Apple's 'iPad Mini' Trademark Application Initially Denied, but Resolution Should Be Simple

Over the weekend, Patently Apple reported that the U.S. Patent and Trademark Office had refused Apple's trademark application for the term "iPad mini". While some such as The Verge's Nilay Patel were quick to note that the refusal was simply a first office action that is nowhere near final, the refusal does offer an interesting glimpse into the thinking of patent examiners.

The examiner's primary objection to Apple's application takes the view that the term is "merely descriptive" rather than creating a unique brand name that is worthy of protection. The examiner argues that all elements of the name, including "i", "Pad", and "mini" are not unique to the product being named.

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”.

The examiner goes on to suggest a means by which Apple could argue for uniqueness, noting that the company would have to specifically claim that its existing "iPad" trademark has acquired distinctiveness. This would appear to be a trivial argument for Apple to make, but it seems that it did not do so in its initial "iPad mini" application.

The examiner also notes that Apple should include a disclaimer noting that it is only attempting to claim a trademark on "mini" when used as part of the entire "iPad mini" term, as other companies should be permitted to use the descriptive term "mini" for their own products.

As a secondary objection, the patent examiner ruled that Apple's specimen submitted with the application was insufficient to prove that it was for a product being offered for sale. Apple's specimen showed the iPad mini overview page as it appeared at launch last year, with the examiner arguing that the "iPad mini" text and the "Buy Now" button were not in close enough proximity.

The mark and picture of the goods on the specimen are not sufficiently proximate to the “buy now” tab, and it is thus unclear what consumers would be purchasing by clicking on this tab.

ipad_mini_trademark_specimen

Apple's "iPad mini" trademark specimen

As with the prior objection, the examiner in this case offers Apple several means to rectify this issue, including using an alternative specimen that more clearly shows the item is being offered for sale as of the date being claimed in the application, or a shift to an "intent to use" application that requires no initial specimen and instead requires that Apple simply show that at some later date it did indeed offer the item for sale.

Related Roundup: iPad mini
Buyer's Guide: iPad Mini (Caution)
Related Forum: iPad

Top Rated Comments

Peace Avatar
126 months ago
Is this examiner crazy or what ?

I'm baffled. The buy button isn't close enough and the consumer wouldn't know what they were buying ?


:confused:
Score: 18 Votes (Like | Disagree)
GeekGuys Avatar
126 months ago
April Fools ?!?!?!?!?!
Score: 15 Votes (Like | Disagree)
kayloh20 Avatar
126 months ago
As weird as it sounds, I kind of understand the examiner's points about the iPad mini name...but his or her point about the "buy now" button is essentially calling consumers idiots.
Score: 9 Votes (Like | Disagree)
Dulcimer Avatar
126 months ago
The patent examiner's explanations for the "i," "Pad," and "mini" trademarks are hilarious!
Score: 8 Votes (Like | Disagree)
kdarling Avatar
126 months ago
For I and pad yes. Particularly since i=internet was an Apple 'invention'.
The "i" prefix was NOT an Apple invention. Apple's ad agency was simply following the popular trend of the time.

We've been over this many times before. Reference my post showing dozens of "i" device trademarks that predated Apple's usage:

https://forums.macrumors.com/showpost.php?p=16795467&postcount=265

As for "pad" computer, that's an old term just like "slate".

--

This application should be able to go through after Apple makes the changes that the examiner asked for, such as denying any claim to the word "mini" by itself.

It's basically the same sequence Apple went through when applying for "App Store". They were first denied because they used common descriptive words, same as in this case.

Then they came back and re-applied on the grounds of "Acquired Distinctiveness", and provisionally got it. (Microsoft filed an opposition, and it's all still pending.)
Score: 7 Votes (Like | Disagree)
Menel Avatar
126 months ago
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 lower case "i" prefix has denoted Intel micro-controllers since the 1970's... when referring to technology products.

e.g. i8080, i286, i386, i5, i7, etc.

