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USPTO Refuses Apple s iPad Mini Trademark Application

USPTO Refuses Apple s iPad Mini Trademark Application

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Trademark application refused
Trademark application refused

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Categories:Types, Business/Law
Published by: steven_musil on Mar 31, 2013
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07/21/2013

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UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

U.S. APPLICATIONSERIAL NO.
85780375
MARK:
IPAD MINI
*85780375*

CORRESPONDENT ADDRESS:
 THOMAS R. LA PERLE APPLE INC. 1 INFINITE LOOP CUPERTINO, CA 95014-2083 
 
CLICK HERE TO RESPOND TO
http://www.uspto.gov/trademarks/teas/r

APPLICANT:
Apple Inc.

CORRESPONDENT’S REFERENCE/DOCKET NO:
 N/A
 CORRESPONDENT E-MAIL ADDRESS:
 
OFFICE ACTION
STRICT DEADLINE TO RESPOND TO THIS LETTER
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTOMUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER
WITHIN 6 MONTHS
OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE:
The referenced application has been reviewed by the assigned trademark examining attorney. Applicantmust respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a),2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES
that applicant must address:Section 2(e)(1) descriptiveness refusalSpecimen refusalS
EARCH OF OFFICE’S DATABASE OF MARKS
ThetrademarkexaminingattorneyhassearchedtheOffice’sdatabaseofregisteredandpendingmarksandhasfoundnosimilarregisteredmarkthatwouldbarregistrationunderTrademarkActSection2(d).TMEP§704.02;
see
15U.S.C.§1052(d).However,marksinprior-filedpendingapplicationsmaypresenta bar to registration of applicant’s mark.
ADVISORY: PRIOR-FILED APPLICATIONS
The filing dates of pending U.S. Application Serial Nos. 77913563, 77927446, 77932051, 77932073,77982320, 77982321, 85014225 and 85014233, precede applicant’s filing date. See attached referenced
 
applications. If the marks in the referenced applications register, applicant’s mark may be refusedregistration under Trademark Act Section 2(d) because of a likelihood of confusion between these marks.
See
15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208
et seq.
 Therefore, upon receipt of applicant’sresponse to this Office action, action on this application may be suspended pending final disposition of theearlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressingthe issue of the potential conflict between applicant’s mark and the marks in the referenced applications.Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address thisissue later if a refusal under Section 2(d) issues.Applicant must respond to the following:
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature or characteristic of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1);
see
TMEP §§1209.01(b),1209.03
et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature,purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b);
see In re Steelbuilding.com
,415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005);
 In re Gyulay
, 820 F.2d 1216, 1217-18, 3USPQ2d 1009, 1009-10 (Fed. Cir. 1987).Applicant has applied to register the mark 
IPAD MINI
for “handheld mobile digital electronic devicecomprising a tablet computer, electronic book and periodical reader, digital audio and video player,camera, electronic personal organizer, personal digital assistant, electronic calendar, and mapping andglobal positioning system (GPS) device, and capable of providing access to the Internet and sending,receiving, and storing messages and other data”.The term “IPAD” is descriptive when applied to applicant’s goods because the prefix “I” denotes“internet.” According to the attached evidence, the letter “i” or “I” used as a prefix and would beunderstood by the purchasing public to refer to the Internet when used in relation to Internet-relatedproducts or services. Applicant’s goods are identified as “capable of providing access to the Internet”.When a mark consists of this prefix coupled with a descriptive word or term for Internet-related goodsand/or services, then the entire mark may be considered merely descriptive.
SeeIn re Zanova, Inc.
, 59USPQ2d 1300, 1304 (TTAB 2000) (holding ITOOL merely descriptive of computer software for use increating web pages, and custom designing websites for others); TMEP §1209.03(d).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 computercontained in a touch screen.” Please see the attached dictionary definition. In addition, the attachedexcerpts from third party websites show descriptive use of the term “pad” in connection with tabletcomputers. This marketplace evidence shows that the term “pad” would be perceived by consumers asdescriptive of “pad computers” with internet and interactive capability. Applicant’s goods are identifiedas “a handheld digital mobile electronic device comprising tablet computer”.The determination of whether a mark is merely descriptive is made in relation to an applicant’s goodsand/or services, not in the abstract.
 DuoProSSMeditech Corp. v. Inviro Med. Devices, Ltd.
, ___ F.3d ___,
 
103 USPQ2d 1753, 1757 (Fed. Cir. 2012);
 In re The Chamber of Commerce of the U.S.
, 675 F.3d 1297,1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b);
see, e.g.
,
 In re Polo Int’l Inc.
, 51USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the“documents” managed by applicant’s software rather than the term “doctor” shown in a dictionarydefinition);
 In re Digital Research Inc.
, 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENTPC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” wherethe relevant trade used the denomination “concurrent” as a descriptor of a particular type of operatingsystem).“Whether consumers could guess what the product [or service] is from consideration of the mark alone isnot the test.
 In re Am. Greetings Corp.
, 226 USPQ 365, 366 (TTAB 1985).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 thanother members of its type or class”. See attached definition. The word “mini” has been held merelydescriptive 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 MINIPELLETS merely descriptive of pelleted fertilizer).The examining attorney has also attached evidence from an internet search showing third party descriptiveuse of the term “mini” to describe the small size of various handheld digital devices. See attachedevidence. Therefore, the wording merely describes a feature of applicant’s goods, namely, a small sizedhandheld tablet computer.As demonstrated, applicant’s mark comprises a combination of descriptive terms. Generally, if theindividual components of a mark retain their descriptive meaning in relation to the goods and/or services,the combination results in a composite mark that is itself descriptive and not registrable.
 In re PhoseonTech., Inc.
, 103 USPQ2d 1822, 1823 (TTAB 2012);TMEP §1209.03(d);
see, e.g.
,
 In re King Koil Licensing Co.
, 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merelydescriptive of beds, mattresses, box springs, and pillows where the evidence showed that the term“BREATHABLE” retained its ordinary dictionary meaning when combined with the term“MATTRESS” and the resulting combination was used in the relevant industry in a descriptive sense);
 Inre Associated Theatre Clubs Co.
, 9 USPQ2d 1660, 1663 (TTAB 1988) (holding GROUP SALES BOXOFFICE merely descriptive of theater ticket sales services because such wording “is nothing more than acombination of the two common descriptive terms most applicable to applicant’s services which incombination achieve no different status but remain a common descriptive compound expression”).Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, orotherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable.
See In re Colonial Stores, Inc.
, 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968).In this case, both the individual components and the composite result are descriptive of applicant’s goodsand do not create a unique, incongruous, or non-descriptive meaning in relation to the goods being smallhandheld mobile devices comprising tablet computers capable of providing internet access. Therefore, themark is merely descriptive of a feature or characteristic of the goods and registration is refused underSection 2(e)(1) of the Trademark Act.
SECTION 2(f) IN PART

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