USPTO U-turn on 'iPad mini' refusal
The US Patent and Trademark Office (USPTO) has gone back on its original decision to refuse Apple’s application for a trademark covering the term ‘IPAD MINI’.
USPTO examining attorney Lee-Anne Berns rejected the initial registration, which was filed in November 2012, on the grounds that the “applied-for mark merely describes a feature or characteristic of applicant’s goods.”
In its official statement refusing the applications, the USPTO found the term ‘IPAD’ to be descriptive, reasoning that the prefix ‘I’ denotes ‘Internet’, and ‘PAD’ refers to ‘pad computer’ or ‘Internet pad device’, terms it said are “used synonymously to refer to tablet computers.”
Defining ‘mini’ as “something that is distinctively smaller than other members of its type or class”, it determined ‘IPAD MINI’ a combination of descriptive terms and therefore unregistrable as a trademark, a decision which has since been overturned.
In the supplementary office action addressed to Apple, the USPTO said: “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the examining attorney has determined that the following refusals issued in the initial Office action should be withdrawn.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 apologises for any inconvenience caused.”
It also advised that Apple add a disclaimer in its amended mark application, making it clear it refers to ‘IPAD MINI’ as a whole, and not just ‘mini’.
Jonathan Gelchinsky, partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Boston, said Berns had made the right decision in overturning the prior refusal: “I think that the examining attorney’s initial decision on the alleged descriptiveness of the ‘IPAD’ portion of the mark was questionable under the circumstances,” he said.
“The examiner herself noted in the first action that Apple could likely overcome that part of the refusal by entering a claim into the record that Apple owns an earlier registration for the mark. She easily could have justified not refusing the term in the first instance based on that same registration that she suggested Apple rely on.”
He added that even if the original decision stood, Apple could have overcome it in a number of ways, including “claiming ownership of a prior registration as suggested by the examiner, stating in the record that the mark has been in use for five or more years, or submitting evidence that the mark is recognised as a trademark for Apple’s products.
“It is almost certain that Apple would have overcome the refusal to register the ‘IPAD’ component of the mark had the examiner not changed her position,” he said.
