Apple has recently run afoul of the “descriptive” moniker assigned by United States Trademark Examiners when an applicant for trademark uses a term that the Examiner believes is only descriptive in nature. In this case, Apple applied for the trademark “Ipad Mini” and the Examiner is currently rejecting that mark (I say currently since Apple can and will argue against this rejection) because the term “mini” is descriptive in nature only and does not add to the distinctiveness of the overall mark.
To understand the reasoning behind the Examiner’s finding, a little background in trademark law may be in order. First, the purpose of a trademark itself is to inform the consumer as to who is providing the goods in question. When you see Coke on a can, you clearly understand that it is the Coca-Cola Company that is supplying this good and no other company can use the term “Coke” for soft drinks because it would confuse the consumer as to the source of the product and could damage Coca-Cola’s good standing.
Second, the purpose of the Trademark Examiner is to ensure that the mark is distinctive enough to actually inform the consumer. Two of the ways it would not be distinctive is if either the term is too close to another’s mark (likelihood of confusion) or if it is too descriptive. The first of these is somewhat obvious but the second can be trickier. Marks are defined, generally, as arbitrary, suggestive, descriptive or generic, with the argument for an acceptable mark being strongest to weakest in that order. For example, the trademark “Apple” is arbitrary since the word itself has no connection to electronic devices. Suggestive marks may include those such as “Year Around Brown” which is a tanning salon. The name somewhat suggests a tanning salon, but there is no actual descriptive terminology within that mark. Arbitrary and suggestive marks are inherently distinctive due to their lack of being descriptive. Descriptive marks like “mini” are only describing a characteristic of the article itself. Thus if your local taco shop offered the “Big Burrito” it would not likely be awarded a trademark because it is clearly describing a characteristic of the burrito. Generic words are those which are simply the conventional name given to an article, such as “burrito.”
In the present case, the problem lies not with the “Ipad” portion but the “Mini” portion. The Examiner is simply stating that while Apple may obviously have and use its “Ipad” mark, the term “Mini” does not add to the distinctiveness of the mark but simply describes the fact that the newest Ipad is smaller than the old one and that there are clearly Ipads of varying sizes. For example, this may be likened to branding in the automotive industry. Ford, for instance, names one vehicle a Ford Fiesta and another a Ford Mustang (i.e. arbitrary or suggestive) as opposed to a Ford economy car and a Ford sports car, which would be descriptive and adding nothing to distinctiveness of the term “Ford.” The Examiner will resist allowing such a mark because policy wise, you would not want generic and descriptive marks to become trademarks and thus unavailable for everyday usage. For instance, if “Big Burrito” was trademarked and you owned a taco stand that had several sized burritos, you would be hampered by the fact that you could not use the term “big” in association with your burrito.
Time will tell if Apple can overcome the rejection, but it will definitely be hard to argue that the term is being used for anything but indicating the relative size of the new Ipad.