USPTO retracts objections to Apple's 'iPad mini' trademark application
In an Office action filed with the U.S. Patent and Trademark Office last week, the attorney examining Apple's "iPad mini" trademark withdrew their primary objections to the application, saying only a disclaimer clarifying the mark's use of the term "mini" is needed in order to move forward.
First spotted by MacRumors, the updated Office action, which was handed in last Wednesday, replaces the earlier rejection from January that denied the trademark due to its "merely descriptive" nature. It is unclear why the examining attorney reversed her original decision.
As for the disclaimer, Apple must add, "No claim is made to the exclusive right to use 'MINI' apart from the mark as shown," to its application. If the standardized note is not included, Apple could be refused the mark.
The USPTO originally refused the trademark request as Apple's use of "mini" described only "a small sized handheld tablet computer," and did not constitute "a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services." The document went on to say the specimen images included by Apple, which were from the product's webpage, were "not acceptable to show trademark use as a display associated with the goods." Both refusals were discarded in the latest Office action.
First spotted by MacRumors, the updated Office action, which was handed in last Wednesday, replaces the earlier rejection from January that denied the trademark due to its "merely descriptive" nature. It is unclear why the examining attorney reversed her original decision.
According to the document, Apple's "iPad mini" trademark bid may still be refused if currently pending applications containing the term "mini" are granted. The filings preceding the "iPad mini" mark request cover a variety of products from electronics manufacturers, including Samsung's Galaxy Mini. Along with the explanatory text, the Office action (embedded below) included images from webpages showing the eight products also seeking a "mini" mark.This Office action supersedes any previous Office action issued in connection with this application. Upon further review of the application, the examining attorney has determined that the following refusal sissued in the initial Office action should be withdrawn. The examining attorney apologizes for any inconvenience caused.
As for the disclaimer, Apple must add, "No claim is made to the exclusive right to use 'MINI' apart from the mark as shown," to its application. If the standardized note is not included, Apple could be refused the mark.
The USPTO originally refused the trademark request as Apple's use of "mini" described only "a small sized handheld tablet computer," and did not constitute "a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services." The document went on to say the specimen images included by Apple, which were from the product's webpage, were "not acceptable to show trademark use as a display associated with the goods." Both refusals were discarded in the latest Office action.
Comments
What took them so long?
Even Gruber has more respect for the source.
Quote:
Originally Posted by Ireland
It annoys me the way you guys give credit in such an ancillary manner. If MacRumors reported it you say it in the first line. Otherwise don't bother.
Even Gruber has more respect for the source.
Given that Gruber always cites, or links directly to, the original source, it's more than a little odd that you would write, "Even Gruber has more respect for the source," implying that he is somehow less than consistent in this.
I suspect that the original examiner got a smack down for the nitpicky, snarky way he dissected the name to "i"-"Pad"-"mini".
Quote:
Originally Posted by anonymouse
Given that Gruber always cites, or links directly to, the original source, it's more than a little odd that you would write, "Even Gruber has more respect for the source," implying that he is somehow less than consistent in this.
I was implying that he's a jerk. So in his example even jerks can give proper credit.
The USPTO has become a caricature.
Possibly. It was an unnecessary move since the mark applied for doesn't break it down. All they had to do was grant "iPad Mini" as a solid phrase with a note that Apple has no rights of protection for the use of the term Mini/mini being attached to another term to denote a smaller version of the item as that term is a descriptor.
Quote:
Originally Posted by charlituna
Possibly. It was an unnecessary move since the mark applied for doesn't break it down. All they had to do was grant "iPad Mini" as a solid phrase with a note that Apple has no rights of protection for the use of the term Mini/mini being attached to another term to denote a smaller version of the item as that term is a descriptor.
Exactly.
The other aspect of this that is amusing (no, I'm not referring to Ireland) is the way KDarling and other "Internet Lawyers" were telling us, with great "authority", how the PTO's objections were perfectly to the point and quite normal business as usual for a trademark that "overreached" like "iPad mini" did. I think the quick reversal here tells us all we need to know about their knowledge of the subject. (And don't bother arguing that you never used the term 'overreached', those are scare quotes, just like the ones around 'authority'.)
Hard to look impartial if you grant "Galaxy Mini" and deny "iPad mini". I guess this particular examiner had some traumatic experience in her past, maybe her father touched her inappropriately with an iPod or something.
Quote:
Originally Posted by anonymouse
The other aspect of this that is amusing (no, I'm not referring to Ireland) is the way KDarling and other "Internet Lawyers" were telling us, with great "authority", how the PTO's objections were perfectly to the point and quite normal business as usual for a trademark that "overreached" like "iPad mini" did.
Everything I said was correct, as the rejection was worded at the time. I also predicted that it would be an easy fix, and listed the steps to do it.
As I pointed out in my post here on the subject, the primary problem was:
Quote:
Apple tried to trademark "iPad mini" without disclaiming the word "mini" by itself, which is required when tacking on merely descriptive words like mini. - kdarling
Also, as I posted on MacRumors last week
Quote:
(I just looked. Other recent trademark applications by other companies (toy, food, etc) using the suffix "mini" went through the first time, because their first applications included things like denying any claim to the word "mini" by itself.)
- kdarling
Quote:
Originally Posted by KDarling
Everything I said was correct, as the rejection was worded at the time. I also predicted that it would be an easy fix, and listed the steps to do it.
And everything you implied was incorrect, just your usual anti-Apple propaganda tirade, and the examiner's rationale appears to have been tossed with merely a face saving, but superfluous, disclaimer by Apple required for approval.
But, it's good to know you are all over the Apple sites and forums spreading your "message".
Quote:
Originally Posted by anonymouse
And everything you implied was incorrect, just your usual anti-Apple propaganda tirade, and the examiner's rationale appears to have been tossed with merely a face saving, but superfluous, disclaimer by Apple required for approval.
But, it's good to know you are all over the Apple sites and forums spreading your "message".
I have no idea if KDarling is an attorney, but as an attorney, I do know KDarling's discussions were fairly on target. I think you have an issue with people smarter than you.
Quote:
Originally Posted by waldobushman
I have no idea if KDarling is an attorney, but as an attorney, I do know KDarling's discussions were fairly on target. I think you have an issue with people smarter than you.
I remember your part in that discussion, and your points turned out to be utter BS as well, so, as an attorney, you should maybe find another line of work, because you aren't as smart as you think you are, and the reality of the situation is our proof.
Originally Posted by anonymouse
I remember your part in that discussion, and your points turned out to be utter BS as well, so, as an attorney, you should maybe find another line of work, because you aren't as smart as you think you are, and the reality of the situation is our proof.
My argument was correct and on point, and an appropriate reading of prior USPTO decisions as far as I went. Of course, as an attorney, I hedged my discussion to the point that it was a limited to the examiner's rationale, and wasn't a legal determination.
I can't believe you are gainfully employed. Your comments and views are so pitiful and pathetic that anyone hiring you would be scraping the bottom of the barrel.