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Apple Loses the iPad Mini Trademark 144

Posted by samzenpus
from the so-sorry dept.
An anonymous reader writes in with bad news for Apple. "It would appear that Apple has lost an attempt to trademark the 'iPad Mini.' This time it's not nefarious foreigners subverting the just order of things simply by trademarking something several years before Apple did. No, that was what happened in Brazil with the IFone. Nor is it people nefariously selling the rights to everywhere but China but Apple's lawyers didn’t notice, as happened with iPad in China. No, this time it's the U.S. Patents and Trademarks Office saying that Apple simply cannot have a trademark on 'iPad Mini.' For the simple reason that the law doesn't allow them to trademark something which is just a description of the product."
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Apple Loses the iPad Mini Trademark

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  • So? (Score:5, Insightful)

    by kiriath (2670145) on Sunday March 31, 2013 @02:19PM (#43325655)

    Who cares? Why post this, further, why post it with such dramatic leading text?

    Nobody gives a rats ass that Apple can't get a trademark on something they technically already have a trademark on.

    • The whole day, and right now, this story is in the top 10 most read articles on BBC News [bbc.co.uk]
      So clearly, someone does give a rat's ass.

      • Well - Apple is worth billions. For that reason alone, there are tons of zealots, on each side. Yeah, the stories get a lot of hits, but that doesn't really indicate any relevance in any particular field of interest. Money always attracts attention.

        Personally, I'm happy to see USPTO make another decision that makes sense. They seem to make so few of those. If iPad Mini were approved, we might see Baby Chevy and Cadillac Extra on the market next year, along with Hoover Sucker - the possibilities are end

        • Personally, I'm happy to see USPTO make another decision that makes sense.

          I agree, but am worried that it may be just a fluke.

    • by PopeRatzo (965947)

      Nobody gives a rats ass that Apple can't get a trademark on something they technically already have a trademark on.

      "Technically"?

      • Re:So? (Score:4, Insightful)

        by mooingyak (720677) on Sunday March 31, 2013 @11:03PM (#43328169)

        Nobody gives a rats ass that Apple can't get a trademark on something they technically already have a trademark on.

        "Technically"?

        I assume Apple still has the trademark on "iPad", so lacking the "iPad Mini" trademark doesn't exactly allow competetors to go out and release their own products called "iPad Mini"

        • by slew (2918)

          Nobody gives a rats ass that Apple can't get a trademark on something they technically already have a trademark on.

          "Technically"?

          I assume Apple still has the trademark on "iPad", so lacking the "iPad Mini" trademark doesn't exactly allow competetors to go out and release their own products called "iPad Mini"

          Although I think this give competetors free license to make say an Slate "mini" or Nexus "mini" whilst Apple can only fume on the sidelines...

    • Exactly this. It's a non-story. They aren't saying Apple doesn't have trademark over iPad Mini, but that 'iPad Mini' is already considered a trademark because iPad is already thus trademarked.

      • by Compaqt (1758360)

        It's far from a non-story.

        Remember, it's Apple we're talking about here, the company that thinks they have a Royal Patent to exclusively use the phrase App Store for their application store.

        Now that we're seeing a modicum of sanity from the USPTO, I guess we can look forward to a more humble Apple.

  • Summary quality (Score:5, Insightful)

    by aBaldrich (1692238) on Sunday March 31, 2013 @02:20PM (#43325665)
    It's ok to comment the news in the summary, but this has gone too far. "Apple is bad, you must hate Apple." Come on.
  • by Anonymous Coward

    Protection of the "iPad" will have to do.

  • by 93 Escort Wagon (326346) on Sunday March 31, 2013 @02:28PM (#43325725)

    ... our hopes of seeing an iPad Maxi are dashed, then?

  • Who else? (Score:2, Interesting)

    by hahn (101816)
    Who else is actually going to name their product iPad Mini hoping that it will confuse buyers looking for Apple's iPad Mini? Oh, I see you there Samsung...
    • by jedidiah (1196)

      Apple might try to sue Samsung over trying to sell a Galaxy Mini or Google over selling a Nexus Mini or Dell over selling a Dell Mini.

