The United States Patent and Trade Office (USPTO) denied Apple Computer’s application for the mark ‘iPad Mini’ for being ‘merely descriptive’.
Merely descriptive is one of five categories defining distinctiveness in regards to federal trademarks. From most distinctive to less distinctive, the categories are: (1) fanciful, (2) arbitrary, (3) suggestive, (4) descriptive, and (5) generic. The trademark office never grants protection for a generic mark. A descriptive mark, on the other hand , may be afforded protection if the mark has become distinctive by achieving secondary meaning. An example is ‘International Business Machines’ which is merely descriptive of IBM’s products, but has developed secondary meaning to consumers.
The examiner states:
The term “MINI” in the applied for mark is also descriptive of a feature of applicant’s product. Specifically, the attached evidence shows this wording means “something that is distinctively smaller than other members of its type or class.” The word “mini” has been held merely descriptive of goods that are produced and sold in miniature form. See Gen. Mills, Inc. v. K-Mar Foods, Inc., 207 USPQ 510 (TTAB 1980) (holding MINI MEAL merely descriptive of concentrated nutritionally-complete food bars); In re Occidental Petroleum Corp., 193 USPQ 732 (TTAB 1977) (holding MINI PELLETS merely descriptive of pelleted fertilizer).
What is rather perplexing is the examiner also stated that the term ‘iPad’ could not be a valid trademark, seemingly oblivious to the fact that ‘iPad’ is a registered trademark, a status granted by the very same office.
The term “PAD” is also descriptive of the applied for goods. The term “pad” refers to a “pad computer” or “internet pad device”, terms used synonymously to refer to tablet computers, or “a complete computer contained in a touch screen.” Please see the attached dictionary definition. In addition, the attached excerpts from third party websites show descriptive use of the term “pad” in connection with tablet computers. This marketplace evidence shows that the term “pad” would be perceived by consumers as descriptive of “pad computers” with internet and interactive capability. Applicant’s goods are identified as “a handheld digital mobile electronic device comprising tablet computerâ€.
Apple should have no problem refuting the ‘merely descriptive’ claim regarding the ‘iPad’ name. As far as the ‘mini’ part of the mark, Apple can easily overcome this objection by disclaiming any use of the term ‘mini’ apart from the whole mark, ‘iPad mini’. Apple should have no problem defeating these objections and ultimately receiving federal trademark protection on the mark ‘iPad mini.’