Home > Insights > ‘iPad mini’ merely descriptive but not exclusive

Author: Charlotte Duly
28 April, 2013

It has been widely reported that the US Patent and Trademark Office (the USPTO) have denied Apple’s trade mark application for the term: ‘iPad mini’. A disappointment for Apple, who presumably thought the process would be quick and easy since they own the ‘iPad’ trade mark, but this is not the end of the story.

The facts in a nutshell:

  • On 15 November 2012 Apple applied for a US word mark for IPAD MINI in International Class 9 under Serial No. 85780375. This application has subsequently been used as a “home” registration for two subsequent International Registrations filed via the Madrid Protocol.
  • On 25 January 2013 the USPTO issued a non-final Office Action objecting to the application on a number of grounds:
  • Earlier applications that pre-date the filing of Apple’s applications and cover marks and goods/services that the USPTO regards as similar to Apple’s application.
  • IPAD MINI is “merely descriptive” for the goods covered as “I” denotes internet, “PAD” refers to a pad computer and “MINI” is something that is “distinctively smaller than other members of its type or class”.
  • A disclaimer to “MINI” is required to confirm that Apple cannot claim an exclusive right to use “MINI” apart from in the whole mark “IPAD MINI”.
  • The specimen of use filed with the application does not meet the required standards. Non-final Office Actions are defined by the USPTO as “a letter from the examining attorney requiring additional information and/or making an initial refusal”.
  • Apple can take steps to tackle these objections before their July deadline for a response. Essentially, Apple needs to present an argument as to why “I”, “pad” and “mini” as a whole form a mark that is not merely descriptive. For example, they may overcome the objection on the basis that ‘through use’ the mark has acquired the necessary ‘distinctive character’.

What next for Apple? With the huge popularity of the iPad, iPad Mini and Apple products in general, appealing the ruling should not be too onerous for them; and Apple do have some comfort in the form of their existing US Trade Mark registration for IPAD as a word mark in International Class 9. Furthermore, that registration took seven years to proceed to registration, so Apple are used to dealing with USPTO objections!

For further information on any of the points raised in this article please contact Charlotte Duly,cduly@boult.com, or your usual Boult Wade Tennant trade mark advisor.

Author

Charlotte Duly Partner

Charlotte Duly
Partner

Phone this number (0)+44 20 7430 7500

Email this address cduly@boult.com

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