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U.S. Patent Office Withdraws Primary Objections to Apple's 'iPad Mini' Trademark Application

Last week, we noted that the U.S. Patent and Trademark Office (USPTO) had issued an initial office action denying Apple's application for a trademark on the term "iPad mini".

The examiner's primary objection to Apple's application related to all of the elements of the "iPad mini" name having been judged as descriptive rather than contributing to a unique product name. A second objection related to Apple's use of the iPad mini overview page as its specimen proving that the named product was being offered for sale.

ipad_mini_promo
At the time, we noted that a resolution to the issue would likely be relatively straightforward, with Apple simply needing to show that the "iPad mini" term was an extension of its already distinctive "iPad" trademark and submit a new specimen satisfying the examiner's objection.

Based on a newly published office action from the USPTO, dated last Wednesday, the issue has in fact mostly been resolved without Apple having had to address the examiner's objections. Presumably responding to the publicity surrounding the initial decision, the USPTO has preemptively withdrawn its two main objections to Apple's objections.
This Office action supersedes any previous Office action issued in connection with this application.

Upon further review of the application, the examining attorney has determined that the following refusals issued in the initial Office action should be withdrawn. The examining attorney apologizes for any inconvenience caused.

REFUSALS WITHDRAWN:

The Trademark Act Section 2(e)(1) descriptiveness refusal and the Sections 1 and 45 specimen refusal are both withdrawn.
The new document continues to alert Apple to several other issues with the trademark application, including potential refusal should earlier pending applications from other companies seeking to protect the names of their electronics products with "mini" in them end up being granted. No action on this issue is, however, required by Apple at this time.

The document also holds firm on the requirement that Apple add a disclaimer to its application noting that it only seeks to protect the term "mini" when used as part of the "iPad mini" name. The disclaimer would allow other companies to use the "mini" term in their own product names.

Related roundup: iPad mini 3

Top Rated Comments

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22 months ago
The reviewer was stupid anyway, I can understand the whole mini thing but seriously complaining that the buy button on the site wasn't to his liking?.
Rating: 10 Votes
22 months ago
Typical Government bureaucracy. Government can't even deliver mail without going into billions of debt every year. :rolleyes: More and bigger Government is what we need. :rolleyes:
Rating: 7 Votes
22 months ago

Darn, well I guess this means I can't name my next child "iPad Mini" after all. Had my hopes up.


Since this is about commercial trademarks, were you intending to sell your child?
Rating: 5 Votes
22 months ago
Darn, well I guess this means I can't name my next child "iPad Mini" after all. Had my hopes up.
Rating: 4 Votes
22 months ago
Yawn. Wake me up tomorrow with good news!
Rating: 4 Votes
22 months ago

Ah, those objections were real and not an April's Fools prank?


Seems they were both real and an April's fool prank at the same time, since the USPTO withdrew them without Apple doing anything. The "i = internet" was nonsense, as shown by 200 million iPods without internet access. "Small iPad" or "8" iPad" would be descriptive, "iPad Mini" which less so. And claiming that a whole page advert for an iPad Mini with a "Buy now" button doesn't show the iPad Mini is for sale, that's nonsense.

So I suppose someone pranked his collegues at the USPTO, and everyone else. Of course everything the USPTO does is by definition "real".
Rating: 4 Votes
22 months ago
As someone who has had several trademark applications initially denied, and later approved, this comes as no surprise. The USPTO works in mysterious ways.
Rating: 3 Votes
22 months ago

Well, no you couldn't trademark that because the word "iPad" is already Apple's. Now... "gnasher's mini" would be completely acceptable. (Not intended to be a reflection of your manhood BTW :D)

That's what I don't understand. Apple didn't need to register anything and it just sounds like it's a cover-your-ass thing.


Well with all the patent/trademark trolls and samesungs out there Apple needs to make sure it's collective ass is very well covered.
Rating: 2 Votes
22 months ago
Apple is not trying to trademark the term "mini". It is trying to trademark the term iPad Mini. There is a world of difference between the two.
Rating: 2 Votes
22 months ago
Apple should just buy every word in the English language.
Rating: 2 Votes

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