or Connect
AppleInsider › Forums › Mobile › iPad › USPTO denies Apple's trademark application for iPad mini
New Posts  All Forums:Forum Nav:

USPTO denies Apple's trademark application for iPad mini

post #1 of 56
Thread Starter 
The United States Patent and Trademark Office has denied Apple's request for a trademark on the term "iPad mini," finding that the "mini" portion of the name is "merely descriptive" of goods or services available in miniature forms.

ipads mini


The USPTO's decision came in the form of a letter to Apple (via Forbes), in which the application reviewer refused registration of the trademark on grounds that "the applied-for mark merely describes a feature or characteristic of applicant's goods." The USPTO deems a mark "merely descriptive" "if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant's goods and/or services."

Apple filed a trademark application for the iPad mini name shortly after it launched the device last year. The refusal letter, TechCrunch notes, was mailed to Apple on January 24, but only made public in the last few days.

In denying Apple's request, the reviewer notes that "the term 'MINI' in the applied for mark is also descriptive of a feature of applicant's product. Specifically, the attached evidence shows this wording means "something that is distinctively smaller than other members of its type or class'. See attached definition. The word 'mini' has been held merely descriptive of goods that are produced and sold in miniature form."

The reviewer also attaches multiple examples pulled from the Internet of a range of products marketed with the term "mini" attached to their names in some fashion. The commonness of the term, the reviewer argues, means that Apples use of the term signifies only "a small sized handheld tablet computer," and does not constitute "a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services."

The January letter also provided additional grounds for refusal of the application. A "web catalog or web page specimen," the letter says, "is not acceptable to show trademark use as a display associated with the goods because it fails to include a picture or a sufficient textual description of the goods in sufficiently close proximity to the necessary ordering information." Apple had submitted the iPad mini trademark application with images from its product webpages. Patently Apple notes that Apple commonly does so when submitting applications, and the USPTO does not seem to explain how this case is any different.

Apple has already secured a trademark on "iPad" in the United States and in multiple other countries around the world. The iPad maker can still amend its application for a trademark, provided it can prove that "a portion of the mark has acquired distinctiveness." Apple has until July 24 to better explain how "iPad mini" is sufficiently different from the larger-sized iPad to merit its own trademark.

post #2 of 56

Just like "Windows" is a descriptive term for the type of user interface, a term in use long before Windows 1.0 came out.  If they're going to establish the "descriptive term" standard, MS should have their Windows trademark invalidated.

post #3 of 56
Meh. This just opens the door for everyone else to call their tablet "iPad mini".

"Apple should pull the plug on the iPhone."

John C. Dvorak, 2007
Reply

"Apple should pull the plug on the iPhone."

John C. Dvorak, 2007
Reply
post #4 of 56

This is hilarious.

post #5 of 56
iPod mini, Mac mini, Cooper mini, Arduino mini, TiVo mini etc.... just too common
post #6 of 56
Quote:
Originally Posted by Suddenly Newton View Post

Meh. This just opens the door for everyone else to call their tablet "iPad mini".

I'm pretty sure iPad is trademarked.
post #7 of 56
Originally Posted by Suddenly Newton View Post
Meh. This just opens the door for everyone else to call their tablet "iPad mini".

 

They can't use "iPad", so not really.

 

Even if they continue to be idiots and permanently deny it of Apple, this shouldn't matter at all. On the contrary, it could probably lead to an even better situation wherein the iPad mini is just called… iPad. 

 

Then the iPad becomes as the MacBook family is, simply with different sizes. 8" iPad, 10" iPad, 13" iPad, 15" iPad. Simple.

 

Watch my psychopath stalker spin that against me. lol.gif

post #8 of 56
Silly.