    • Re:Who else? (Score:4, Informative)

      by phantomfive (622387) on Sunday March 31, 2013 @04:36PM (#43326387) Journal
      No, because Apple already trademarked iPad. It was Apple going for their usual hyper-protective trademarking stance. In actuality it wasn't necessary to trademark, they have protection on the name iPad, so this won't really affect anything. It's not unreasonable to say iPad mini is just a description of a small iPad.
      • by gtall (79522)

        Actually it was probably trying to trademark a name they feared some other entity would trademark and then cause them grief. If it couldn't be trademarked, Apple doesn't care since then no one else will be able to either.

  • iPad(tm) Mini. Simple as that.

    They already have a trademark on iPad, so it makes sense and would have saved them the filing fee, as miniscule as it probably was.

  • by russotto (537200) on Sunday March 31, 2013 @02:35PM (#43325767) Journal

    The rejection states that "iPad" itself is also merely descriptive. If this holds up (and I doubt it will), Microsoft could make a "Microsoft iPad", and LG, Samsung, Asus, would also be able to make "iPad" devices of their own. This would be a disaster for Apple, but I seriously doubt it is going to happen.

    • by Dracos (107777) on Sunday March 31, 2013 @02:45PM (#43325845)

      Come on, most of Microsoft's software products have merely descriptive names: Windows, Word, Internet Explorer...

    • Re: (Score:3, Funny)

      by wisnoskij (1206448)

      But, but, but they put their "i" in front of it. Everyone knows that they own the lowercase "i".

      • Yes, you have paid Apple for the "i" on your keyboard? Oh wait, I just looked at mine, Thankfully it is an upper case. I'm safe.
    • by sanchom (1681398)

      The rejection states that "iPad" itself is also merely descriptive.

      I think Apple would have a good counter-argument in that "iPad" has acquired secondary meaning, and that consumers use that mark to distinguish between wares made by Apple and those made by others.

      A mark being "merely descriptive" is a prohibition against registration unless that mark has acquired secondary meaning via extensive use in the marketplace.

      • by sribe (304414)

        I think Apple would have a good counter-argument in that "iPad" has acquired secondary meaning, and that consumers use that mark to distinguish between wares made by Apple and those made by others.

        A mark being "merely descriptive" is a prohibition against registration unless that mark has acquired secondary meaning via extensive use in the marketplace.

        I think that Apple would have a good counter-argument in that "iPad" has already been registered ;-)

        • by sanchom (1681398)
          Ya that too :) I don't know what russotto talking about when he/she said:

          The rejection states that "iPad" itself is also merely descriptive. If this holds up (and I doubt it will), Microsoft could make a "Microsoft iPad", and LG, Samsung, Asus, would also be able to make "iPad" devices of their own. This would be a disaster for Apple, but I seriously doubt it is going to happen.

          • by sribe (304414)

            Ya that too :) I don't know what russotto talking about when he/she said:

            It seems that if the examiner's reasoning were to be applied to an application for "iPad", then that application would be denied. That much is true, but where russotto errs is in thinking that anything in this action could actually be applied to the existing trademark--or in thinking that this reasoning is more correct than the reasoning of the examiner who originally accepted "iPad".

    • The rejection states that "iPad" itself is also merely descriptive. If this holds up (and I doubt it will), Microsoft could make a "Microsoft iPad", and LG, Samsung, Asus, would also be able to make "iPad" devices of their own. This would be a disaster for Apple, but I seriously doubt it is going to happen.

      ... except for the fact that Microsoft, Samsung, Asus, and LG would be infringing Apple's Trademark Reg. No. 3776575 for "IPAD" [uspto.gov].

      Specifically, the rejection states that "iPad" itself is also merely descriptive, but Apple can submit evidence to show that that term has acquired secondary meaning and distinctiveness in the marketplace... and that other registered mark is conclusive evidence.

    • by Guy Harris (3803)

      The rejection states that "iPad" itself is also merely descriptive.

      If that means the USPTO plan to withdraw the registration for iPad, then it's probably goodbye iPhone as well. The prospect of either of those happening would probably be sufficient to cause Apple Legal to spin up into fully-operational-battle-station mode; the prospect of both should bring galaxy-buster-scale weapons into play.

    • by Dcnjoe60 (682885)

      The rejection states that "iPad" itself is also merely descriptive. If this holds up (and I doubt it will), Microsoft could make a "Microsoft iPad", and LG, Samsung, Asus, would also be able to make "iPad" devices of their own. This would be a disaster for Apple, but I seriously doubt it is going to happen.

      Wouldn't this be similar to Bandaid brand bandages, then?

