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
96 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
96 months ago
April Fools ?!?!?!?!?!
Score: 15 Votes (Like | Disagree)
Avatar
96 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
96 months ago
The patent examiner's explanations for the "i," "Pad," and "mini" trademarks are hilarious!
Score: 8 Votes (Like | Disagree)
Avatar
96 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
96 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

Apple-Acquired Dark Sky Officially Shuts Down Android App

Saturday August 1, 2020 3:43 pm PDT by
Apple in March purchased weather app Dark Sky, and at that time, Dark Sky's developers said that the app's Android version would be discontinued on July 1, 2020. However, instead of shuttering the app on that date, the app's developers announced that the discontinuation would be delayed for another month. Now that it's August, Android users are no longer able to access the app, and...

Apple May Launch This Year's 'iPhone 12' Lineup in Two Stages, With 6.1-inch Models Debuting First

Monday August 3, 2020 3:14 am PDT by
Apple last week confirmed that its "‌iPhone‌ 12" launch will be delayed this year due to the ongoing global health crisis and restrictions on travel. Apple last year started selling iPhones in late September, but this year, Apple projects supply will be "available a few weeks later," suggesting a release sometime in October. We're expecting a total of four OLED iPhones in 5.4, 6.1, and...

Top Stories: Try the 5.4-Inch iPhone 12 Display Size, Blockbuster Earnings, Tim Cook at Antitrust Hearing

Saturday August 1, 2020 6:00 am PDT by
Another busy week of Apple news and rumors has wrapped up, with a lot of focus on Tim Cook's appearance at a Congressional antitrust hearing and a blockbuster earnings report. Subscribe to the MacRumors YouTube channel for more videos. We continued to hear rumors about the upcoming iPhone 12 lineup, including a rare admission from Apple that the lineup will launch "a few weeks later" than...

Just How Small Will the 5.4-Inch iPhone 12 Screen Be? Try It Out for Yourself

Tuesday July 28, 2020 12:57 pm PDT by
As rumors of the iPhone 12 have continued to build over the past few months, the one model that has the most excitement around it is the smallest 5.4" model. The iPhone 12 is believed to be coming in 5.4", 6.7", and 6.1" sizes. Dummy models have shown how much smaller the 5.4" is compared to the rest of the iPhone lineup. The upcoming 5.4" iPhone falls in-between the size of the original...

Unreleased iPod Touch with Mac Pro Glossy Black Finish Shared Online

Sunday August 2, 2020 11:32 am PDT by
Twitter user @DongleBookPro has today posted images of what seems to be a first-generation iPod Touch prototype with a 2013 Mac Pro-style glossy black finish. The Twitter user claims that the iPod Touch prototype pictured has "the same coating as the 2013 Mac Pro." Had the finish been selected for the final product, it also would have been similar to the metallic glossy black finish that...

Apple Confirms This Year's iPhone 12 Models Will Be a Little Bit Late

Thursday July 30, 2020 2:34 pm PDT by
During today's earnings call covering the third fiscal quarter of 2020 (second calendar quarter) Apple CFO Luca Maestri confirmed that Apple is expecting to release this year's iPhones later than usual. Maestri said that Apple last year started selling iPhones in late September, but this year, Apple projects supply will be "available a few weeks later." Multiple rumors have suggested that ...

Battery Likely for Upcoming Apple Watch Series 6 Filed in Certification Listings

Saturday August 1, 2020 5:46 am PDT by
A battery likely for the upcoming Apple Watch Series 6 has been filed at the Korea Testing and Research Institute and discovered by a Twitter user @yabhishekhd. Certification for a 1.17Wh battery with a capacity of 303.8mAh was issued on June 23 by the KTR, a Korean regulatory body that approves and tests new hardware ahead of public sale. The battery seems to be destined for a future...

Apple Watch Series 6 to Feature Blood Oxygen Monitoring Sensor

Friday July 31, 2020 1:56 am PDT by
The Apple Watch Series 6 will add blood oxygen monitoring to its features list when it's launched later this year, according to a new report from DigiTimes. Apple Watch 6 will feature biosensors that can monitor sleeping conditions, detect blood oxygen and measure pulse rates, heartbeats and atrial fibrillation, and will also incorporate MEMS-based accelerometer and gyroscope, all allowing the ...

Apple Marks Return of NHL With New 'Hockey Tape' Ad Shot on iPhone 11 Pro

Saturday August 1, 2020 2:33 am PDT by
Apple today marked the return of NHL hockey with a new "Shot on iPhone" ad on its YouTube channel in Canada. Titled "Hockey Tape," the 30-second video features Vegas Golden Knights players Marc-André Fleury and Mark Stone having some on-ice fun with the iPhone 11 Pro, which they attach to the boards, a hockey stick, and a skate with hockey tape. "See the game like never before with Ultra ...

Emails Reveal Why Steve Jobs and Phil Schiller Blocked In-App Purchase of Kindle Books

Friday July 31, 2020 6:25 am PDT by
Internal Apple emails, made public by the House Judiciary Committee's antitrust inquiry, have revealed information about why Apple blocked in-app purchases of Kindle books on iOS devices, reports The Verge. Two sets of emails between Steve Jobs, Phil Schiller, Eddy Cue, and various other senior Apple executives, disclose the exact thinking behind how Apple approached Kindle on iOS. The...