iPad mini trademark concerns withdrawn by U.S. Patent Office, but issues remain

Last week, we learned that the U.S. Patent Office was considering blocking the trademark application for Apple’s “iPad mini” brand over several concerns. But a new filing shows the office’s first major concerns are no longer holding Apple back.

The U.S. Patent Office (USPTO) initially had concerns that the “mini” in iPad mini was not a recognizable sign or design and was just a description. Basically, the word “mini” indicates that it is a smaller version of the iPad, a term that is already trademarked. The USPTO also had a concern over the iPad mini’s overview page being used as Apple’s “specimen,” since the specimen is supposed to show an instance of the trademark “as your purchasers encounter it in the marketplace,” according to the USPTO web site.

But now the office has withdrawn its primary objections to grant Apple the trademark for the term “iPad mini.” The USPTO writes in a newly published briefing:

This Office action supersedes any previous Office action issued in connection with this application.

Upon further review of the application, the examining attorney has determined that the following refusals issued in the initial Office action should be withdrawn. The examining attorney apologizes for any inconvenience caused.

REFUSALS WITHDRAWN:

The Trademark Act Section 2(e)(1) descriptiveness refusal and the Sections 1 and 45 specimen refusal are both withdrawn.

This official letter essentially knocks down the original arguments against giving Apple the new trademark, but the USPTO notes that two issues could still cause a refusal of the trademark.

First, the USPTO says it could refuse the application if certain other trademarks with the word “mini” are approved before it. It notes that Apple’s trademark “may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between these marks.”

The USPTO also says it could refuse the application if Apple does not add a “disclaimer” for the word “mini.” It writes:

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.

iPad mini photo via Devindra Hardawar/VentureBeat