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 5
Buyer's Guide: iPad Mini (Caution)

Top Rated Comments

(View all)
Avatar
99 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)
Avatar
99 months ago
April Fools ?!?!?!?!?!
Score: 15 Votes (Like | Disagree)
Avatar
99 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)
Avatar
99 months ago
The patent examiner's explanations for the "i," "Pad," and "mini" trademarks are hilarious!
Score: 8 Votes (Like | Disagree)
Avatar
99 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)
Avatar
99 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)

Top Stories

Early iPhone 12 Tests Show Ceramic Shield is Stronger and More Scratch Resistant Than iPhone 11 Glass

Friday October 23, 2020 1:21 pm PDT by
Apple's new iPhone 12 models are protected by a Ceramic Shield cover glass that has nano-ceramic crystals infused right into the glass to improve durability. According to Apple, Ceramic Shield offers four times better drop protection than the glass used for the iPhone 11 models. YouTube channel MobileReviewsEh conducted some tests on the iPhone 12 using a force meter to compare its performance ...

iPhone 12 Pro Allows You to Measure Someone's Height Instantly Using LiDAR Scanner

Saturday October 24, 2020 11:12 am PDT by
iPhone 12 Pro models feature a new LiDAR Scanner for enhanced augmented reality experiences, but the sensor also enables another unique feature: the ability to measure a person's height instantly using the Measure app. You can even measure the seated height of a person in a chair, according to Apple. When the Measure app detects a person in the viewfinder, it automatically measures their...

Google Reportedly Pays Apple $8-12 Billion Per Year to be Default iOS Search Engine

Sunday October 25, 2020 2:59 pm PDT by
The United States Justice Department is targeting a lucrative deal between Apple and Google as part of one of the U.S. government's largest antitrust cases, reports The New York Times. On Tuesday, the Justice Department filed an antitrust lawsuit against Google, claiming the Mountain View-based company used anticompetitive and exclusionary practices in the search and advertising markets to ...

Apple References Unreleased 2020 16-Inch MacBook Pro in Boot Camp Update

Monday October 26, 2020 8:42 am PDT by
Last week, Apple released an update for Boot Camp, its utility for running Windows on a Mac. While this update would typically be unremarkable, several of our readers noticed that the release notes reference an unreleased 2020 model of the 16-inch MacBook Pro. While this could easily be a mistake, the 16-inch MacBook Pro is nearly a year old, so it is certainly a worthy candidate for a...

Apple Warns MagSafe Charger Can Leave Circular Imprints on Leather Cases

Friday October 23, 2020 3:23 pm PDT by
If you keep your iPhone in a leather case while charging with Apple's new MagSafe Charger, the case might show circular imprints from contact with the accessory, according to a new Apple support document published today. Apple's leather cases for the iPhone 12 and iPhone 12 Pro are not available until November 6, but a MacRumors reader has already shared a photo of a circular imprint on...

iPhone 11 Pro Outlasts iPhone 12 and 12 Pro in Extensive Battery Life Test

Friday October 23, 2020 8:36 am PDT by
Arun Maini today shared a new side-by-side iPhone battery life video test on his YouTube channel Mrwhosetheboss, timing how long the new iPhone 12 and iPhone 12 Pro models last on a single charge compared to older models, with equal brightness, settings, battery health, and usage. All of the devices are running iOS 14 without a SIM card inserted. In the test, the iPhone 11 Pro outlasted both ...

PSA: Non-iPhone 12 Models Charge Super Slowly With MagSafe Charger

Friday October 23, 2020 4:11 pm PDT by
Alongside the iPhone 12 models, Apple introduced a new $39 MagSafe Charger that's meant to work with the magnets in the iPhone 12 Pro models to charge them up at a maximum of 15W. The MagSafe Charger is technically able to be used with older iPhones, but it's not a good idea because the charging with non-iPhone 12 devices is so slow. We did two tests with the iPhone XS Max, draining the...

MagSafe Charger Teardown Reveals Simple Design With Magnets and Charging Coil Encircling a Small Circuit Board

Friday October 23, 2020 7:50 am PDT by
iFixit has today shared a teardown of Apple's new MagSafe charger for the iPhone 12 and iPhone 12 Pro. An X-ray of the MagSafe charger courtesy of Creative Electron reveals the internal charging coil surrounded by a circular arrangement of magnets within the puck. The only seam that iFixit was able to leverage to open the device was where the white rubber circle meets the metal rim,...

Apple VP Kaiann Drance Interview Addresses Battery Life, MagSafe, and Power Adapter Concerns

Friday October 23, 2020 3:37 am PDT by
Apple's Vice President of iPhone Marketing, Kaiann Drance, has provided a new interview to Rich DeMuro on the Rich on Tech Podcast, to discuss the iPhone 12 and iPhone 12 Pro. Although much of the interview repeated points from Apple's "Hi, Speed" event, there were a number of interesting tidbits regarding the affect of 5G on battery life, MagSafe concerns, and the lack of a power adapter in...

iFixit Shares Full iPhone 12 and 12 Pro Teardown Revealing Interchangeable Displays and Batteries

Saturday October 24, 2020 1:48 pm PDT by
After live streaming a teardown of the iPhone 12 and iPhone 12 Pro earlier this week, iFixit today provided a more in-depth teardown that goes through all of the components in the new devices, revealing several similarities between the two. Early testing conducted by iFixit shows that the iPhone 12 and 12 Pro displays are interchangeable and can be swapped without issue, though the max...