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UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

U.S. APPLICATION SERIAL NO. 85780375

MARK: IPAD MINI


*85780375*
CORRESPONDENT ADDRESS:
THOMAS R. LA PERLE CLICK HERE TO RESPOND TO THIS LET
APPLE INC. http://www.uspto.gov/trademarks/teas/response_form
1 INFINITE LOOP
CUPERTINO, CA 95014-2083

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 USPTO
MUST 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. Applicant
must 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 refusal
Specimen refusal

SEARCH OF OFFICE’S DATABASE OF MARKS

The trademark examining attorney has searched the Office’s database of registered and pending marks
and has found no similar registered mark that would bar registration under Trademark Act Section 2(d).
TMEP §704.02; see 15 U.S.C. §1052(d). However, marks in prior-filed pending applications may present
a 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 refused
registration 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’s
response to this Office action, action on this application may be suspended pending final disposition of the
earlier-filed referenced applications.

In response to this Office action, applicant may present arguments in support of registration by addressing
the 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 this
issue 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, 3
USPQ2d 1009, 1009-10 (Fed. Cir. 1987).

Applicant has applied to register the mark IPAD MINI for “handheld mobile digital electronic device
comprising a tablet computer, electronic book and periodical reader, digital audio and video player,
camera, electronic personal organizer, personal digital assistant, electronic calendar, and mapping and
global 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 be
understood by the purchasing public to refer to the Internet when used in relation to Internet-related
products 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 goods
and/or services, then the entire mark may be considered merely descriptive. See In re Zanova, Inc., 59
USPQ2d 1300, 1304 (TTAB 2000) (holding ITOOL merely descriptive of computer software for use in
creating 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 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 computer”.

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods
and/or services, not in the abstract. DuoProSS Meditech 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. , 51
USPQ2d 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 dictionary
definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT
PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where
the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating
system).

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is
not 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 than
other members of its type or class”. See attached definition. 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).

The examining attorney has also attached evidence from an internet search showing third party descriptive
use of the term “mini” to describe the small size of various handheld digital devices. See attached
evidence. Therefore, the wording merely describes a feature of applicant’s goods, namely, a small sized
handheld tablet computer.

As demonstrated, applicant’s mark comprises a combination of descriptive terms. Generally, if the


individual 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 Phoseon
Tech., 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 merely
descriptive 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); In
re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663 (TTAB 1988) (holding GROUP SALES BOX
OFFICE merely descriptive of theater ticket sales services because such wording “is nothing more than a
combination of the two common descriptive terms most applicable to applicant’s services which in
combination 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, or
otherwise 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 goods
and do not create a unique, incongruous, or non-descriptive meaning in relation to the goods being small
handheld mobile devices comprising tablet computers capable of providing internet access. Therefore, the
mark is merely descriptive of a feature or characteristic of the goods and registration is refused under
Section 2(e)(1) of the Trademark Act.

SECTION 2(f) IN PART


If applicant believes that a portion of the mark has acquired distinctiveness, applicant may amend the
application to add a claim of acquired distinctiveness as to that portion under Trademark Act Section 2(f).
See 15 U.S.C. §1052(f); TMEP §1212.02(f)(i).

Evidence in support of this claim may consist of a claim of ownership of one or more prior registrations
on the Principal Register of that portion of the mark for goods and/or services that are the same as or
related to those named in the pending application. TMEP §1212.02(f)(i); see 37 C.F.R. §2.41(b). To do
so, applicant must submit the following statement, if accurate: “ The wording IPAD in the mark has
become distinctive of the goods as evidenced by ownership of U.S. Registration No. 3776575 on the
Principal Register for the same mark for related goods.” TMEP §1212.04(e).

ADVISORY: DISCLAIMER REQUIRED

Applicant is advised that, if the application is amended to seek registration on the Principal Register under
Trademark Act Section 2(f) in part, applicant must disclaim the descriptive wording “MINI” apart from
the mark as shown because it merely describes a characteristic or feature of applicant’s goods. See 15
U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., ___ F.3d ___, 103
USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71
USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420,
1421 (Fed. Cir. 2005). If applicant is relying on ownership of U.S. Registration No. 3776575 on the
Principal Register for the same mark for related goods as the basis of a Section 2(f) in part claim, please
note that the registration does not include the term “MINI”, and therefore, this term must still be
disclaimed as being merely descriptive of a feature of the goods.

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. See Dena Corp. v. Belvedere Int’l, Inc. , 950 F.2d 1555,
1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).
A disclaimer does not affect the appearance of the mark; that is, a disclaimer does not physically remove
the disclaimed matter from the mark. TMEP §§1213, 1213.10.

If applicant does not provide a required disclaimer, the USPTO may refuse to register the entire mark. See
In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); TMEP
§1213.01(b).

Applicant should submit a disclaimer in the following standardized format:

No claim is made to the exclusive right to use “MINI” apart from the mark as shown.

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement using the
Trademark Electronic Application System (TEAS) form, please go to
http://www.uspto.gov/trademarks/law/disclaimer.jsp.

