The US Patent and Trademark Office has denied Apple a trademark on the term “iPad mini.” Despite the popular notion, trademarks are not easy to obtain. Even with all its experienced high-powered attorneys, Apple now finds themselves without a trademark on one of their main product lines. It’s a message to those attorney filing trademarks, that nothing is assured. And, as evidenced by the statements made in the USPTO’s refusal letter, this was a situation that could likely have been avoided.
Examining attorney Lee Ann Berns stated in her refusal letter, “registration is refused because the applied-for mark merely describes a feature or characteristic of the applicant’s goods.” She goes on to say that a trademark is descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.” Here, the word “mini” is merely an identification; that this is the little brother of the standard iPad. Surprisingly, Berns also fell that the iPad name itself was nothing more than a descriptive term.
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. […]
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.” […]
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”.
Apple does hold the trademark for the term iPad, having purchased it from Fujitsu in March 2010.
This trademark issue should be easily resolved, however. The examiner, and the refusal letter, go on to suggest a means by which Apple could argue for uniqueness, saying that the company should specifically claim that it’s existing iPad trademark has acquired distinctiveness. This is something that should be easy for Apple to prove and likely should have been part of the iPad mini application in the first place. Berns also notes that Apple should include a disclaimer saying that it is only attempting to claim a trademark on “mini” when used as part of the entire “iPad mini” term and that other companies should be permitted to use the descriptive term “mini” for their own products. These are small hurdles for Apple and the company will almost certainly file an appeal within the next six months, adding the examiner’s suggestions to the application. In the meantime, this issue is unlikely to have much effect on the heavy demand for the product which sold almost 12 million units in the Q1 2013 alone.