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 US 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.
The full finding is here:
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.
In re Occidental Petroleum Corp.
See Gen. Mills, Inc. v. K-Mar Foods, Inc.
, 207 USPQ 510 (TTAB 1980) (holding MINI MEAL merely descriptive of concentrated nutritionally-complete food bars);
, 193 USPQ 732 (TTAB 1977) (holding MINI PELLETS merely descriptive of pelleted fertilizer).The examining attorney has also attached evidence from an internet search showing third party descriptive use of the term “mini” to describe the small size of various handheld digital devices. See attached evidence. Therefore, the wording merely describes a feature of applicant’s goods, namely, a small sized handheld tablet computer
That's pretty clear there. If you're selling a blue computer you cannot trademark the term "blue computer" as that's simply a description of what you are selling. Thus the "mini" part cannot be a trademark.
So far so good. What's rather more worrying perhaps is that the same examiner seems to be saying that iPad itself cannot be used as a trademark:
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. 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 goods and/or services, then the entire mark may be considered merely descriptive.
SeeIn re Zanova, Inc.
, 59USPQ2d 1300, 1304 (TTAB 2000) (holding ITOOL merely descriptive of computer software for use in creating web pages, and custom designing websites for others); TMEP §1209.03(d).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.” Please see the attached dictionary definition. In addition, the attached excerpts from third party websites show descriptive use of the term “pad” in connection with tablet computers. This marketplace evidence shows that the term “pad” would be perceived by consumers as descriptive of “pad computers” with internet and interactive capability. Applicant’s goods are identified as “a handheld digital mobile electronic device comprising tablet computer”
This would be a bit of a problem given that "iPad" already is a registered trademark of Apple in the US. Clearly, some more thought is going to have to go into this decision. My expectation is that Apple will retain "iPad" and that they will not be allowed to extend that to a trademark on the mini part of "iPad Mini".
But, to be honest, given some of the decisions that come out of the USPTO just about anything could happen. It really wouldn't surprise me if the answer became "You now own the planet Venus" given some of the things we've seen (a patent on rounded corners on a rectangle? A wedge shaped notebook? Bouncing scrollback that's been around since Pong?).