It's still covered by the 'iPad' trademark.
"I'm way over my head when it comes to technical issues like this"
Gatorguy 5/31/13
Reply
"I'm way over my head when it comes to technical issues like this"
Gatorguy 5/31/13
Reply
post #9 of 56
Yes @TS. They can follow along the line of Nexus 4, Nexus 8, Nexus 10 ...
post #10 of 56
Quote:
Originally Posted by Suddenly Newton View Post

Meh. This just opens the door for everyone else to call their tablet "iPad mini".
Nope, what they mean is that iPad is already a registered trademark (in the US a least), and that "mini" is not worthy of another one.
post #11 of 56
I'm trying to work out why Appleinsider have used a mockup image of the iPad mini when it was announced in October? Pretty poor that they can't even use an image of an actual iPad mini when that's what the article is about.
post #12 of 56
Originally Posted by virginblue4 View Post
I'm trying to work out why Appleinsider have used a mockup image of the iPad mini when it was announced in October? Pretty poor that they can't even use an image of an actual iPad mini when that's what the article is about.

 

Be… cause it looks the same and there's no official image like that? I don't know myself, but does it matter? lol.gif

 

You don't have to agree to terms and conditions to repost a mockup's image.

 

Is this better? 1wink.gif

 


Edited by Tallest Skil - 3/31/13 at 11:59am
post #13 of 56
Quote:
Originally Posted by wakefinance View Post

I'm pretty sure iPad is trademarked.

It is. That makes the iPad Mini rejection not all that big of a deal. The iPad is still trademarked.
melior diabolus quem scies
Reply
melior diabolus quem scies
Reply
post #14 of 56

On second thought, maybe I should have put the /s at the end of that...

"Apple should pull the plug on the iPhone."

John C. Dvorak, 2007
Reply

"Apple should pull the plug on the iPhone."

John C. Dvorak, 2007
Reply
post #15 of 56
Since iPad is a trademarked term, it's somewhat of a moot point? Who cares if Samsung can release a "Galaxy Tab mini" or Google a "Nexus mini" if they want?
post #16 of 56
Quote:
Originally Posted by Tallest Skil View Post

 

Be… cause it looks the same and there's no official image like that? I don't know myself, but does it matter? lol.gif

 

You don't have to agree to terms and conditions to repost a mockup's image.

 

Is this better? 1wink.gif

 

 

"oo ooo ug... me has lollipop... me they call hugh from laurie tribe... me win staring contest. ug ug."

"Apple should pull the plug on the iPhone."

John C. Dvorak, 2007
Reply

"Apple should pull the plug on the iPhone."

John C. Dvorak, 2007
Reply
post #17 of 56

Yet they have "iPod" and "iPod nano" both trademarked. Not sure how "iPod nano" made it through when "iPad Mini" didn't. Is the word "nano" too esoteric while "Mini" is generic?

 

First thing I did when I saw this is do a Google search for "list of apple trademarks". Very first link goes straight to apple.com and a complete list of all their registered trademarks. For curiosity I tried the same with Samsung (since they sell a GS3 Mini). After going through the first 2 pages of links I gave up as I couldn't find a single location that lists them all.

post #18 of 56
Quote:
Originally Posted by EricTheHalfBee View Post

Yet they have "iPod" and "iPod nano" both trademarked. Not sure how "iPod nano" made it through when "iPad Mini" didn't. Is the word "nano" too esoteric while "Mini" is generic?

 

First thing I did when I saw this is do a Google search for "list of apple trademarks". Very first link goes straight to apple.com and a complete list of all their registered trademarks. For curiosity I tried the same with Samsung (since they sell a GS3 Mini). After going through the first 2 pages of links I gave up as I couldn't find a single location that lists them all.

interesting to note that they don't seem to have trademarks for the iPod mini or Mac mini.

post #19 of 56
Quote:
Originally Posted by TheBum View Post

Just like "Windows" is a descriptive term for the type of user interface, a term in use long before Windows 1.0 came out.  If they're going to establish the "descriptive term" standard, MS should have their Windows trademark invalidated.

The use of the word "Windows" to refer to the name of an operating system is distinct, which is why it has a trademark. However, "mini" in its common usage as referred to the mini is absolutely not unique. As someone else has already pointed out, there are plenty of other non-Apple products that use the word mini to mean "smaller". Besides, the iPad mini is already protected by the larger iPad trademark, Apple however is not going to be able to sue companies that name their smaller tablets "mini", and it would be preposterous to allow them to do so.

