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The U.S. Patent and Trademark Office (USPTO) has withdrawn its refusal to grant Apple Inc.’s trademark application for mark “iPad Mini.”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However, the USPTO has since rescinded its initial refusal.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
Rule 26 Expert Discovery: When an Expert Witness Uses AI, Is It Discoverable?
Case law following the 2010 amendments to Federal Rule of Civil Procedure 26 offers guidance on how courts are likely to address whether an expert witness’s AI records are subject to discovery. Key Takeaways Rule 26 Expert Discovery After the 2010 Amendments This article addresses the question courts and lawyers have faced in recent cases: […]
Author: Chris Seelinger
How Expert Witness AI Use Ends Up in Discovery
“Show how 3M is 0% at fault.” The absurd tale of how a 350-page ChatGPT history for 3M’s expert witness was produced during a deposition is more likely than you think. It’s an inevitable trend, and an unsettled question for federal courts as experts make generative AI part of their workflow. Key Takeaways Expert Witness […]
Author: Chris Seelinger
The Screenshot Problem: Why Nothing Is Really Private Anymore
Screenshots have changed the risks of electronic communications. The screenshot problem is that messages intended for one person or a small group can be copied, forwarded, preserved, and ultimately presented to opposing counsel, regulators, journalists, customers, or a jury. Businesses should recognize that a truly private digital conversation is increasingly unreliable and ensure their policies, […]
Author: Sean M. Pena
BESS Project Agreements: Allocating Risk Among Developers, EPC Contractors, and Equipment Suppliers
Developers, engineering, procurement, and construction (EPC) contractors, and equipment suppliers each play a critical role in completing a BESS project. However, when equipment costs rise, deliveries are delayed, or regulations change, determining who bears the financial consequences can become contentious. Well-drafted project agreements are essential to sound risk allocation. Key Takeaways This article is Part […]
Author: Nicholas Wall
IP Infringement: What Steps Can You Take If You're Affected?
IP infringement occurs when someone uses your intellectual property without your permission or beyond the scope of the permission you granted. Common examples of IP infringement include copying a product’s patented features or using a trademarked logo in a way that is likely to confuse consumers about the source or affiliation of goods or services. […]
Author: Michael Mietlicki
Public Allegations, Unfinished Investigation: What New Jersey Businesses Should Do Next
When facing public allegations of wrongdoing, companies should not let the speed of the public conversation dictate the speed of an investigation. An investigation designed to confirm a preferred narrative rather than establish the facts can create serious problems later, particularly if litigation, regulatory scrutiny, or employment claims follow. Key Takeaways When public allegations surface […]
Author: Sean M. Pena
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.