USPTO Reverses Position on Apple’s IPAD MINI Trademark Application

April 5, 2013, by Mandour & Associates, APC

Los Angeles – Late last year Apple, Inc. filed a trademark application for IPAD MINI for the new smaller and sleeker version of its famous iPad.  Apple has already owned a registered trademark for IPAD since 2010.

On January 24, 2013, the United States Patent & Trademark Office issued a first Office Action rejecting the IPAD MINI Application, claiming that the trademark was merely descriptive.  The Examining Attorney found the word “mini” descriptive as “something that is distinctively smaller than other members of its type or class.”  The Examiner also rejected the IPAD portion of the trademark as descriptive, stating “…‘IPAD’ is descriptive when applied to applicant’s goods because the prefix ‘I’ denotes ‘internet, and the term “PAD” is descriptive of the goods because it “refers to a ‘pad computer’ or ‘internet pad device’”.

The refusal was somewhat surprising in that the U.S. Patent and Trademark Office previously allowed registration of the IPAD trademark.  Beyond the descriptiveness refusal, the specimen of use submitted with the application, a web page from Applicant’s catalog, was also rejected.  The Examining Attorney stated that the specimen “fails to include a picture or a sufficient textual description of the goods in sufficiently close proximity to the necessary ordering information, a web link for ordering the goods, and thus, appears to be mere advertising material.”

However, in a near complete reversal, on April 3, 2013, the Examining Attorney “superseded” the original Office Action and issued a Supplemental Office Action.  In the new Office Action, the Examiner withdraws both the descriptiveness refusal and the refusal of the specimen of use.  Now, with her apologies, she only requires a disclaimer of the term MINI apart from the trademark as shown.

It is unknown whether the Examiner made a second review of her first Office Action, if a supervisor reviewed the Office Action she initially sent to Apple, or if Apple’s counsel spoke to the Examiner requesting clarification of the Office Action.  Regardless, Apple will undoubtedly agree to disclaim the word MINI.

Apart from the descriptiveness and specimen refusals, eight different prior pending applications were cited against the IPAD MINI application on the basis of a likelihood of confusion.  So, unfortunately for Apple, it does not appear that IPAD MINI will be registering any time soon.