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.

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...

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

[oodaloop]

OTOH, Microsoft Works was curiously non-descriptive.

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.