Fred D. Zemel
Partner
201-896-7065 fzemel@sh-law.comKey Contacts
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The U.S. Patent and Trademark Office (USPTO) has withdrawn its refusal to grant Apple Inc.’s trademark application for mark “iPad Mini.”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However, the USPTO has since rescinded its initial refusal.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
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