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The U.S. Patent and Trademark Office (USPTO) has withdrawn its refusal to grant Apple Inc.’s trademark application for mark “iPad Mini.”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However, the USPTO has since rescinded its initial refusal.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
Guardianships in New Jersey: When a Loved One Can No Longer Manage Personal or Financial Affairs
When a family member can no longer make important decisions for themself, the question is often not whether the family will step in, but whether they have the legal authority to do so. A spouse may manage household finances, or an adult child may arrange medical care and pay bills. Still, informal assistance does not […]
Author: Marc J. Comer
New Jersey’s Revised UHAC Regulations: What Residential Developers Need to Know About Affordable Housing Commitments
New Jersey residential developers with affordable housing obligations should carefully review their existing approvals, development agreements, and proposed deed restrictions in light of the State’s revised UHAC regulations (Uniform Housing Affordability Controls). The regulations, which took effect on November 6, 2025, significantly change the administration and physical requirements for affordable housing units. For developers with […]
Author: Wendy Rubinstein Quiroga
“No Comment” Culture: Why Silence Is Often the Riskiest Legal Strategy
A “no comment” response is sometimes the right call when a legal problem arises. As a blanket policy, however, it lets allegations go unanswered, deadlines pass, evidence disappear, and manageable disputes grow into expensive litigation. The businesses that fare best are usually the ones that say little publicly while acting decisively behind the scenes. When […]
Author: Sean M. Pena
Utility-Scale Battery Storage Projects: A Legal Roadmap for Developers, Property Owners and Other Stakeholders
Utility-scale battery energy storage systems (BESS) are becoming an increasingly important component of the electric grid throughout New Jersey, New York, and Pennsylvania. As renewable generation expands, electricity demand increases and grid operators seek greater flexibility, battery storage can help balance supply and demand while providing additional capacity and reliability. For developers, battery storage presents […]
Author: Nicholas Wall
Navigating Disputes: Hire a Partnership Dispute Lawyer
A falling out between partners can be disastrous for any business. In many cases, the partnership will not survive. If you are in an unworkable situation with your partners, it may be time to consult a partnership dispute lawyer experienced in handling partnership breakups and dissolutions before the situation deteriorates any further. It is easy […]
Author: Jay McDaniel
Section 363 Sales in Bankruptcy: What Businesses, Lenders, and Buyers Need to Know
When a company enters Chapter 11 bankruptcy, many assume the process will culminate in a lengthy reorganization plan. However, distressed businesses are increasingly being sold through a different mechanism — a sale under Section 363 of the United States Bankruptcy Code. A Section 363 sale allows a company, as a debtor-in-possession in bankruptcy, to sell […]
Author: John D. Giampolo
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.