Learning from Apple’s iPad Mini trademark malarkey

In April this year, international media reported on the United States Patent and Trademark Office's (USPTO) decision to refuse registration for Apple's iPad Mini trademark on the grounds it's simply descriptive. But within days of the story breaking, the USPTO was backtracking on its decision.

Here's what happened:

1. On 15 November 2012, Apple applied to register its iPad Mini trademark with the USPTO.
2. The USPTO issued its initial decision on 25 January 2013 refusing registration because:

1. iPad Mini is merely descriptive of Apple's goods: "I" denotes Internet; "pad" refers to 'pad computer' or 'internet pad device'; and "mini" is descriptive of something smaller than other members of its type of class. iPad Mini is a combination of descriptive terms.
2. The specimen of use provided by Apple in support of the application was not sufficient because the Internet webpage supplied by Apple did not show the product close enough to the 'Buy Now' button.
3. Applications that pre-date Apple's iPad Mini application have been cited as being too similar to Apple's trademark.
4. A disclaimer for "Mini" is required to confirm that Apple makes no claim to the exclusive right to use "Mini".

3. In the last week of March 2013 international media erupted with stories about Apple's failure to obtain a trademark for its iPad Mini. 
4. On 3 April 2013, the USPTO issued a further office action for the iPad Mini trademark withdrawing both the descriptiveness and specimen objections. The examiner also apologised for "any inconvenience caused".

It's not surprising that the objections have been withdrawn. Apple already has iPad registered as a trademark in the United States. In this context, the claim that the addition of 'mini' would make iPad Mini descriptive doesn't make a lot of sense. Also, the claim that the webpage had insufficient proximity between the product and the purchase button seemed to ignore what is standard practice in e-commerce.

But the manner in which the objections were withdrawn is surprising. For a trademark registry to reconsider the objections raised unprompted by a response from the applicant is unusual. Normally a registry will only reconsider an objection once the applicant has provided a response to the compliance issues.

Good news for us, there are a few things to learn from Apple's experience:

1. Sometimes examiners at trademark registries raise strange objections. Sometimes the objections are sounder but examiners are still wrong. If you have filed to register a trademark and have been refused by a trademark examiner, this doesn't necessarily mean all hope is lost. A response arguing against the objection raised can be worthwhile.
2. Getting the base right is crucial for Madrid Protocol applications. Filing a Madrid application when the base mark hasn't been accepted for registration carries risk. Apple has used its iPad Mini trademark application in the United States as the basis for applications it has filed in multiple countries, including New Zealand, through the Madrid Protocol. A Madrid Protocol application based on a home application rather than a home registration carries more risk. If the home application does not achieve registration then the Madrid Protocol application, and the applications in each designated country, will fall over. This is something to be mindful of when filing trademark applications through the Madrid Protocol.
3. It can be strategically useful to hide your first trademark application. Apple first filed a trademark application for iPad Mini in Jamaica on 2 August 2012. This established a priority date for the application. For the following six months, international treaties allow Apple to file for the same mark in other countries and claim the Jamaican filing date as the priority date. An application filed in the United States on 15 November 2012, for example, will be treated as though it was filed on 2 August 2012 in terms of priority over other marks. The likely reason that Apple does this is because the Jamaican registry is difficult to search. This means that it is difficult for competitors, and the world's media, to find out too much information about the new product until nearer to its launch. News of the iPad Mini  was announced on 23 October 2012.

Apple still has a couple of objections to overcome before its trademark can be accepted for registration. And it has until early October 2013 to respond to those objections.

• Kieran O'Connell is an associate at AJ Park.