USPTO Now Mostly OK with iPad mini Trademark

| Analysis

The US Patent and Trademark Office has revised its stance on Apple's request for a trademark on the iPad mini name. The agency has resolved most of the issues it had with granting the trademark, and so far Apple hasn't had to do anything to make that happen.

USPTO: iPad mini trademark isn't so bad after allUSPTO: iPad mini trademark isn't so bad after all

The agency had rejected Apple's trademark request saying the iPad mini name was "merely descriptive," putting the ball back into Apple's court to prove that the trademark should be granted. Based on a USPTO filing form last week, however, Apple is now mostly off the hook for proving its case.

The USPTO's latest office action stated,

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the examining attorney has determined that the following refusals issued in the initial Office action should be withdrawn.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.

The agency withdrew its refusals for Apple's sections on descriptiveness and specimen, and also said Apple must make it clear that it wants to protect the word "mini" when used as part of the iPad mini name. Other companies that use the term "mini" in their product names still have the opportunity to object to Apple's trademark application as well.

Apple's initial rejection didn't open the doors for other companies to make their own iPad mini, although if the USPTO upheld its ruling it was possible at least some daring company might try. Instead, it was simply part of the process, and in this case, the agency seems to have helped out by dropping some of its rejection points.

The reversal cuts down on how much work Apple's legal team needs to do to before finally convincing the agency to grant the trademark, and considering the company's track record, that will be coming. Apple already holds trademarks on iPad, iPod, iPod nano, iPod shuffle, and iPod touch, and since the company isn't looking to become the sole user of the term "mini," it shouldn't have much trouble getting iPad mini successfully through the application process.

The USPTO may issue rulings that seem arbitrary at times, but the agency does have a review and appeal process so companies can get the trademarks they deserve. The process isn't exactly efficient, but it is a game companies have to play.

In the end, Apple will have its iPad mini trademark, and we'll be shaking our heads at how much work the company had to go through to make it happen. That's how government works.

[Some image elements courtesy Shutterstock. Thanks to Mac Rumors for the heads up.]

Comments

Lee Dronick

“Mini” would be merely descriptive, “IPad Mini” could be trademarked. Now that wouldn’t stop someone from marketing a MiniNook, or Home Mini.

MacFrogger

Re: “The process isn’t exactly efficient….That’s how government works.”

Yes, sometimes government isn’t efficient.  And sometimes it will make you want to pull your hair out. But having been in both govt and the private sector, I just want to say sometimes the private sector - especially big companies with big bureaucracies - can be equally inefficient and baldness-inducing.

My point here is simple: Let’s not simply accept (and repeat) right-wing talking points. Give the PTO some credit for reversing its position even before Apple responded. (It didn’t take too long either.) And no one has any idea what the case load is for this particular patent examiner, but it’s safe to assume he/she is severely overloaded.

iJack

“The examining attorney apologizes for any inconvenience caused.”


Hmmm.  Does anyone know what Bosco does for a living?

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