Apple Denied iPad mini Trademark

| Analysis

Considering the date, you'd think news that Apple was denied a trademark for "iPad mini" was an April Fools Day joke, but it isn't. The US Patent and Trademark Office refused to grant Apple the trademark calling the name "merely descriptive," implying it doesn't identify a specific product.

USPTO to Apple: No iPad mini for youUSPTO to Apple: No iPad mini for you

The USPTO response stated,

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 beunderstood by the purchasing public to refer to the Internet when used in relation to Internet-relatedproducts or services. Applicant's goods are identified as "capable of providing access to the Internet'. When a mark consists of this prefix coupled with a descriptive word or term for Internet-related goodsand/or services, then the entire mark may be considered merely descriptive.

In other words, "i" as a prefix always means "Internet," "Pad" always refers to a generic tablet computing device, and "mini" only denotes a smaller model.

The best summary of Apple's naming scheme came up when I was discussing the USPTO ruling on the International Mac Podcast where one of the other guests commented, "So that means I have an Internet Pod nano." While the iPod nano may be a smaller-sized iPod, it most certainly doesn't include Internet access.

Apple also sells the iPod shuffle, which is even smaller and also doesn't offer Internet access. The company does, by the way, hold trademarks on the names iPod, iPod nano, iPod shuffle, iPod touch, iPhone, and iPad. Apple doesn't, however, hold a trademark on the Mac mini name, while it does have trademarks for Mac, Mac Pro, and iMac.

Taken to the extreme, other companies could try to using the rejection as an invitation to start making tablet devices called IPAD MINI, but don't expect to see that actually happen -- at least not in the United States. The iPad name is clearly linked to Apple and the company will vigorously defend the trademarks it already holds.

Trademark rejections happen all the time, too, and they aren't etched in stone. Apple can appeal the ruling and undoubtedly is deep into preparing its response. The ruling doesn't mean Apple needs to change the name of its smaller iPad model, either, which is great because Internet Tablet NoSoBig doesn't roll off the tongue like iPad mini.

What the ruling really shows is the seemingly arbitrary decision process the USPTO uses, and that rejection and appeal is business as usual for companies trying to protect their product names.

[Thanks to Patently Apple for the heads up]

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Lars Pallesen

But the USPTO didn’t mind the trademark “iPod Mini” because ... ?

Holger Stenberg

We all know that Apple knows how to file for a trademark. There are several systems out there so I’m certain that they have applied in different countries according to the Madrid system as well as he CTM (European Union) system as well as the systems available in other countries that stand outside of the 88 member countries that adhere to the Madrid system.

Once they have obtained the trade mark in the rest of the world they have enough pressure on the US Patent and Trademark Office.

The US recognizes common law trademark rights based on good faith use of an unregistered trademark. State registration rights etc will make it more complicated and more expensive but they could opt for that instead of a federal trademark.

They will find a way out of this and make it happen. The Apple “i” stands for me or the person using the equipment not the Internet.

But it’s up to Apple’s lawyers to prove that and they will.

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