  • by sribe (304414) on Sunday March 31, 2013 @02:37PM (#43325789)

    They don't have a trademark on Mac mini either, and I assume the reason is the same. So why even bother???

    • by Anonymous Coward

      It is so they could start going after competitors that use "mini" in their name. For example Surface Mini, Tab Mini, Xoom Mini etc.

      It was very sneaky and it's good that UPSTO caught on that.

      • by sanchom (1681398)

        It is so they could start going after competitors that use "mini" in their name.

        This isn't true. The test for confusion looks at the entire mark.

        A trademark on "iPad Mini" wouldn't prohibit others from using the word "Mini" as part of another mark, unless that causes confusion with the original. For example, I doubt that a court would find "Surface Mini" confusing with "iPad Mini".

    • by AmiMoJo (196126) *

      Lawyers like to look busy by photocopying loads of trademark application forms and putting down every possible product and brand name.

  • USPTO is correct on this, it's like someone getting a trademark on Extra LargeT-shirt.

    • Re:XL T-shirt (Score:5, Insightful)

      by magic maverick (2615475) on Sunday March 31, 2013 @02:51PM (#43325885) Homepage Journal

      Hey, I sell a beer called "Extra Large T-Shirt", and I'll have you know, the name is protected by trademark law. No other company can legally sell a beer called "Extra Large T-Shirt" in my geographical region. In fact, I sell a variety of beers with the "T-Shirt" mark, "Extra Large" just being one. "Large", "Medium" and "Small" are the others. The alcohol content goes from 12% for the XL, 9% for the L, 6% for the M and 3% for the S.

      • by BillX (307153)

        Yes, that is perfectly acceptable in trademark law - "extra large t-shirt" (or any other t-shirt) would not be descriptive of beer. If the examiner was paying attention, they probably made you disclaim the size qualifiers as part of the mark, as these ARE descriptive for beverages.
        Magic Hat Brewing can sell Magic Hat (Beer) and own that name in their market ("beverages", more or less). It would likely be considered "merely descriptive" of a top hat sold by a magic-trick shop, though.

    • It's only like that if that same someone already had a trademark on "LargeT-shirt" and are suddenly being challenged because they put the word "Extra" in front of it, which seems ridiculous to me.
  • The patent information is more than just the 'mini' suffix; they state the "i" in iPad, as well as the "Pad" in iPad, are also merely descriptive. When they named the iMac in 1998, the 'i' prefix was more novel that it was now. i wonder what position that puts the next 'iPhone' in for trademarks.

    Apple's (i.e. Jobs') naming strategy was to make product names as simple and representative as possible to the product or function (e.g. iTunes, iMac, iPod). It is interesting that their nomenclature may be a
    • by jonbryce (703250)

      "Word" and "Illustrator" are descriptive and you can use them in your word proceesing and vector graphics applications. "Microsoft" and "Adobe" are not descriptive. They identify the word processing and vector graphics applications made by those respective companies, and are trademarked.

  • Well what about the Mini Cooper, Mini M&Ms, Micro Machines? Or Apple's previous products: Mac Mini, iPod Mini, iPod Nano? I'm curious to know if these had been previously trademarked? If so then is IPTO inconsistent?
    • by sribe (304414)

      Or Apple's previous products: Mac Mini, iPod Mini, iPod Nano? I'm curious to know if these had been previously trademarked?

      No, no, yes. (As 5 seconds at uspto.gov would have revealed.) So I guess "nano" is a less common work--or perhaps it's not a word in common usage, but a prefix. "Mini" means small, literally descriptive, while "nano" means 1 billionth, not exactly literal?

      • Well in computers, mini and micro were somewhat descriptive. Today's PCs are considered microcomputer as the original computers like ENIAC took up an entire room. A PDP-11 was considered a mini-computer as it was the size of refrigerator.
    • by russotto (537200) on Sunday March 31, 2013 @02:55PM (#43325921) Journal

      "Mini Cooper" isn't merely descriptive -- there's no large Cooper that a Mini Cooper is a small version of.

      "M&M's Minis" indeed trademarked, but contains the disclaimer "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "MINIS" APART FROM THE MARK AS SHOWN". The USPTO suggests that if Apple wants the mark, they should re-apply with a similar disclaimer (once they get past iPad itself being descriptive)

      "Mac Mini" is not a registered trademark, nor is "iPod Mini"

      "iPod Nano" is trademarked without the disclaimer.

