Last week we reported that the U.S. Patent and Trademark Office had issued a temporary rejection of Apple’s ‘iPad mini’ trademark, and had asked the company to revise and resubmit an application. It seems the issue has been mostly resolved without Apple actually having to actually address the issue.
The examiner’s primary objection to Apple’s application related to all of the elements of the “iPad mini” name having been judged as descriptive rather than contributing to a unique product name. A second objection related to Apple’s use of the iPad mini overview page as its specimen proving that the named product was being offered for sale.
At that time, the resolution to the issue was believed to be straightforward, with Apple merely needing to show that ‘iPad mini” was an extension of the already distinctive ‘iPad” trademark.
A newly published USPTO office action, dated last Wednesday, shows the issue is basically resolved. It seems that due to the publicity surrounding the initial decision, the USPTO has withdrawn its two main objections.
This Office action supersedes any previous Office action issued in connection with this application.
Upon further review of the application, the examining attorney has determined that the following refusals issued in the initial Office action should be withdrawn. The examining attorney apologizes for any inconvenience caused.
REFUSALS WITHDRAWN:
The Trademark Act Section 2(e)(1) descriptiveness refusal and the Sections 1 and 45 specimen refusal are both withdrawn.
The document does alert Apple to other issues with the application, including the potential for it to be refused should other earlier pending applications from other companies with electronic products with “mini” in the name end up being granted. No action is required by Apple at this point in time however.
Apple will have to add a disclaimer to its application noting that it only seeks to protect the term “mini” when used as part of the “iPad mini” moniker. Other companies would be allowed to use the term “mini” in their product names.
