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Apple's 'iPad Mini' Trademark Application Initially Denied, but Resolution Should Be Simple

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Original poster
Apr 12, 2001
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Over the weekend, Patently Apple reported that the U.S. Patent and Trademark Office had refused Apple's trademark application for the term "iPad mini". While some such as The Verge's Nilay Patel were quick to note that the refusal was simply a first office action that is nowhere near final, the refusal does offer an interesting glimpse into the thinking of patent examiners.

The examiner's primary objection to Apple's application takes the view that the term is "merely descriptive" rather than creating a unique brand name that is worthy of protection. The examiner argues that all elements of the name, including "i", "Pad", and "mini" are not unique to the product being named.
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 be understood by the purchasing public to refer to the Internet when used in relation to Internet-related products or services. [...]

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 computer contained in a touch screen." [...]

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".
The examiner goes on to suggest a means by which Apple could argue for uniqueness, noting that the company would have to specifically claim that its existing "iPad" trademark has acquired distinctiveness. This would appear to be a trivial argument for Apple to make, but it seems that it did not do so in its initial "iPad mini" application.

The examiner also notes that Apple should include a disclaimer noting that it is only attempting to claim a trademark on "mini" when used as part of the entire "iPad mini" term, as other companies should be permitted to use the descriptive term "mini" for their own products.

As a secondary objection, the patent examiner ruled that Apple's specimen submitted with the application was insufficient to prove that it was for a product being offered for sale. Apple's specimen showed the iPad mini overview page as it appeared at launch last year, with the examiner arguing that the "iPad mini" text and the "Buy Now" button were not in close enough proximity.
The mark and picture of the goods on the specimen are not sufficiently proximate to the "buy now" tab, and it is thus unclear what consumers would be purchasing by clicking on this tab.
Apple's "iPad mini" trademark specimen
As with the prior objection, the examiner in this case offers Apple several means to rectify this issue, including using an alternative specimen that more clearly shows the item is being offered for sale as of the date being claimed in the application, or a shift to an "intent to use" application that requires no initial specimen and instead requires that Apple simply show that at some later date it did indeed offer the item for sale.

Article Link: Apple's 'iPad Mini' Trademark Application Initially Denied, but Resolution Should Be Simple
 

truettray

macrumors 6502
Sep 7, 2012
386
268
USA
I was afraid something like this would happen. I have to agree with the examiner on this one. ;)
 
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Dulcimer

macrumors 6502a
Nov 20, 2012
799
270
The patent examiner's explanations for the "i," "Pad," and "mini" trademarks are hilarious!
 
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bushido

Suspended
Mar 26, 2008
8,070
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Germany
i have no idea what i just read :D

is he saying that the buy now button on its current location could imply that u r buying "iOS" "iCloud" or even "Tech Specs"? lololol
 
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kayloh20

macrumors regular
Apr 8, 2010
130
15
Chicago, IL
As weird as it sounds, I kind of understand the examiner's points about the iPad mini name...but his or her point about the "buy now" button is essentially calling consumers idiots.
 
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bretm

macrumors 68000
Apr 12, 2002
1,951
27
The patent examiner's explanations for the "i," "Pad," and "mini" trademarks are hilarious!

Well the i isnt. That's what it has always stood for. Whether it makes any sense or not. The iMac was the " Internet" Mac.
 
Comment

Menel

macrumors 603
Aug 4, 2011
6,214
1,164
the prefix "I" denotes "internet." According to the attached evidence, the letter "i" or "I" used as a prefix and would be understood by the purchasing public to refer to the Internet when used in relation to Internet-related products or services. [...]
The lower case "i" prefix has denoted Intel micro-controllers since the 1970's... when referring to technology products.

e.g. i8080, i286, i386, i5, i7, etc.

 
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charlituna

macrumors G3
Jun 11, 2008
9,632
815
Los Angeles, CA
The patent examiner's explanations for the "i," "Pad," and "mini" trademarks are hilarious!

For I and pad yes. Particularly since i=internet was an Apple 'invention'. But for mini, not so much. Apple has a trademark on iPad and the iPad mini is just a model of that item. Making 'mini' a model designation, not (in conjunction with iPad) the name of a unique item.
 
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jaymzuk

macrumors regular
Jun 1, 2012
216
44
As weird as it sounds, I kind of understand the examiner's points about the iPad mini name...but his or her point about the "buy now" button is essentially calling consumers idiots.

In all fairness, the law of averages would suggest that a good proportion are idiots
 
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cameronjpu

macrumors 65816
Aug 24, 2007
1,304
65
Well the i isnt. That's what it has always stood for. Whether it makes any sense or not. The iMac was the " Internet" Mac.

According to whom, exactly?

Anyway, this certainly makes one feel good about the paychecks that our government bureaucrats are drawing every couple weeks.
 
Comment

KieranDotW

macrumors 6502a
Apr 12, 2012
623
68
Canada
"Internet pad device" I'm fairly certain no one referred to tablets as "pads" before or since the iPad. Most say "tab" or "tablet", unless it's the Asus E Pad, but I think the inspiration for that name is pretty self explanatory (ooh look we changed one letter!)
 
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1239689

Suspended
Oct 24, 2007
199
0
I understand the need to protect these services. But this as it were, is a crock of ****. Maybe it's unclear in a third work country. Makes these guys look stupid.
 
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DarkWinter

macrumors member
Feb 29, 2012
68
55
...

"The mark and picture of the goods on the specimen are not sufficiently proximate to the “buy now” tab, and it is thus unclear what consumers would be purchasing by clicking on this tab."

If only there was a large picture of the product on the page... :rolleyes:
 
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iGrip

macrumors 68000
Jul 1, 2010
1,626
0
As weird as it sounds, I kind of understand the examiner's points about the iPad mini name...but his or her point about the "buy now" button is essentially calling consumers idiots.

The proximity argument is the weakest one presented.

That is why so many posters focus on it, all the while ignoring the other, more compelling arguments.
 
Comment

GenesisST

macrumors 68000
Jan 23, 2006
1,711
661
Where I live
I havent' read the article, but I am wondering: If iPad is trademarked (is it?), then why do you need to trademark "iPad whatever"?
 
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ArtOfWarfare

macrumors G3
Nov 26, 2007
8,923
4,777
I havent' read the article, but I am wondering: If iPad is trademarked (is it?), then why do you need to trademark "iPad whatever"?

I have, and I'm wondering the same thing. Apple doesn't bother trademarking individual sizes for their computer lines. They don't have trademarks for "iMac 27" " and "MacBook Pro 15 " - so why bother with trademarking different sizes of the iPad?
 
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kas23

macrumors 603
Oct 28, 2007
5,627
291
I disagree with the examiner's assertion that "i" stands for Internet. The original classic iPod, for example, did not have Internet capability. I'm pretty sure the "i" is just a cute marketing tool in order for Apple to distinguish its products from competitors.

As for "pad", I've never heard of a "pad computer". I thought it referred to a pad of paper or a note pad.
 
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