      "Micro Machines" has a disclaimer on "Machines". It's probably considered other than descriptive because it refers specifically to toy vehicles, not "machines" in a general sense.

      And yes, the USPTO is inconsistent.

  • Copyright is completely fucked. Trademark law is more or less sensible, and does useful things to protect consumers. This is an example.

  • by Warhawke (1312723) on Sunday March 31, 2013 @02:59PM (#43325937)
    Descriptive terms can still have a trademark where they have acquired a secondary meaning in the marketplace, which is how iPhone and iPad have survived. From the USPTO refusal:

    Applicant is advised that, if the application is amended to seek registration on the Principal Register underTrademark Act Section 2(f) in part, applicant must disclaim the descriptive wording “MINI” apart fromthe mark as shown because it merely describes a characteristic or feature of applicant’s goods.

    And then:

    Applicant should submit a disclaimer in the following standardized format: No claim is made to the exclusive right to use “MINI” apart from the mark as shown.

    Essentially the problem is that the whole term "iPad Mini" is descriptive, because even if "iPad" were (and it is) a protected trademark, you can't say "small iPad" and make that whole mark trademark-able, which is what "iPad Mini" attempts to do. While the application deconstructs the "iPad" term as merely descriptive (which is unfortunate because it probably makes this ruling appealable, since I don't think the prior trademark applications relied on the secondary meaning exception to a descriptive mark), that's just salt in the wound. The real reason it was denied is because they tried to call their iPad "Mini" and trademark the whole term. It's still quite possible for Apple to use the "iPad(R) Mini" mark denotation.

    Also, for those who don't know, (R) is a registered trademark that has been filed with and approved by the USPTO, whereas (TM) is an unfiled trademark that you nevertheless use in business that could stand up to another company using your trademark. (R) [federal] will always trump (TM) [state].

  • by 140Mandak262Jamuna (970587) on Sunday March 31, 2013 @03:14PM (#43326027) Journal
    There must tons and tons of products and registered trademarks around the name Padmini in India. An actress Padmini (no lastname) [google.com] is the top hit for Padmini in google. I know at least one car model was named Padmini. Every town will have a cafe or a grocery store or a hotel (lodge in local parlance) named Padmini. So I would not be surprised if some one there challenges iPad mini as "too similar to my registered brand name" there. Even if the case has no merit someone might sue just for the publicity or with some hope of reaching a settlement with a multinational company with deep pockets.
    • by Nyder (754090)

      There must tons and tons of products and registered trademarks around the name Padmini in India. An actress Padmini (no lastname) [google.com] is the top hit for Padmini in google. I know at least one car model was named Padmini. Every town will have a cafe or a grocery store or a hotel (lodge in local parlance) named Padmini. So I would not be surprised if some one there challenges iPad mini as "too similar to my registered brand name" there. Even if the case has no merit someone might sue just for the publicity or with some hope of reaching a settlement with a multinational company with deep pockets.

      Doesn't matter unless a Padmini is making electronics & computers, then it might be a lawsuit.

      • OK, let us say that you are one of the thousands of "little plastic sticker for you forehead" makers who hawks the "Padmini Bindis, the Best Bindi [google.com] for your forehead". And you are looking for some kind of free publicity and a brand distinction from all other bindi makers. Wouldn't you be tempted to sue Apple, just for the sake of publicity? Not saying Padmini sandals or Padmini ice cream cones or Padmini costermongers and blood orange purveyors would have a case. But wouldn't they be tempted?
  • by gnasher719 (869701) on Sunday March 31, 2013 @03:29PM (#43326093)
    Apple didn't lose the "iPad Mini" trademark. They applied for the iPad Mini trademark, and it wasn't granted on the very first attempt. Nothing unusual there.
    • by Bigby (659157)

      I think it is unusual that they (USPTO) didn't rubber stamp it like everything else. They actually used a brain and made an informed decision. Most of these go through approved and are only invalidated on a challenge later down the road. Much like patents...

  • But if Apple have not had the trademark, how can they have lost it? I think the OP title is misleading.
  • That was in Mexico, not Brazil!
  • Change the names of the current ipad mini to ipad. Then call the original one, maxi ipad. That will take care of the issues.
  • by Tablizer (95088)

    Disney had to rename Minnie Mouse to "Mouse 0.5".

  • After reading a few details of this initial rejection on the MacRumors site, I can only think that the examiner wanted to show himself as an ass.

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