Apple unable to trademark "iPad Mini" as it's too descriptive

As one of the most successful tablets on the market, Apple's iPad has been a resounding success. You'd expect the company to have the rights to the iPad name tightly locked-down... but they can't trademark "iPad Mini", according to the US Patent and Trademark Office who issues a first Office Action which is the initial step in the process to deny the trademark.

The US Patent and Trademark Office rejected the bid to trademark the name, saying that it was "merely descriptive", and did not do enough to conjure an image. Ouch!

You can almost see the Patent Office's argument though; the 'Mini' is merely a suffix on a well-established Apple name, so might be a little unnecessary to trademark.

Apple is still in with a shot of getting the name trademarked, if they can win the Patent Office over before July. That’s three months to do so, and we wouldn't be surprised if there was a trademark given out during that period.

The Cupertino-based company's claim to the name dates all the way back to January. The Patent Office sent a letter to the company in January, but it has only now reached the internet.

Source: BBC

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What? The letter states the description wasn't enough. Someone at Engadget can't read.

QUOTE 1 - Applicant has applied to register the mark IPAD MINI for “handheld mobile digital electronic device comprising a tablet computer, electronic book and periodical reader, digital audio and video player, camera, electronic personal organizer, personal digital assistant, electronic calendar, and mapping and global positioning system (GPS) device, and capable of providing access to the Internet and sending, receiving, and storing messages and other data”.

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 be understood by the purchasing public to refer to the Internet when used in relation to Internet-related products or services. Applicant's goods are identified as “capable of providing access to the Internet”.


QUOTE 2 - 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 computer contained in a touch screen.” Please see the attached dictionary definition. In addition, the attached excerpts from third party websites show descriptive use of the term “pad” in connection with tablet computers. This marketplace evidence shows that the term “pad” would be perceived by consumers as descriptive of “pad computers” with internet and interactive capability. Applicant's goods are identified as “a handheld digital mobile electronic device comprising tablet computer”.

QUOTE 3 - The term “MINI” in the applied for mark is also descriptive of a feature of applicant's product. Specifically, the attached evidence shows this wording means “something that is distinctively smaller than other members of its type or class”. See attached definition. The word “mini” has been held merely descriptive of goods that are produced and sold in miniature form. See Gen. Mills, Inc. v. K-Mar Foods, Inc., 207 USPQ 510 (TTAB 1980) (holding MINI MEAL merely descriptive of concentrated nutritionally-complete food bars); In re Occidental Petroleum Corp., 193 USPQ 732 (TTAB 1977) (holding MINI PELLETS merely descriptive of pelleted fertilizer).

The examining attorney has also attached evidence from an internet search showing third party descriptive use of the term “mini” to describe the small size of various handheld digital devices. See attached evidence. Therefore, the wording merely describes a feature of applicant's goods, namely, a small sized handheld tablet computer.

As demonstrated, applicant's mark comprises a combination of descriptive terms. Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable. In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012); TMEP §1209.03(d); see, e.g., In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows where the evidence showed that the term “BREATHABLE” retained its ordinary dictionary meaning when combined with the term “MATTRESS” and the resulting combination was used in the relevant industry in a descriptive sense); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663 (TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive of theater ticket sales services because such wording “is nothing more than a combination of the two common descriptive terms most applicable to applicant's services which in combination achieve no different status but remain a common descriptive compound expression”).


They basically stated, the terms used were nothing more than "generallities". In other words as they stated, the definitionsoffered nothing that made the names unique enough to warrant a patent. WHich is exact right. Mini referred typically to something smaller than another product or thing that is exactly the same only larger.

I would use examples like, Frosted Mini Wheats which is smaller than a larger Frost Wheat version. Or Mini Mart which is a small version of a larger Mart. The Mini Cooper however is unique in that there isn't a larger Cooper in the same family, but I am not sure if that name wa strademarked or patented.

Wait, they can get a patent on a "rectangular device with rounded corners", but can't get a
trademark for "iPad mini"?

C'mon... Obviously they haven't paid someone!

