The U.S. Patent and Trademark Office (USPTO) has withdrawn its refusal to grant Apple Inc.’s trademark application for the “iPad Mini.” The application was previously denied by the USPTO after finding the word “mini” was merely descriptive.
If the USPTO determines that a mark is “merely descriptive,” then a mark cannot be registered unless it acquires a distinctive secondary meaning through use in commerce for a significant period of time. In its initial refusal letter, the USPTO 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However, the USPTO has since rescinded its initial refusal.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 Office, “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.
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