Just because a product is popular doesn't mean they can own the use of the word in other products (see iPhone with Cisco and iTV and the British TV channel).
post #20 of 56
Originally Posted by dagamer34 View Post
However, "mini" in its common usage as referred to the mini is absolutely not unique.

 

There sure are a lot of products out there called "iPad mini" aren't there?


As someone else has already pointed out, there are plenty of other non-Apple products that use the word mini to mean "smaller".


Right, so they get trademarks and Apple doesn't because… 


…it would be preposterous to allow them to do so.

 

"How dare a company try to protect its creations! We'll have none of that!"


Just because a product is popular doesn't mean they can own the use of the word…

 

Nice strawman.

post #21 of 56
Quote:
Originally Posted by bleh1234 View Post

iPod mini, Mac mini, Cooper mini, Arduino mini, TiVo mini etc.... just too common

I had thought of these as well. But are, in fact, non of these trademarked?

 

Maybe the problem is that Apple didn't make the product's name a singular word (i.e. "iPadMini")

post #22 of 56
Originally Posted by isaidso View Post
Maybe the problem is that Apple didn't make the product's name a singular word (i.e. "iPadMini")

 

None of those are a single word. All the third party ones are trademarked.

post #23 of 56
Quote:
Originally Posted by Suddenly Newton View Post

Meh. This just opens the door for everyone else to call their tablet "iPad mini".

The couldn't because the "iPad" name is patented and copyrighted.

 

They could however name the galaxy tab 7 the galaxy tab mini if they wanted too.

post #24 of 56
Originally Posted by Mechanic View Post
They could however name the galaxy tab 7 the galaxy tab mini if they wanted too.

 

They could do that WITH the trademark. Why couldn't they?

 

Absolute double standard here. "Can't trademark mini in a name", except they've given hundreds of names trademarked "mini" before. Someone needs fired.

post #25 of 56

Here is a current list of apple trademarks:

 

http://www.apple.com/legal/trademark/appletmlist.html

 

The name "Mac"  is trademarked, but "mini" is not.

post #26 of 56
Quote:
Originally Posted by Tallest Skil View Post

 

They could do that WITH the trademark. Why couldn't they?

 

Absolute double standard here. "Can't trademark mini in a name", except they've given hundreds of names trademarked "mini" before. Someone needs fired.

Lol I didnt say there wasnt a double standard but with what the patent office told apple that would seem to be what there indicating.

 

lol maybe they got an inspector that is upset at apple for some reason and he's sticking it to them:).  Heck everyone else is1biggrin.gif.


Edited by Mechanic - 3/31/13 at 1:42pm
post #27 of 56
So when they registered the 'iPod mini" trademark, nobody at USPTO objected, but the 'iPad mini" trademark won't fly?
Edited by vaporland - 3/31/13 at 2:02pm
post #28 of 56

Nothing new or unusual here.

 

  • Apple tried to trademark "iPad mini" without disclaiming the word "mini" by itself, which is required when tacking on merely descriptive words like mini
  • USPTO denied for the reason of "Refusal - Merely Descriptive".
  • Apple can try again using a "acquired distinctiveness" argument (with evidence) and the above disclaimer, and it'll probably go through.

 

A similar sequence happened when Apple applied for a trademark on "App Store"...

 

  • Apple tried to trademark "App Store".
  • USPTO denied with the same reason of "Refusal - Merely Descriptive".
  • Apple reapplied, this time claiming Acquired Distinctiveness, while denying any claim on the words App or Store.
  • USPTO approved use pending opposition.

 

The difference between the two applications is that it's doubtful anyone would challenge "iPad Mini", whereas Microsoft filed opposition to "App Store" and that one is still up in the air.


Edited by KDarling - 3/31/13 at 3:09pm
post #29 of 56
When the Japanese used the term "Business is War" I bet many people never realised how true that was.

You fight your competitors, your customers, your suppliers, your own investors, the media, the governments of the world, sometimes your own employees, and now the patent office.

Anybody remember the most effective strategy for fighting when surrounded?

Circle your wagons, people...



