Fred D. Zemel
Partner
201-896-7065 fzemel@sh-law.comKey Contacts
Back
The U.S. Patent and Trademark Office (USPTO) has withdrawn its refusal to grant Apple Inc.’s trademark application for mark “iPad Mini.” The examining attorney previously denied the request on several grounds, including that the word “mini” was merely descriptive.
If the USPTO determines that a mark is “merely descriptive,” then it cannot be registered unless it acquires distinctiveness. In its initial refusal letter, the USPTO’s examining attorney stated that the term “mini” simply described “something that is distinctively smaller than other members of its type or class” and provided several examples in which similar marks involving the term were denied.
However, the USPTO has since rescinded its initial refusal. Apple’s application now has the green light so long the company includes a disclaimer about its use of the word “mini.” According to the agency’s latest letter, “Applicant 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.”
As explained by the examining attorney, “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.” Therefore, Apple’s trademark application must be amended to include the following disclaimer: “No claim is made to the exclusive right to use “MINI” apart from the mark as shown.”
As Apple’s trademark process highlights, refusals issued in the initial action are not the final word. Depending on the circumstances, applicants can pursue further USPTO review or amend their applications to satisfy concerns raised by the examining attorney.
If you have any questions about this case or would like to discuss the legal issues involved, please contact me, Fred Zemel, or the Scarinci Hollenbeck attorney with whom you work.
- Practices: Intellectual Property
- Locations: Red Bank, NJ, New York City, Little Falls, NJ
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
Related Posts
See all
Don’t Overlook the Importance of Business License Management
If you operate a business without the proper license, you risk fines, insurance issues, reputational harm, and even business closure. Even innocent mistakes, like forgetting to renew a license, can have significant consequences, such as losing your lawsuit for payment of services that are unlicensed, which makes it imperative to have business license management procedures […]
Author: Dan Brecher
Failing to Comply With NJ Rent Control Exemption May Prove Costly
What Developers Need to Know About New Jersey’s Rent Control Exemption Law to Ensure Entitlement to Exemption for Newly Constructed Multi-family Housing. A property owner in Jersey City is facing a $400 million federal class action lawsuit alleging that the landlord did not follow the procedural steps required to be eligible for exemption from local […]
Author: Patrick T. Conlon
Crypto Securities Law: When Tokens Become Investment Contracts
The application of traditional federal securities laws to crypto assets continues to evolve. In some cases, the Securities and Exchange Commission (SEC) considers tokens and other digital assets to be securities. This makes them subject to federal securities law, including the Securities Act of 1933 and the Securities Exchange Act of 1934. This classification has […]
Author: Bryce S. Robins
The Due Diligence Process for NY Condominiums and Cooperatives
While the New York City real estate market can be extremely competitive, moving too quickly often backfires. Before purchasing a condominium or cooperative in New York City, it is important to do you homework. Purchasing property in NYC can involve a dizzying number of legal issues. These include condo and co-op rules, rent restrictions, and […]
Author: Jesse M. Dimitro
Smart Contract Legal Issues: Drafting Agreements for Blockchain
Smart contracts feature a unique blend of legal agreement and technical code. This innovation has the potential to reshape how business is conducted. At the same time, smart contract legal issues around enforceability, jurisdiction, identity, and compliance are common. The legal framework for these self-executing agreements is still evolving. What Are Smart Contracts? Smart contracts, […]
Author: Bryce S. Robins
Are Stay Interviews the Key to Retaining Top Talent?
Retaining top talent continues to be one of the greatest challenges facing employers today. Even in an employer’s market, the loss of a key employee can disrupt operations and result in significant costs. While compensation plays a role, long-term retention often depends on workplace culture, communication, and employee engagement. One increasingly popular strategy for improving […]
Author: Angela A. Turiano
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
Sign up to get the latest from our attorneys!
Explore What Matters Most to You.
Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.
Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.