A linguist walks into an app store… (part 1)

You’re no doubt aware by now that Apple and Microsoft have hired linguists as expert witnesses in their battle before the Patent and Trademark Office about whether Apple can trademark the expression App Store. Robert Leonard is testifying (actually, report-ifying) for Apple and Ron Butters is doing the same for Microsoft. Their reports are available here (Leonard) and here (Butters), and the electronic docket for the case, with links to the other filings, is here. (Warning: a few of the links seem to be broken.)

The issue that Leonard and Butters are opining about is whether the expression App Store is a proper name that distinctively identifies the particular location in cyberspace where one goes to get apps for one’s iPhone, as Apple contends, or whether it is a generic term for stores where one gets apps of any kind, as Microsoft argues.

I’m not going to comment here on who I think should win this fight, but I do want to make a few observation about some broader (and narrower) issues, starting with a look at how genericness (a/k/a genericity) is regarded in trademark law on the one hand and in linguistics on the other.

There is a good deal of overlap in how the concept is understood in the two fields. Speaking generally, in both fields, an expression is generic if it identifies a category of things as opposed to a particular member of the category. Now, that statement is an oversimplification in at least two ways. First, by using the term expressions, it avoids specifying the grammatical kinds of expressions that can be generic. I’m going to focus here on noun phrases (NPs), because most expressions used as trademarks are NPs.  (A noun phrase is a phrase consisting of a noun and its accompanying paraphernalia, such as spaghetti, a dog, toasters, those vacuum cleaners, and that guy standing over there.) The second oversimplification is that a member of a category can itself be a category. The phrase grocery store identifies a category of stores, and the name Safeway identifies a category of grocery stores.

Despite these oversimplifications, associating “generic” with category and “nongeneric” with member of category is close enough for government blogging work. As applied to the Apple case, the category is app stores in general and the category-member is the Apple App Store.^TM

Although both the law and linguistics start out at more or less the same place, they diverge in some significant ways.

In linguistics, genericity isn’t a property of a word or phrase per se, but of a particular use of a word or phrase. That is to say, a word or phrase can be used generically in one context but nongenerically in another:

Water is wet (generic)
I spilled water all over the table (nongeneric)

So in general, at least, it wouldn’t make sense as a linguistic matter to say that it using a word or phrase generically was somehow a misuse, or conversely that word has been used generically so commonly that it could no longer be used nongenerically.

Trademark law is different. For trademark owners and their lawyers, the dichotomy isn’t so much between generic and nongeneric as between generic and trademarkable and between generic use and use as a trademark. If an expression is regarded as generic, it can’t be used as a trademark, and conversely, using a trademark generically (e.g., Coke for cola) is a misuse of the word. But if that “misuse” becomes common enough, the word becomes genericized and is no longer enforceable as a trademark. So in trademark law, unlike linguistics, genericity is a property of the word or expression itself, not of a particular use.

Or at least, that’s how it’s usually treated. However, you also see references to a trademark being used “generically,” meaning used as if it were generic (in the trademark-law sense). E.g., Here, have a Coke (said while offering a Pepsi). But even then, the usage differs from linguistics in that this use of Coke is nongeneric in the linguistic sense.

That’s all we have time for now, folks. Stay tuned, there’s more to come.