In “App Store” Trademark Battle, Judge Sides with in Denying Apple’s Request for a Preliminary Injunction


On July 6, 2011, the United States District Court for the Northern District of California made its first substantive ruling in Apple’s attempt to enforce its “App Store” mark against, denying Apple’s motion for a preliminary injunction. Apple had based its motion on claims that’s use of “Appstore” constituted both trademark infringement and dilution of its “App Store” mark.

To win on trademark infringement, Apple needed to show that it was likely to prove at trial (1) that the mark “App Store” is protectable and (2) that’s use of “Appstore” is likely to cause consumer confusion. After briefly discussing the “protectability” element and’s argument that “App Store” is an unprotectable generic term, Judge Phyllis Hamilton merely assumed for the purposes of the motion, without actually deciding, that the “App Store” mark was protectable as a descriptive term with arguably acquired secondary meaning, as she had decided to rule against Apple on the “confusion” element. Although she found some of the factors in the confusion analysis to “somewhat favor” Apple, it was not enough to establish a likelihood of confusion between the two uses at this point in the proceeding. Without establishing a likelihood of confusion, Apple could not establish that it was likely to prevail on the claim of trademark infringement.

Judge Hamilton similarly ruled against Apple on its dilution claim. First, she found that Apple did not establish that its “App Store” mark is famous, a requirement for a finding of dilution. She also found no evidence of “blurring” between the marks, no evidence of an intent on the part of to create an association with Apple’s mark, no evidence of actual association between the marks, and no evidence to support a finding of “tarnishment” of Apple’s mark. Accordingly, the she found that Apple had not established that it was likely to prevail on the dilution claim.

Because Apple failed to establish a likelihood of success on either the infringement or the dilution claim, its motion for preliminary injunction was denied. The full trial is currently set for October of 2012.

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