Test Your TTAB Judge-Ability: Is This Specimen of Use Okay for the mark "JUXTA"?
Applicant CirCaid Medical Products applied to register the mark JUXTA, in standard character form, for "therapeutic compression support bands, bandages and leggings for medical and veterinary use." It submitted as its specimen of use the packaging depicted below. The PTO issued a final refusal on the ground that the mark as depicted in the drawing is not a substantially exact representation of the mark as used on the specimen, as required by Rule 2.51(a). Circaid appealed. How would you rule? In re CirCaid Medical Products, Serial No. 85401718 (February 5, 2013) [not precedential].
Examining Attorney Dominic R. Fathy maintained that the term JUXTA-LITE or JUXTALITE on the specimen is unitary, since the wording appears in the same font and size. He also noted the symbol "TM" after the term "LITE."
CirCaid argued that JUXTA creates a separate and distinct commercial impression, since the term LITE is often used to identify "a particular version of a given product line." Circaid also pointed to other products at its website: JUXTA-FIT and JUXTA-CURES.
The Board observed that an applicant may seek to register any portion of a composite mark that the chosen portion creates its own commercial impression. However, the proposed mark "must not be so entwined ... with other material that it is not separable from it in the mind of the consumer."
Here, the Board found that consumers will not perceive the term JUXTA as separable from LITE. The words appear in the same font, as the Examining Attorney noted. Furthermore, although CirCaid pointed to other JUXTA- composite marks, there was no evidence of use of JUXTA alone.
CirCaid cited TTAB cases involving registration of the mark TINEL-LOCK, which appeared on the specimen of use as part of "TRO6A1-TINEL-LOCK-RING," and the marks QSE and QSD, which appeared on the specimens of use with a series of model numbers.
The Board pointed out, however, that the specimens here do not display the mark being used with a model or stock number. Moreover, the word LITE is "entwined with JUXTA." Consumers will not perceive the term LITE as merely indicating a variation of the JUXTA product line. And there was no evidence that other manufactures use the term LITE, or that it is descriptive or generic for the identified goods.
And so the Board affirmed the refusal to register.
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TTABlog note: Well, how did you do? Do you think this case falls in the "WYHA" category?
Text Copyright John L. Welch 2013.