Recently Apple has been a prominent topic of discussion in intellectual property disputes. Most of the talk has been focused around various international disputes over Apple’s patents. The most recent topic, however, focuses on the US Patent and Trademark Office’s (USPTO) denial of a trademark for the iPad Mini.
The USPTO denied Apple’s trademark because the term was merely descriptive under the Trademark Act section 2(e)(1), 15 U.S.C. §1052. The examiner determined that the mark was merely descriptive because mini was simply descriptive of the smaller size of the new version of the iPad.
Interestingly, the examiner further suggested that the terms that make up iPad are descriptive, as well. In rejecting the iPad Mini trademark, the USPTO document 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 be understood by the purchasing public to refer to the Internet when used in relation to Internet-related products 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 goods and/or services, then the entire mark may be considered merely descriptive.
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.” In addition, the attached excerpts from third party websites show descriptive use of the term “pad” in connection with tablet computers. This marketplace evidence shows that the term “pad” would be perceived by consumers as descriptive of “pad computers” with internet and interactive capability. Applicant’s goods are identified as “a handheld digital mobile electronic device comprising tablet computer”.”
Apple has already been granted a trademark for its iPad mark, but this excerpt suggests that it is possible that the USPTO may in fact decide that iPad itself is a merely descriptive term and is, therefore, not entitled to trademark protection. Of course, the USPTO could also decide that the term has acquired secondary distinctiveness through its use in commerce, under Trademark Act Section 2(f), 15 U.S.C. §1052(f).
Also, while the refusal of the USPTO to grant the iPad Mini trademark may be a setback for Apple, Apple will have the opportunity to revise its trademark application. In fact, the USPTO seems to have provided guidelines which will allow Apple to receive trademark approval once it amends its application.
The examiner seemed to be concerned that Apple did not specify that it was only attempting to trademark the term “mini” when used in the context of “iPad Mini,” and advised that Apple should specify that it only seeks to trademark “iPad Mini” and not “mini” on its own. The examiner notes that “an applicant may not claim exclusive rights to terms or designs that others may need to use to describe or show their goods or services in the marketplace.” Apple, consequently, cannot claim exclusive rights to the term “mini” because others may need to use “mini” to describe their products. The examiner, however, provided the disclaimer Apple could use to disclaim its right to the term “mini” while maintaining “iPad Mini” as a trademark.
While the refusal of the “iPad Mini” trademark is clearly not what Apple had hoped for, the USPTO seems to have provided clear guidelines for how Apple can revise its application in order to get its “iPad Mini” mark approved and registered on the Principal Register.