Apple Attempt to Trademark 'iPad Mini' Reconsidered By USPTO

 
 
By Michelle Maisto  |  Posted 2013-04-08 Email Print this article Print
 
 
 
 
 
 
 

The U.S. Patent and Trademark office has reconsidered its position that the "mini" in Pad Mini is a descriptor and so public fair game. 

Apple's foiled attempt to trademark the "iPad Mini" has been reconsidered by the United States Patent and Trademark Office (USPTO), MacRumors first reported April 7.

"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the examining attorney has determined that the following refusals issued in the initial Office action should be withdrawn.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," the USPTO wrote in an updated document.

After initially denying Apple's request to trademark, saying that "mini" is "merely descriptive," the USPTO has determined that Apple can now use the word, but it must include a disclaimer that states, "No claim is made to the exclusive right to use 'MINI' apart from the mark as shown."

The examining attorney included Web pages showing the word "mini" being used descriptively. "An applicant may not claim exclusive rights to terms or designs that others may need to use to describe or show their goods or services in the marketplace," the official letter added.

Still, Apple isn't yet in the clear. The  USPTO said that it could turn down Apple's request if other applications, filed earlier and requesting use of the work, are approved, in which case there could be a "likelihood of confusion between these marks." 

Apple has had plenty of time to ponder the age-old question of what's in a name.

In early 2010, after the introduction of the first iPad, Fujitsu said that it owned the iPad name—and eventually turned it over to Apple.

In China, Shenzhen Proview Technology said that the iPad name belonged to it. While Apple purchased the trademark for the iPad name in Taiwan in 2009, Shenzen Proview argued in 2012 that Apple's rights didn't extend to using the name in mainland China—which is now the world's largest market for tablets and smartphones.

Earlier this year, Apple also ran into trouble regarding its exclusive rights to the iPhone name in Brazil—a fast-growing market Apple executives often mention in the same breath as they utter "China."

Brazilian company Gradiente Electronica registered the iPhone name in 2000 and was granted the iPhone trademark in 2008, according to BBC. In 2012, the company began to sell an Android-running device it called the iPhone.

Apple appealed to the Institute of Industrial Property (INPI), saying that Gradiente hadn't made use of the name within five years and so its claim on the name had expired, as Brazilian law stipulates.

The BBC reported Feb. 13 that Brazilian regulators had ruled that Apple could sell its iPhone in the country, but that Gradiente has the option of "suing for exclusivity in South America's biggest market."

Apple has also scuffled with rivals over the "App Store" name. When Amazon launched an Appstore for Android in 2011, Apple sued—and Amazon counter-sued, insisting the phrase was generic and all companies should be able to use it.

Microsoft argued the same point in a July 2010 filing with the USPTO, stating that "undisputed evidence shows that 'app store' is a generic name for a store offering apps" and that if Apple secured a federal registration for the generic term, Microsoft would "suffer damage."

Apple continues to sell apps in its App Store, while Microsoft hosts a Windows Phone Store and Windows Phone Marketplace and Amazon continues to grow its Appstore for Android.

 
 
 
 
 
 
 
 
 
 
 
 
 

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