In an unusual twist, the U.S. Patent & Trademark Office has denied Apple a trademark application for the iPad mini mark on the grounds that the name “merely describes a feature or characteristic of applicant’s goods.” Additionally, the examining attorney for the case claims that the “specimen” (proof of product) that Apple is submitting is not valid even though, according to Patently Apple, the tech company regularly submits its specimen in the exact same manner.
According to Patently Apple, Examining Attorney Lee-Anne Berns is refusing Apple’s iPad mini trademark application because at least one other company applied for the “iPad” trademark in 2010 and there is a “likelihood of confusion between these marks.” Apple was awarded the trademark for the term “iPad” in March of 2010.
In addition to the “iPad” mark, Berns claims that the term “mini” is too descriptive and only refers to “an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.”
The refusal letter, issued to Apple in January of 2013, goes on to claim that the “i” in iPad generally refers to the Internet and so can’t be used to identify a product. Additionally, the “pad” in iPad refers to a tablet computer and so can’t be used either. The refusal letter includes at least 30 pages of Internet searches showing that each word in “iPad mini” can be considered a description of something else.
Apple regularly submits Web links as specimen proof. According to Patently Apple, this has not been an issue in the past. However, the refusal letter from the USPTO claims that “The web catalog or web page specimen 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,” and “thus, appears to be mere advertising material.”
Apple has until July to address the concerns listed in the refusal letter. It is hard to believe that anyone would confuse the term “iPad” or “iPad mini” with anything other than Apple’s tablets.