Apple Loses the iPad Mini Trademark

An anonymous reader writes in with bad news for Apple. "It would appear that Apple has lost an attempt to trademark the 'iPad Mini.' This time it's not nefarious foreigners subverting the just order of things simply by trademarking something several years before Apple did. No, that was what happened in Brazil with the IFone. Nor is it people nefariously selling the rights to everywhere but China but Apple's lawyers didn’t notice, as happened with iPad in China. No, this time it's the U.S. Patents and Trademarks Office saying that Apple simply cannot have a trademark on 'iPad Mini.' For the simple reason that the law doesn't allow them to trademark something which is just a description of the product."

Comments

So?

[kiriath]

Who cares? Why post this, further, why post it with such dramatic leading text?

Nobody gives a rats ass that Apple can't get a trademark on something they technically already have a trademark on.

Re:So?

[mooingyak]

Nobody gives a rats ass that Apple can't get a trademark on something they technically already have a trademark on.

"Technically"?

I assume Apple still has the trademark on "iPad", so lacking the "iPad Mini" trademark doesn't exactly allow competetors to go out and release their own products called "iPad Mini"

Re:So?

[Runaway1956]

Well - Apple is worth billions. For that reason alone, there are tons of zealots, on each side. Yeah, the stories get a lot of hits, but that doesn't really indicate any relevance in any particular field of interest. Money always attracts attention.

Personally, I'm happy to see USPTO make another decision that makes sense. They seem to make so few of those. If iPad Mini were approved, we might see Baby Chevy and Cadillac Extra on the market next year, along with Hoover Sucker - the possibilities are endless. And, each new "trademark" would open worlds of possible litigation against use of common, everyday words.

Summary quality

[aBaldrich]

It's ok to comment the news in the summary, but this has gone too far. "Apple is bad, you must hate Apple." Come on.

I suppose this also means

[93 Escort Wagon]

... our hopes of seeing an iPad Maxi are dashed, then?

Re:I suppose this also means

[Libertarian001]

A shame, really, because it would be on the bleeding edge...

Who else?

[hahn]

Who else is actually going to name their product iPad Mini hoping that it will confuse buyers looking for Apple's iPad Mini? Oh, I see you there Samsung...

Re:Who else?

[jedidiah]

Apple might try to sue Samsung over trying to sell a Galaxy Mini or Google over selling a Nexus Mini or Dell over selling a Dell Mini.

Re:Who else?

[phantomfive]

No, because Apple already trademarked iPad. It was Apple going for their usual hyper-protective trademarking stance. In actuality it wasn't necessary to trademark, they have protection on the name iPad, so this won't really affect anything. It's not unreasonable to say iPad mini is just a description of a small iPad.

Re:Who else?

[hahn]

Straight from the USPTO letter:

...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...

...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 computercontained in a touch screen.” Please see the attached dictionary definition. In addition, the attachedexcerpts from third party websites show descriptive use of the term “pad” in connection with tabletcomputers. This marketplace evidence shows that the term “pad” would be perceived by consumers asdescriptive of “pad computers” with internet and interactive capability. Applicant’s goods are identifiedas “a handheld digital mobile electronic device comprising tablet computer”...

and the kicker...

...In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or non-descriptive meaning in relation to the goods being small handheld mobile devices comprising tablet computers capable of providing internet access. Therefore, the mark is merely descriptive of a feature or characteristic of the goods and registration is refused under Section 2(e)(1) of the Trademark Act.

The rationale specifically points out that "i" and "Pad" (not just "Mini") are descriptive and NOT unique. At best, it's a poorly worded ruling. At worst, the USPTO didn't bother to check the previous valid trademarking of "iPad".

They rejected the entire mark, not just "mini".

[russotto]

The rejection states that "iPad" itself is also merely descriptive. If this holds up (and I doubt it will), Microsoft could make a "Microsoft iPad", and LG, Samsung, Asus, would also be able to make "iPad" devices of their own. This would be a disaster for Apple, but I seriously doubt it is going to happen.

Re:They rejected the entire mark, not just "mini".

[Dracos]

Come on, most of Microsoft's software products have merely descriptive names: Windows, Word, Internet Explorer...

