Apple Loses the iPad Mini Trademark

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."

The devil is in the details

[Warhawke]

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].

Re:They rejected the entire mark, not just "mini".

[Theaetetus]

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.

Re:Who else?

[phantomfive]

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.

Re:Who else?

[hahn]

Straight from the USPTO letter:

...The term “IPAD” is descriptive when applied to applicant’s goods because the prefix “I” denotes“internet.” According to the attached evidence, the letter “i” or “I” used as a prefix and would beunderstood by the purchasing public to refer to the Internet when used in relation to Internet-relatedproducts or services. Applicant’s goods are identified as “capable of providing access to the Internet”. When a mark consists of this prefix coupled with a descriptive word or term for Internet-related goodsand/or services, then the entire mark may be considered merely descriptive...

...The term “PAD” is also descriptive of the applied for goods. The term “pad” refers to a “pad computer”or “internet pad device”, terms used synonymously to refer to tablet computers, or “a complete computercontained in a touch screen.” Please see the attached dictionary definition. In addition, the attachedexcerpts from third party websites show descriptive use of the term “pad” in connection with tabletcomputers. This marketplace evidence shows that the term “pad” would be perceived by consumers asdescriptive of “pad computers” with internet and interactive capability. Applicant’s goods are identifiedas “a handheld digital mobile electronic device comprising tablet computer”...

and the kicker...

...In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or non-descriptive meaning in relation to the goods being small handheld mobile devices comprising tablet computers capable of providing internet access. Therefore, the mark is merely descriptive of a feature or characteristic of the goods and registration is refused under Section 2(e)(1) of the Trademark Act.

The rationale specifically points out that "i" and "Pad" (not just "Mini") are descriptive and NOT unique. At best, it's a poorly worded ruling. At worst, the USPTO didn't bother to check the previous valid trademarking of "iPad".