Torolol said,
so chinese-based knockoff can made something like ipad smally ?

No, that would infringe on the iPad trademark.

the stated, the iPad Mini os no different from its sibling other than size. mini mwans small or smaller. if Apple was granted this they wo I ld be suing anyome that has mini in their name.

looks like the last patent office is growing up. if theu had alllwed this I woild have written a long lettet whether they woild have read it or not

The Cupertino-based company's claim to the name dates all the way back to January

Wow, two whole months ago. That really is a long way back.
/s

Would be nice if people got the name right for a change: iPad mini, not iPad Mini. And yes, it matters. Seems like the only company/people that ever get it spelled correctly is Apple and their employees - what is it with reporters and websites that just can't get stuff correct?

Wow, you're a hardcore Apple stan lol. You must have nothing else going on if a stupid capital in a product name bugs you that much. If you haven't roamed the internet throughout the past few years/decades, you'll see that people misspell even the easiest of words, and some sadly on purpose. Move on and worry about more important things life bud.

j2006 said,
Wow, you're a hardcore Apple stan lol. You must have nothing else going on if a stupid capital in a product name bugs you that much.

Thousands of people with a full time job and obviously a life, design and create products for Apple. They don't have anything else going on because they happen to care about the spelling and usage of the name of their products?

You to are also carrying on the cliche insult from the past years of the internet by saying you don't have a life for whatever reason. Come on now..

Yes I must also be a hardcore "Apple stan" for agreeing with br0adband right?

statm1 said,

Thousands of people with a full time job and obviously a life, design and create products for Apple. They don't have anything else going on because they happen to care about the spelling and usage of the name of their products?

You to are also carrying on the cliche insult from the past years of the internet by saying you don't have a life for whatever reason. Come on now..

Yes I must also be a hardcore "Apple stan" for agreeing with br0adband right?


I was not talking about his job. I'm saying he doesn't have to be so anal about a stupid letter. Trust me, it irks me everytime I see people tYpe L!ke Dis and grammar/spelling mistakes everywhere as well. It also irks me when people call a Windows Phone a "Windows phone" or "Windows 8 phone". But complaining and whining about it won't do anything about it. People sadly don't care about that anymore, and it's only going to get worse unless somehow everything that gets posted online gets auto-corrected lol.

statm1 said,

Thousands of people with a full time job and obviously a life, design and create products for Apple. They don't have anything else going on because they happen to care about the spelling and usage of the name of their products?

You to are also carrying on the cliche insult from the past years of the internet by saying you don't have a life for whatever reason. Come on now..

Yes I must also be a hardcore "Apple stan" for agreeing with br0adband right?


It was the dramatic nature of the OP's response about something so miniscule that made it borderline-pathetic of a comment. Seriously, there's bigger things in life to worry about. And for someone agreeing with someone's attention to detail, please use proper grammar: You TOO not "You to."

Now THAT'S a mistake that I've seen many get upset about. :-)

Trueblue711 said,

It was the dramatic nature of the OP's response about something so miniscule that made it borderline-pathetic of a comment. Seriously, there's bigger things in life to worry about. And for someone agreeing with someone's attention to detail, please use proper grammar: You TOO not "You to."

Now THAT'S a mistake that I've seen many get upset about. :-)

Oops... You put your full stop (period), inside the quotes, which suggests that he also put one. In this case, you should have put it outside the quotes. Don't correct someone who's correcting someone and make your own mistake! Lol

Spirit Dave said,

Oops... You put your full stop (period), inside the quotes, which suggests that he also put one. In this case, you should have put it outside the quotes. Don't correct someone who's correcting someone and make your own mistake! Lol


But I'm not the one getting all up in arms about minor mistakes. That was the point of my post.

Trueblue711 said,

But I'm not the one getting all up in arms about minor mistakes. That was the point of my post.

The problem you and everyone else (save for one or two intelligent ones that actually got the gist of my post) is that it does matter - all we have is language to communicate so when it gets disrespected because of those so-called minor mistakes it just snowballs out of control.