Re:They rejected the entire mark, not just "mini".

[wisnoskij]

But, but, but they put their "i" in front of it. Everyone knows that they own the lowercase "i".

Re:They rejected the entire mark, not just "mini".

[oodaloop]

OTOH, Microsoft Works was curiously non-descriptive.

Re:They rejected the entire mark, not just "mini".

[Theaetetus]

The rejection states that "iPad" itself is also merely descriptive. If this holds up (and I doubt it will), Microsoft could make a "Microsoft iPad", and LG, Samsung, Asus, would also be able to make "iPad" devices of their own. This would be a disaster for Apple, but I seriously doubt it is going to happen.

... except for the fact that Microsoft, Samsung, Asus, and LG would be infringing Apple's Trademark Reg. No. 3776575 for "IPAD".

Specifically, the rejection states that "iPad" itself is also merely descriptive, but Apple can submit evidence to show that that term has acquired secondary meaning and distinctiveness in the marketplace... and that other registered mark is conclusive evidence.

what's up with Apple legal?

[sribe]

They don't have a trademark on Mac mini either, and I assume the reason is the same. So why even bother???

Re:XL T-shirt

[magic maverick]

Hey, I sell a beer called "Extra Large T-Shirt", and I'll have you know, the name is protected by trademark law. No other company can legally sell a beer called "Extra Large T-Shirt" in my geographical region. In fact, I sell a variety of beers with the "T-Shirt" mark, "Extra Large" just being one. "Large", "Medium" and "Small" are the others. The alcohol content goes from 12% for the XL, 9% for the L, 6% for the M and 3% for the S.

Re:Descriptions not trademarked?

[russotto]

"Mini Cooper" isn't merely descriptive -- there's no large Cooper that a Mini Cooper is a small version of.

"M&M's Minis" indeed trademarked, but contains the disclaimer "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "MINIS" APART FROM THE MARK AS SHOWN". The USPTO suggests that if Apple wants the mark, they should re-apply with a similar disclaimer (once they get past iPad itself being descriptive)

"Mac Mini" is not a registered trademark, nor is "iPod Mini"

"iPod Nano" is trademarked without the disclaimer.

"Micro Machines" has a disclaimer on "Machines". It's probably considered other than descriptive because it refers specifically to toy vehicles, not "machines" in a general sense.

And yes, the USPTO is inconsistent.

The devil is in the details

[Warhawke]

Descriptive terms can still have a trademark where they have acquired a secondary meaning in the marketplace, which is how iPhone and iPad have survived. From the USPTO refusal:

Applicant is advised that, if the application is amended to seek registration on the Principal Register underTrademark Act Section 2(f) in part, applicant must disclaim the descriptive wording “MINI” apart fromthe mark as shown because it merely describes a characteristic or feature of applicant’s goods.

And then:

Applicant should submit a disclaimer in the following standardized format: No claim is made to the exclusive right to use “MINI” apart from the mark as shown.

Essentially the problem is that the whole term "iPad Mini" is descriptive, because even if "iPad" were (and it is) a protected trademark, you can't say "small iPad" and make that whole mark trademark-able, which is what "iPad Mini" attempts to do. While the application deconstructs the "iPad" term as merely descriptive (which is unfortunate because it probably makes this ruling appealable, since I don't think the prior trademark applications relied on the secondary meaning exception to a descriptive mark), that's just salt in the wound. The real reason it was denied is because they tried to call their iPad "Mini" and trademark the whole term. It's still quite possible for Apple to use the "iPad(R) Mini" mark denotation.

Also, for those who don't know, (R) is a registered trademark that has been filed with and approved by the USPTO, whereas (TM) is an unfiled trademark that you nevertheless use in business that could stand up to another company using your trademark. (R) [federal] will always trump (TM) [state].

Re:It's obvious

[sribe]

Technically, it says that they can't trademark iPad right now either, because "I" means internet and "pad" is a generic term for a tablet.

No, it does not say that. It says that they can't trademark "iPad mini" because because "I" means internet and "pad" is a generic term for a tablet and "mini" is descriptive.

1) The analysis only applies to the current application, not to any other hypothetical application.

