Apple Inc.’s trademark attorneys must be working overtime. In the last few months we’ve seen Apple involved in trademark issues in China, Brazil, Mexico and now at home in the United States. The most recent issue stems from Apple’s trademark application for the iPad Mini, the baby brother to the ubiquitous iPad. Apple was previously able to secure a trademark registration on iPad, but recently an examining attorney at the United States Patent and Trademark Office rejected Apple’s attempt to register IPAD MINI.
Initially, the examining attorney refused registration of iPad Mini under Section 2(e)(1) of the Trademark Act as merely descriptive. Of course, the initial decision is inconsistent with the fact that Apple already has a trademark registration for the mark IPAD, indicating that at a minimum the word IPAD is distinctive. Subsequently on April 3, 2012, the USPTO withdrew the refusal with respect to the assertion that the term IPAD is descriptive, but maintained that the term “mini” is descriptive and requested that Apple disclaim “mini” apart from the overall mark. If Apple agrees to the disclaimer – something its trademark attorneys may recommend – then its trademark application will likely be allowed for publication.
Some background on trademark law will be helpful to explain why descriptive terms in a trademark application can be troublesome. Under trademark law, marks are commonly grouped into four general categories: generic, descriptive, suggestive, and arbitrary (sometimes referred to as fanciful). The first two categories of marks are not initially protectable as trademark and consequently may not be registered. The latter two categories of marks may be inherently distinctive and therefore may be registered as trademarks. A generic mark is something that identifies exactly what the product is, or in other words, it is the actual name of the product. For example, the term “soap” used in connection with soap. A descriptive mark is a mark that describes a quality or aspect of the goods or services. For example, use of the term “creamy” in connection with a line of peanut butter. Generic and descriptive marks are not protectable as trademarks because allowing exclusive rights to these types of marks would hinder competitors from actually describing their products. As a further example, CREAMY PEANUT BUTTER may not be registrable because PEANUT BUTTER is generic and CREAMY merely describes a characteristic of peanut butter. Combining the terms does not add anything distinctive to the overall mark. Accordingly, the trademark application would probably not be allowed for trademark registration, because it would permit the owner to prevent competitors from using terms needed to identify and describe what they are selling to consumers.
One caveat: while generic terms can never receive trademark protection by themselves, a descriptive mark may be registrable if it acquires secondary meaning. Secondary meaning means that in addition to the descriptive meaning of the mark, consumers have come to recognize the mark as identifying a source of goods or services and thus attach a secondary meaning to the mark associated with source identification. This can happen over time or because of extensive advertising conducted by the mark’s owner. An applicant can assert secondary meaning in a trademark application by providing a declaration under Section 2(f) of the Trademark Act and providing evidence of acquired distinctiveness.
Suggestive and arbitrary marks, of course, are protectable as trademarks because they do not limit competitors from properly identifying and describing their goods. A suggestive mark is a mark that, while not describing a characteristic of the goods, may suggest some characteristic or message regarding the goods. A suggestive mark typically requires some mental step to get from the commercial impression of the mark to the suggested characteristic of the product. An arbitrary or fanciful mark is a mark that has no natural connection with the type of good or service (but not misdescriptive). Thus, filing a trademark application for a suggestive or fanciful mark will increase your chances of obtaining a trademark registration.
Understanding how marks may be categorized provides some context for why the iPad Mini trademark application was initially refused registration. Adding the descriptive term “mini” to an arguably descriptive term “ipad” triggered a response from the USPTO examining attorney refusing registration. While Apple is likely to obtain an IPAD MINI trademark registration, the current challenge Apple is having demonstrates why a good trademark attorney should be used when seeking trademark registration. It also demonstrates the importance of really thinking through the trademark creation process before filing a trademark application.