Edit: 1wink.gif
Edited by GTR - 3/31/13 at 4:38pm
Android: pitting every phone company in the world against one, getting a higher number, and considering it a major achievement.
Reply
Android: pitting every phone company in the world against one, getting a higher number, and considering it a major achievement.
Reply
post #30 of 56
Quote:
Originally Posted by GTR View Post

You fight your competitors, your customers, your suppliers, your own investors, the media, the governments of the world, sometimes your own employees, and now the patent office.

 

Nothing that dramatic in this case.  

 

It was simply a lazily done trademark application, that most likely will be fixed up and approved.

 

In fairness, while looking up the records, I saw that the application for "iPod nano" had gone through fairly easily (except for several minor oppositions from companies with trademarks like Nano Media, Nano this or that, none of whom fought hard enough to stop it), so maybe the Apple lawyers doing the "iPad mini" filing thought that its application would go through just as easily.

post #31 of 56
I think Samsung has Nano in the name of a fridge.

Anyway, too early for April Fool's.
post #32 of 56

This rejection is nonsensical. Apple has a registered trademark for iPod nano. Nano describes the size, although not literally. I think on appeal this decision could be reversed.

Proud AAPL stock owner.

 

GOA

Reply

Proud AAPL stock owner.

 

GOA

Reply
post #33 of 56
Quote:
Originally Posted by vaporland View Post

So when they registered the 'iPod mini" trademark, nobody at USPTO objected, but the 'iPad mini" trademark won't fly?

No such trademark.

[As Mechanic's Apple link indicates:  post #25 ]

Quote:
Originally Posted by SpamSandwich View Post

This rejection is nonsensical. Apple has a registered trademark for iPod nano. Nano describes the size, although not literally. I think on appeal this decision could be reversed.

While conceptually I see your reasoning and even agree that "nano" is a size descriptor, it seems to me that "nano" isn't even in the same ball park with "mini" in terms of reaching a threshold of  "mere descriptiveness." At the time the iPod nano came out, I would guess many people had no real idea of the meaning of "nano" (even in metric-centric locals,) whereas pretty much everyone has used the word "mini" generically for decades. I can't think of any product (much less one that predates the iPod nano) that incorporates "nano" in the name, whereas I can think of hundreds that use "mini." Perhaps this is the USPTO's path of reasoning.

post #34 of 56
Quote:
Originally Posted by bleh1234 View Post

iPod mini, Mac mini, Cooper mini, ... 

 

Okay, I have to step in here because so many people are quoting this nonsense.  

 

It's "Mini Cooper" not "Cooper mini" and yes, it is a trademark.  

 

The mini does stand for "small" in the same way as the iPad mini, but perhaps putting it backwards makes the difference?  In any case, the ruling makes no difference to Apple's branding except that Samsung will probably come out with a "mini" something just to be dicks about it (they specialise in that sort of 'mucho-macho' behaviour).  My feeling is that this whole article/situation is weird, but pretty much the exact definition of "much ado about nothing." 

post #35 of 56
Quote:
Originally Posted by KDarling View Post

 

Nothing that dramatic in this case.  

 

It was simply a lazily done trademark application, that most likely will be fixed up and approved.

 

In fairness, while looking up the records, I saw that the application for "iPod nano" had gone through fairly easily (except for several minor oppositions from companies with trademarks like Nano Media, Nano this or that, none of whom fought hard enough to stop it), so maybe the Apple lawyers doing the "iPad mini" filing thought that its application would go through just as easily.

 

As usual, you haven't bothered to even check minimal facts here and are just making this shit up.  

 

- It couldn't really be described as "lazily done," when the whole thrust of most of the articles on the subject (including this one), is that the application was done in an identical way to every other trademark application they make, can it?  

- "iPod nano" is quite a different sort of mark and whether or not it passed is irrelevant

 

So your entire characterisation is incorrect. 

 

Nano is a modifier related to microscopic size.  When used in a way that suggests it's not literally microscopic, it's being used colloquially and just adds a little uniqueness to the brand name in question.  Because it's use in this way is so common, it is irrelevant if there is a "nano media," "nano pizza," or "nano-nanu" or anything similar.  To deny it on that basis, would be like denying a company from using "super" as a modifier in their name because some other company used it before (there are millions of companies that use/used "super").  