2) They already have the trademark on iPad (registered 3 years ago).

Padmini is a very common Indian name for girls

[140Mandak262Jamuna]

There must tons and tons of products and registered trademarks around the name Padmini in India. An actress Padmini (no lastname) is the top hit for Padmini in google. I know at least one car model was named Padmini. Every town will have a cafe or a grocery store or a hotel (lodge in local parlance) named Padmini. So I would not be surprised if some one there challenges iPad mini as "too similar to my registered brand name" there. Even if the case has no merit someone might sue just for the publicity or with some hope of reaching a settlement with a multinational company with deep pockets.

Re:It's obvious

[sribe]

This just seems bizarre to me.

Yes, for the reasons you mention the ruling does seem bizarre to me. However, I suspect that the descriptiveness of "mini" is still enough to reject the application, even if the other reasoning is fallacious, so I didn't want to focus on arguing those points.

- The fact that there are no trademarks for "Mac mini" or "iPod mini" is strong evidence that "iPad mini" cannot be trademarked...

- The fact that there is a trademark for "iPad" is strong evidence that, well, you know, "iPad" can be trademarked ;-)

Wrong headline again...

[gnasher719]

Apple didn't lose the "iPad Mini" trademark. They applied for the iPad Mini trademark, and it wasn't granted on the very first attempt. Nothing unusual there.

Re:It's obvious

[chmod a x mojo]

Nor have I seen anyone attach i- to anything and not have it be a reference to Apple

Weren't around in the 1999-2000 era then huh? Compaq had the iPaq running WinCE / WinMobile about the same time as Apple had come out with the iMac, and the HP / Compaq device is a lot closer to what a modern tablet is than the iMac could ever be considered.

I actually miss my iPaqs, it was nice having a built in stylus + holder - a decent small tipped stylus no less, not like the crap you an get today that is as big as your thumb - and a processor the literally could rival a desktop( my last iPaq was a 633Mhz with enough RAM to truly multitask + SD + CF card expansion with bluetooth, wifi and extra components that used the SD interface, back when desktops usually ran at ~1Ghz unless you dumped a ton of money into a 1.6-2.0Ghz system). Modern tablets had been getting close to the same usefulness again, at least before the Nexus 7/10 didn't ship with expansion....

Re:It's obvious

[RabidReindeer]

This just seems bizarre to me. I've never heard anyone refer to a tablet as a "pad", outside of Star Trek's PADDs, have you? That sounds like a bizarre ruling. Nor have I seen anyone attach i- to anything and not have it be a reference to Apple; there's e-commerce but not i-commerce, no one says "do you have an i-connection?", etc.

Am I missing something?

Circa 1964. The movie 2001, A Space Odyssey. The Astronauts aboard Discovery got their news and telephone (videophone) on a tablet device called the NewsPad. I'm not sure that it actually was supposed to have general tablet computing features, since it wasn't a major component of the story, just another prop to set the story "in the Future". Actually, for all we know, it was only intended to echo the main video network of the ship and have no native intelligence at all but still, for what it's worth, it was a "Pad".

I don't weep for Apple, though. I would grant them a trademark on "iPad Mini", but they're of the stripe that would then turn around and sue everyone and anyone who used the word "Mini", up to and including the Mini Cooper.

Re:It's obvious

[Firethorn]

ue everyone and anyone who used the word "Mini", up to and including the Mini Cooper.

Reminds me of the time McDonalds sued "McDonald's Restaurant" for trademark infringement. The golden arches almost had to rename all their restaurants when it came out that the McDonalds family had been running a restaurant there since before the USA become a country...

Re:It's obvious

[otuz]

Circa 1993, Apple introduced the Newton MessagePad, which was Apple's first Pad product.

Re:XL T-shirt

[Zontar The Mindless]

I guess things have changed. Back in my day, the guys supplying the beer usually had a really good shot at getting laid.

Re:It's obvious

[Gadget_Guy]

I've never heard anyone refer to a tablet as a "pad", outside of Star Trek's PADDs, have you?

You just need to look at the Wikipedia article on tablet computing and do a find on the word pad to realise that it was a common word for the format before the use of the word tablet overtook it.