apps.dc.gov/ YES, see apps.shopify.com/ No, ITU application abandoned, no evidence of actual store, see http://tarr.uspto.gov/servlet/tarr?regser=serial&e ntry=77889668 No?, possible start-up, no evidence of actual store
Since Apple filed its Response, we have located additional competitors using
“app store” to identify their services of offering apps for download, including the following: •
Amazon Appstore (launched March 22, 2011)2 http://www.amazon.com/mobileapps/b?ie=UTF8&node=2350149011; http://www.amazonappstoredev.com/2011/03/index.html
•
African AppStore (Future Site) http://www.africanappstore.com/
•
Asus App Store http://liliputing.com/2010/05/asus-launches-netbook-app-storedrops-linux-netbook-hints.html
•
Boob AppStore www.boobappstore.com
•
DI Mobile App Store http://web.me.com/iphonecoder/App_Store/home.html
•
DNA AppStore (Coming Soon): http://www.dnaappstore.com/
2
It is my understanding that Amazon.com, Inc. is the world’s largest online retailer. Apple sued Amazon in federal district court regarding Amazon’s use of “Appstore” as reflected in the article attached as Exhibit 4.
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•
Open App Store http://openappstore.com/
•
Page Plus App Store http://www.pagepluscellular.com/Online%20Store/App%20Store.aspx
•
TigerDirect App Store (now called TigerDirect AppUp Store, but still uses “app store” in description) http://www.tigerdirect.com/sectors/appstore.asp
Attached as Exhibit 5 are true and correct copies of webpage printouts showing use of the term “app store” by these competitors with underlining added to highlight use. 12.
At the time it filed its Response, Apple was also aware of the following additional
competitors using “app store” to identify their services of offering apps for download because Microsoft produced documents to Apple showing such use: •
Crackberry App Store http://crackberry.com/crackberryappstore
•
Liquidware App Store http://www.liquidware.com/apps
•
Mura App Store http://www.getmura.com/index.cfm/app-store/
Attached as Exhibit 6 are true and correct copies of webpage printouts showing use of the term “app store” by these competitors with underlining added to highlight use. 13.
Attached as Exhibit 7 is the Examiner’s Brief filed in In re Trek 2000
International Ltd., 97 USPQ2d 1106 (TTAB 2010), which lists the evidence relied upon in the genericness refusal. In the Examiner’s Brief, the Examining Attorney cited a total of 47 references (which I numbered for convenience), including articles, webpage printouts and other documents supporting the genericness refusal, with the final evidence for genericness submitted in a September 18, 2009 denial of a request for reconsideration. The applicant claimed a first use of the Thumbdrive mark at least as early as December 31, 1999. Thus, the Thumbdrive mark was in use at least from the end of 1999 until September 18, 1999, when evidence was closed in In re Trek, or approximately 117 months. Accordingly, In re Trek was a case where there were 47 references submitted in a genericness refusal for a mark that was in use over 117 months, or 0.4 references per month of use.
7
