Apple, Inc. was not entitled to a preliminary injunction barring online retailer Amazon.com, Inc. from using Apple's asserted "App Store" trademark for its service through which it sold applications for mobile devices, the federal district court in Oakland has decided. Amazon used the name "Amazon Appstore for Android" for its service on the amazon.com website, through which it offered software applications for Android mobile devices. Despite the similarities between the parties' respective marks and services, Apple was not likely to succeed on the merits of its trademark infringement and dilution claims.

Likelihood of Confusion

Assuming without deciding that "App Store" was protectable as a descriptive mark that had acquired secondary meaning, Apple was not likely to succeed on the merits of its infringement claim because it did not show that confusion between Apple's and Amazon's "App Store" marks was likely, the court said. "App Store" was not a conceptually strong mark, and Apple's evidence of advertising expenditures was insufficient to show that the mark had achieved conceptual strength in the marketplace.

Although both companies were offering downloads of software applications for mobile devices, Amazon's apps could be used only on Android devices, which suggested that the class of purchasers was not the same for each service. The marks were essentially identical, but Amazon's website made it clear that its apps were for Android devices, the court noted. Other likelihood of confusion factors were neutral or did not clearly favor either side.

Dilution

Apple was not likely to successfully establish at trial that Amazon's mark blurred and tarnished Apple's "App Store" mark, according to the court. Apple failed to establish that "App Store" had the requisite fame, in the sense of being "prominent" and "renowned." Apple had spent a great deal of money on advertising and publicity, had sold or provided a large number of applications from its App Store, and there was evidence of actual recognition of the mark by consumers.

Although Amazon's "Amazon Appstore for Android" mark was similar to Apple's mark, "App Store" was more descriptive than distinctive, and it was unclear whether consumer recognition of "App Store" was as a mark or as a descriptive term. There was evidence that the term "app store" was used by other companies as a descriptive term for a place to obtain software applications for mobile devices, the court said.

In addition, there was no evidence that Amazon intended to create an association between its Android apps and Apple's apps, and there was no evidence of actual association.

With regard to tarnishment, there was no evidence to support Apple's speculative contention that Amazon's service would allow inappropriate content, viruses, or malware to enter the market, or how that would harm Apple's reputation, since Amazon did not offer apps for Apple devices.

Apple, Inc., ND Cal., ¶61,831.