San Diego Trademark Attorney® Blog

January 2013 Archives

Amazon, Apple Ordered to Settlement Talks in Trademark Infringement Case

January 17, 2013,

amazon.jpgSan Diego - A magistrate judge ordered Amazon.com Inc. and Apple Inc. to attend settlement conferences in an attempt to get the companies to resolve their differences before the upcoming trial over Apple's claim that Amazon is infringing its APP STORE trademark.

On Tuesday, U.S. Magistrate Judge Elizabeth D. Laporte of the Northern District of California ordered the opposing companies into talks to be attended by attorneys or executives with full power to negotiate and settle the case. The settlement talks are scheduled for March 21st in San Francisco.

Judge Laporte instructed both sides to prepare to discuss their settlement objectives, obstacles that may prevent settlement, and to think of creative resolutions to the dispute. Judge Laporte said both sides should be prepared for a long and candid discussion.

"It is not unusual for conferences to last several hours or at times, all day," Judge Laporte's order reads. "No participant in the settlement conference will be permitted to leave the settlement conference before it is concluded without the permission of the settlement conference judge."

Amazon's Appstore was officially launched in March 2011 and offers app downloads for smartphones that run on Google Inc.'s Android platform. That same month, Apple filed a lawsuit against Amazon claiming trademark infringement and unfair competition. In November 2011, it amended the complaint to add a false advertising claim. The complaint alleges that Amazon's use of APP STORE is deferring profits from Apple to Amazon and is diluting Apple's trademark because Amazon offers substandard products under a confusingly similar name.

Apple's false advertising claim was dismissed on January 2 when U.S. District Judge Phyllis Hamilton ruled that Apple did not provide consumer research, market studies or any other data that proves that Amazon had in any way tried to deceive consumers by calling their online app service Appstore.

Judge Hamilton also struck down Apple's argument that Amazon was attempting to impress upon consumers that its apps are the same as Apple's. The judge said that no reasonable customer would link Amazon and Apple's app products, considering apps from the two sources cannot be downloaded onto the same device.

Apple is still attempting to have a permanent injunction entered against Amazon prohibiting it from using APP STORE and the company is seeking damages, profits allegedly derived from using the trademark, costs and attorney's fees.

If the two companies are unable to reach a settlement, the case is scheduled to go to trial in San Francisco on August 19th.