Score: 7 Votes (Like | Disagree)

Popular Stories

iphone 14 pro hands snowflakes 1

Best Black Friday iPhone Deals Still Available

Wednesday November 23, 2022 1:55 pm PST by
Cellular carriers have always offered big savings on the newest iPhone models during the holidays, and Black Friday 2022 is no different. Right now we're tracking notable offers on the iPhone 14 and iPhone 14 Pro devices from AT&T, Verizon, and T-Mobile. For even more savings, keep an eye on older models like the iPhone 13. Note: MacRumors is an affiliate partner with some of these vendors....
ipad holiday bulbs

Best Black Friday iPad Deals Still Available

Thursday November 24, 2022 12:25 pm PST by
Black Friday deals have been in full swing for the better part of a month, and now that the shopping holiday is officially here we're seeing even more solid discounts on Apple devices. We're highlighting the best sales for all of Apple's product lines, and in this article you'll find the best Black Friday sales on iPad, iPad Pro, iPad Air, and iPad mini. Note: MacRumors is an affiliate partner ...
General Black Friday Deals 2022 Green

All the Apple Black Friday Deals You Can Still Get

Friday November 25, 2022 4:40 am PST by
Although Black Friday is now technically over, many Apple products are still seeing major discounts. In this article, you'll find every Apple device with a notable Black Friday sale that's still available. We'll be updating as prices change and new deals arrive, so be sure to keep an eye out if you don't see the sale you're looking for yet. Note: MacRumors is an affiliate partner with some of...
apple watch gold ornaments

Best Black Friday Apple Watch Deals Still Available

Wednesday November 23, 2022 9:31 am PST by
We're tracking all of the best Apple product discounts for Black Friday this week, and the Apple Watch always makes a great gift around the holiday season, so you're guaranteed to find solid discounts right now. In this article, you'll discover the best Black Friday sales on Apple Watch Series 8, Apple Watch SE, and Apple Watch Ultra. Note: MacRumors is an affiliate partner with some of these...
mac imac snowflakes

Best Black Friday iMac and MacBook Deals Still Available

Thursday November 24, 2022 1:07 pm PST by
Our Black Friday coverage continues today with the best deals you can find on MacBook Pro, MacBook Air, and iMac. As with all Black Friday deals, we aren't sure how long any of these will last, and prices are always fluctuating, so if you see something you want, be sure to buy it soon. Note: MacRumors is an affiliate partner with some of these vendors. When you click a link and make a...
airpods pro 2

Apple Engineer Addresses Lack of Lossless Support on New AirPods Pro

Friday November 25, 2022 2:58 am PST by
An Apple engineer has addressed the lack of lossless audio support in the second-generation AirPods Pro in a new interview. Current Bluetooth technology in the AirPods lineup means that Apple's audio products do not support Apple Music Lossless audio. Apple has previously hinted that it may develop its own codec and connectivity standard that builds on AirPlay and supports higher quality...
maxresdefault

Nothing Phone 1 Displays AirPods Battery Level After Latest OS Update

Friday November 25, 2022 3:33 am PST by
Nothing Phone 1 users today began receiving the Nothing OS 1.1.7 update, which adds support for displaying the battery percentage of connected AirPods, amongst other improvements and bug fixes. If you own a Nothing Phone 1, you can check for the OTA update by going to Settings -> System -> System updates. Bear in mind that as support for displaying AirPods battery level is still an...
new airpods lineup black friday

Best Black Friday AirPods Deals Still Available

Tuesday November 22, 2022 10:01 am PST by
Although we've been tracking Black Friday deals for a few weeks now, the shopping holiday is officially kicking off this week and we're highlighting the best sales for each of Apple's product lines. In this article, you'll find the best Black Friday sales on AirPods 2, AirPods 3, AirPods Pro, AirPods Pro 2, and AirPods Max. Note: MacRumors is an affiliate partner with some of these vendors....
Manchester United flag

No, Apple Isn't Planning to Buy Manchester United

Thursday November 24, 2022 12:19 pm PST by
Apple is not currently planning to purchase Premier League club Manchester United, according to a source familiar with the matter. A report earlier today from British tabloid The Daily Star claimed that Apple had expressed an interest in buying Manchester United for around $7 billion, but our source with direct knowledge of the situation said the report is false. Manchester United has...