The United Stated Patent and Trademark Office has issued a retraction of the previous Action and now states that Apple might be awarded its trademark (though it still must overcome some earlier filings by others using the term “mini”) if it takes particular actions. While I did state in an earlier blog that Apple’s overcoming of the term “mini” as being descriptive would be difficult, there was one important caveat I didn’t mention and that was Apple’s ability to link the term to “Ipad.” What the attorney for Apple ultimately did was to amend the trademark application to indicate that Apple makes no claim to the exclusive right to use the term “mini” apart from its usage in association with the term “Ipad.” That is, Apple will forever connect the terms together as filed, i.e. “IPAD MINI,” and there would be no infringement if someone else uses the term “mini” by itself or in conjunction with another term which is not confusingly similar to “Ipad.”
The above being said, there is a two sided policy question that should be raised. On the side of the USPTO, it could be argued that, as stated by the Examiner originally, the term is simply descriptive and therefore adds nothing to the original mark to distinguish it aside from the description itself. Aside from being a waste of time for the USPTO, this could potentially open up more litigation for what the trademark holder thinks is a “close” case. For example, if the company PODS, which does self-storage containers, suddenly sold Mini-Pods, or POD Minis, would Apple initiate a suit? Theoretically that should not be the case because “Ipad” is broader than “Ipad Mini” and if POD Minis would not infringe Ipad, then Ipad Mini should not be infringed either. However, one can see the plausible arguments that could be seized upon by overzealous trademark holders, and, where often the receiver of the infringement venom is a small operation that can ill afford representation in a trademark infringement suit, the effects could be disastrous for some businesses.
On the other side is the question as to why Apple even wants this particular trademark? It seems superfluous to spend money on “Ipad Mini” when “Ipad” is already locked up. There are small arguments that it will bolster the strength of the original mark and may be used as a backup in case “Ipad” is ever contested. These are tenuous arguments at best, however, and from my perspective seem to be a waste of resources. Of course my typical client does not have the resource base of Apple and therefore I tend to preach a more conservative approach to IP protection. Regardless, the addition of the term mini is, in my opinion, worth little to Apple or its investors and perhaps should not have been pursued in the first place.