April 8, 2013
US Patent Office Rejects Its Own Rejection On iPad Mini Trademark
Michael Harper for redOrbit.com — Your Universe Online
Earlier this year, the United States Patent and Trademark Office (USPTO) rejected Apple´s application to trademark the name “iPad mini,” saying the name was less of a trademark and more of a description of an existing product. Though the USPTO sent the rejection letter in January, it only surfaced online last week.And after the story began to make its rounds across the blogosphere, the patent office reported that the issue has mostly been resolved and the primary objection to Apple owning the trademark has been withdrawn. This reversal was made public via an office action first spotted by MacRumors.com.
℠This Office action supersedes any previous Office action issued in connection with this application,” reads the memo.
“Upon further review of the application, the examining attorney has determined that the following refusal issued in the initial Office action should be withdrawn. The examining attorney apologizes for any inconvenience caused,” it adds.
The memo doesn´t say why the examiner decided to reverse their original ruling, though it´s worth noting the timing with which this action was issued.
Though this new action removes the earlier rejection, it doesn´t mean that Apple´s application won´t be rejected in the future. The examiner notes in this new memo that Apple “must disclaim the descriptive wording “MINI” apart from the mark as shown because it merely describes a quality, characteristic or feature of applicant´s goods.”
The original USPTO rejection denied Apple, claiming the company couldn't trademark the name “mini” because it was merely a description of size and not a description of the device itself.
Ever diligent, the examining attorney took to the Internet in search for other products which also feature the word mini, claiming that in each of these situations, the word “mini” was only used to denote size.
In accordance with the original office action issued earlier this year, Apple would have had to give a disclaimer noting that they only have rights to the iPad mini name as a whole and not just the descriptive word “mini.”
The examining attorney had a few more qualms about Apple´s application. For instance, the iPad maker chose to send in the iPad website as a specimen for the attorney to look over in their research for this product. According to Patently Apple, this is standard practice for Apple.
The examining attorney claimed that this website was insufficient to prove that the product was something Apple intended to sell. Furthermore, the attorney claimed the ubiquitous “Buy Now” button found on all of Apple´s product pages was spaced too far from the “iPad mini” title on the web page.
“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,” wrote the attorney earlier this year.
The most recent office action removes the primary objection for refusing the trademark, but still claims Apple must issue a disclaimer about their rights to the word “mini” when promoting their smaller tablet.