Sorry, but I've been "online" and communicating with raw text like this post since the mid-1970s when Dow Jones News and Information Retrieval Service was born and then on to CompuServe in 1979, so forgive me when I say this but:

Every letter counts. Grammar counts. Spelling counts. Punctuation counts.

If you don't think so, then do yourself and everyone else a favor and pull a "kthxbye" proving everything I'm pointing out and move along.

j2006 said,

I was not talking about his job. I'm saying he doesn't have to be so anal about a stupid letter.
You made no mention of grammar mistakes in your OP though. My whole point is you saying he must not have much going on and that leads to why I brought up him and everyone at Apple as having a job and life. Obviously they has plenty going and still chooses to make a big deal out of spelling and usage of words.

But now you being hypocritical by making the same point of the usage of Windows Phone? Make up your mind, either usage doesn't matter or it does.

It was rejected because "iPad" was judged merely descriptive. Check that USPTO letter, especially the evidence of being merely descriptive (the web searches for "pad" and "i"). Not because "mini" was. The "iPad" part was rejected.

Rosyna said,
It was rejected because "iPad" was judged merely descriptive. Check that USPTO letter, especially the evidence of being merely descriptive (the web searches for "pad" and "i"). Not because "mini" was. The "iPad" part was rejected.
did u actually read the letter? here let me help you.

The term “MINI” in the applied for mark is also descriptive of a feature of applicant's product. Specifically, the attached evidence shows this wording means “something that is distinctively smaller than other members of its type or class”. See attached definition. The word “mini” has been held merely descriptive of goods that are produced and sold in miniature form. See Gen. Mills, Inc. v. K-Mar Foods, Inc., 207 USPQ 510 (TTAB 1980) (holding MINI MEAL merely descriptive of concentrated nutritionally-complete food bars); In re Occidental Petroleum Corp., 193 USPQ 732 (TTAB 1977) (holding MINI PELLETS merely descriptive of pelleted fertilizer).

Because one can. And does a lot. Not aimed at anything in particular, though. Just like "the uninformed", which shall remain nameless. Corruption is the very definition of business.

Your stilted naivete (or I'm afraid of what else that is) does you no credit here.

rippleman said,
prove it that the patent office has ever taken money after turning down a patent just to have it pushed through.
not being to prove something doesnt make it false. we know officials get paid for stuff or get grsnted favors. its just a poi t of when u may get caught.

acting like such doesnt happen is pure ignorance. I mean think of this.. how the heck did they get slide to unlock patent when there existed the same concept on a pbo e that ran Windows CE? the only different was there wasnt a graphic.

I'm challenging your "uninformed" statement, not the patent office, to hell with the latter. I claim that the part of "the absence of information" is meant as "ignorance" and "stupidity", which is annoying, offensive, unacceptable, and, regretably, a great deal of custom here.
I challenge that you happen to be more informed and able to present accurate findings without involving the burden of proof card. Withholding such valuable material is not contributing to the discussion in any way, moreso even anti-contributory if coupled with the "uninformed" part.
Instead, I am sure that you are as uninformed about these proceedings as the rest of us, but persist to make "uninformed" comments still. Why is that?

None of us know. That's why we comment, speculate and, as per custom, insult each other for squat. If we had definite proof, we'd rather take action, don't you think?

Edited by Phouchg, Apr 1 2013, 11:23am :

True, my comment came off as harsh. It is also known that you can't "buy" the patent office off since it doesn't work that way. Try it, you will see for yourself. In business you are correct that it happens everyday. My comment in particular was at the person who said "apple will write a big check", bull****. It wouldn't had been turned down if it they were going to since the payment would have been expected right from the beginning. People like him are the ones who tarnish the reputations without any proof what so ever and and shows extreme ignorance (typical from teenagers on this site). Your feelings hurt? You offended? Wasn't the intention. My statement remains the same though even if you do not agree with it just as you do not agree with me.

Was Apple able to trademark "Mac mini?" Seems if they could trademark that, they could trademark "iPad mini."

But either way, I'm sure this will be settled with the Patent Office receiving a fat check from Apple.