Are Technology Trademarks Getting Trickier to Secure?

Apple’s application to trademark the name ‘iPad Mini’ has run into trouble with the USPTO. For technology businesses looking to name new products and services, this is an alarming turn of events.

The USPTO’s official letter starts by saying that adding the word ‘Mini’ is merely descriptive—it doesn’t create a new trademark (Apple has already successfully trademarked the name ‘iPad’). Apple can still defend the iPad Mini name because they have the root of the name trademarked; other tech businesses can still use the word ‘mini’ when naming their own devices. So far so good.

But then things go pear-shaped.

The letter goes on to say that the name iPad itself is merely descriptive: ‘i’ describes the internet and ‘pad’ describes a tablet computer. Huh?!?

Doesn’t the USPTO realize that the reason the name is descriptive is because Apple has invested gazillions of dollars promoting the ‘i’ naming convention over the last 14 and half years? Doesn’t the USPTO remember the derision with which the iPad name was met just 3 years ago, because tablet computers didn’t exist in the mainstream, and weren’t called ‘pads’? And most troubling of all–is the USPTO saying that a trademark that they have already conceded is not proprietary, but merely descriptive?

Technology companies constantly need to name new products and services, and the USPTO’s letter just made their jobs a lot harder.

• It marks a disconnect from the current state of things. The commonly-used descriptive term is ‘tablet’ computers, not ‘pad’ computers. Even the most cursory Google search reveals as much. Check out the results for ‘pad computer‘—virtually every one of them actually contains the phrase “tablet computer”!
• It implies that a business with very popular product may have difficulty protecting a brand name it rightfully owns, even if that name has not become a genericized trademark. Kleenex is a genericized trademark, as is Aspirin, and Thermos–the name has come to describe the entire category. There is precedent for these types of names losing some of their legal protections, but iPad is not a genericized trademark, at least not yet.
• It diminishes the value of a successful trademark registration. When the organization in charge of granting trademarks is willing to contradict itself, it emboldens litigious competitors to go after registered trademarks as having been wrongly awarded.

So what’s a technology company to do when seeking to create a new brand?

There are no shortcuts. Once you’ve defined a clear positioning for the brand and developed myriad name candidates that express its value proposition and give it personality, it’s time to do some heavy searching of potential risks. Google and Bing are obvious places to start, but they’re not all-inclusive. Depending on where the product or service will be sold, you’ve got to check the USPTO, the IPO and the OHIM. We always recommend the our clients continue with deeper searching, regardless of the results and their appetite for risk. Thomson offers a number of deeper additional searches and additional geographic reach. Law firms will be used to using LexisNexis. The costs can start to add up, depending on your organization’s appetite for risk.

It’s hard work, but it’s not impossible. With strategic purpose, creative thinking, a sense for trends in trademark disputes and a clear picture of the existing landscape of names, you can develop a new brand that speaks to your prospective customers and creates sustainable, protectable distinction in the marketplace.

Just don’t look for the USPTO to make it any easier.