 

post #36 of 56
Quote:
Originally Posted by EricTheHalfBee View Post

Yet they have "iPod" and "iPod nano" both trademarked. Not sure how "iPod nano" made it through when "iPad Mini" didn't. Is the word "nano" too esoteric while "Mini" is generic?

Mini is more generic than nano. In standard language, 'mini' means something small, so it's a simple description. 'Nano' is not used in common language, but when it is used, it is something microscopic, so it is not a literal description.

Or, it could be a technicality as KDarling suggests.
Quote:
Originally Posted by dagamer34 View Post

The use of the word "Windows" to refer to the name of an operating system is distinct, which is why it has a trademark.

Not true. By the time Microsoft got the Windows trademark, 'windows' was widely used to describe those rectangles on your computer screen with information inside. In fact, the use and terminology of 'windows' predates Microsoft's use of "Windows" to describe their product.

The USPTO seems to have messed up. During the Lindows lawsuit, Microsoft sued Lindows' owner to try to have their use of 'Lindows' stricken down. As the case progressed, Microsoft's position was so weak that they ended up paying Lindows a large sum of money to drop the case. It never should have been allowed in the first place and if anyone had pushed hard enough, it would have been invalidated.
"I'm way over my head when it comes to technical issues like this"
Gatorguy 5/31/13
Reply
"I'm way over my head when it comes to technical issues like this"
Gatorguy 5/31/13
Reply
post #37 of 56

I disagree with USPTO. If Apple had named this product the "Mini iPad" then the decision would be correct, because the "mini" as I used it is merely an adjective used in the English adjective position. However, "iPad mini" is the product's name, and the "mini" does not stand in the position of an English adjective. 

 

The examples USPTO gives are not applicable and can (and should) be distinguished. Their examples are "DOC-CONTROL" where DOC means Document and was therefore denied as being simply a descriptor, "The Breathable Mattress", denied for Breathable being merely descriptive. 

 

USPTOs decision and rationale is quite without merit. 

post #38 of 56
There's no Apple trademark on Mac Mini either AFAIK, tho I think Apple claims it's trademarked.
melior diabolus quem scies
Reply
melior diabolus quem scies
Reply
post #39 of 56
Quote:
Originally Posted by bleh1234 View Post

iPod mini, Mac mini, Cooper mini, Arduino mini, TiVo mini etc.... just too common

 

It doesn't mean those those are all trademarked in the same way. The mini here describes a smaller iPad. iPad is trademarked. Did you check if something like "TiVo mini" was trademarked as opposed to just TiVo? This doesn't mean other brands can now use the name iPad mini.

 

Quote:

Originally Posted by Mechanic View Post

The couldn't because the "iPad" name is patented and copyrighted.

 

They could however name the galaxy tab 7 the galaxy tab mini if they wanted too.


Given that I remember his prior posts, I believe it was sarcasm.

post #40 of 56
Quote:
Originally Posted by Gazoobee View Post

As usual, you haven't bothered to even check minimal facts here and are just making this shit up.  

 

On the contrary, as usual I'm someone who not only understands the process, but actually looked up the specific documents involved.... and then explained to everyone exactly why the application failed... and how it'll probably be resubmitted and pass.

 

Quote:

- It couldn't really be described as "lazily done," when the whole thrust of most of the articles on the subject (including this one), is that the application was done in an identical way to every other trademark application they make, can it?  

 

 

The government refusal noted that the web page specimen chosen to go with the application was insufficient.  I've never seen that happen on an Apple trademark application before.    

 

Furthermore, as I pointed out, Apple had recently gotten dinged for using "merely descriptive" words with their AppStore application, so it's not like they weren't warned. 

 

Finally, as I also pointed out, it is almost always required that common descriptive words (e.g. "mini") be disclaimed.

 

 

The upshot is that this was not an application with a lot of work put into it, but rather one that let the USPTO point out its common errors (see above).

New Posts  All Forums:Forum Nav:
  Return Home
  Back to Forum: iPad
AppleInsider › Forums › Mobile › iPad › USPTO denies Apple's trademark application for iPad mini