Please note the additional ground of refusal:

SPECIMEN REFUSAL

The web catalog or web page specimen is not acceptable to show trademark use as a display associated
with the goods because it fails to include a picture or a sufficient textual description of the goods in
sufficiently close proximity to the necessary ordering information/a weblink for ordering the goods, and
thus, appears to be mere advertising material. See In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118,
1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957 (TTAB 2012); In re Genitope
Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); TMEP §904.03(h), (i); cf. Lands’ End, Inc. v. Manbeck,
797 F. Supp. 511, 513-14, 24 USPQ2d 1314, 1316 (E.D. Va. 1992). The mark and picture of the goods
on the specimen are not sufficiently proximate to the “buy now” tab, and it is thus unclear what
consumers would be purchasing by clicking on this tab.

Advertising material, which merely tells prospective purchasers about the goods or promotes the sale of
the goods, is generally not acceptable as a specimen to show trademark use in connection with goods. See
In re Genitope Corp., 78 USPQ2d at 1822; In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB
1997); TMEP §904.04(b), (c).

However, a web catalog, web page, or similar specimen, which is otherwise a form of advertising, is
acceptable to show trademark use as a display associated with the goods if it includes (1) a picture of the
relevant goods or a textual description that identifies the actual features or inherent characteristics of the
goods such that the goods are recognizable, (2) the mark appearing sufficiently near the picture or textual
description of the goods so as to associate the mark with the goods, and (3) information necessary to order
the goods (e.g., an order form or offer to accept orders via phone or e-mail) or a visible weblink to order
the goods. See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Genitope Corp., 78
USPQ2d at 1822; TMEP §904.03(h), (i); cf. Lands’ End, Inc. v. Manbeck, 797 F. Supp. at 513-14, 24
USPQ2d at 1316. Without this information, the specimen is mere advertising and is not acceptable to
show use in commerce for goods. See, e.g., In re Osterberg, 83 USPQ2d 1220, 1222-24 (TTAB 2007); In
re Genitope Corp., 78 USPQ2d at 1822.

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for
mark in use in commerce for each class of goods. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051,
1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Section 45 requires use of the mark
“on the goods or their containers or the displays associated therewith or on the tags or labels affixed
thereto.” 15 U.S.C. §1127; see 37 C.F.R. §2.56(b)(1); TMEP §§904.03, 904.04(b), (c).

Therefore, applicant must submit the following:

(1) A substitute specimen showing the mark in use in commerce for each class of goods specified
in the application.

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R.
§2.20: “ The substitute specimen was in use in commerce at least as early as the filing date of
the application.” 37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting
a substitute specimen requires an amendment to the dates of use, applicant must also verify the
amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.

Examples of specimens for goods are tags, labels, instruction manuals, containers, or photographs that
show the mark on the actual goods or packaging. See TMEP §§904.03 et seq.

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in
commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is
required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will
not be granted until applicant later amends the application back to use in commerce by filing an acceptable
allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP
§1103.

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or
signed declaration under 37 C.F.R. §2.20: “ Applicant has had a bona fide intention to use the mark in
commerce on or in connection with the goods listed in the application as of the filing date of the
application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1),
2.193(e)(1).

Pending receipt of a proper response, registration is refused because the specimen does not show the
applied-for mark in use in commerce as a trademark. Trademark Act Sections 1 and 45, 15 U.S.C.
§§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

Although applicant’s mark has been refused registration, applicant may respond to the refusals by
submitting evidence and arguments in support of registration.

DECLARATION FOR SPECIMEN

To submit a verified substitute specimen online via the Trademark Electronic Application System (TEAS),
applicant should do the following: (1) answer “yes” to the TEAS response form wizard question to
“submit a new or substitute specimen;” (2) attach a jpg or pdf file of the substitute specimen; (3) select
the statement that “The substitute specimen(s) was in use in commerce at least as early as the filing date
of the application.”; and (4) sign personally or enter personally his/her electronic signature, name in
printed or typed form, and date after the declaration at the end of the TEAS response form. See 37 C.F.R.
§§2.59(a), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b). Please note that these steps appear on
different pages of the TEAS response form.

If applicant experiences difficulty in submitting the required substitute specimen, supporting statement
and/or declaration, please e-mail TEAS@uspto.gov for technical assistance regarding the TEAS response
form.

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark
examining attorney. All relevant e-mail communications will be placed in the official application record;
however, an e-mail communication will not be accepted as a response to this Office action and will not
extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.
Further, although the trademark examining attorney may provide additional explanation pertaining to the
refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide
legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

/Lee-Anne Berns/
Examining Attorney
Law Office 105
571-272-8982
lee-anne.berns@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please


wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System
(TEAS), to allow for necessary system updates of the application. For technical assistance with online
forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned
trademark examining attorney. E-mail communications will not be accepted as responses to Office
actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official
application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or
someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint
applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does
not miss crucial deadlines or official notices, check the status of the application every three to four months
using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep
a copy of the TSDR status screen. If the status shows no change for more than six months, contact the
Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-
9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at


http://www.uspto.gov/trademarks/teas/correspondence.jsp.