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 In re CirCaid Medical Products, Serial No. 85401718 (February 5, 2013) [not precedential].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.
Read comments and post your comments here.
TTABlog note: Well, how did you do? Do you think this case falls in the "WYHA" category?
Text Copyright John L. Welch 2013.
posted by John L. Welch @ 2/22/2013
6 comments
6 Comments:
I don't agree with the Board's finding. But WYHA? No.
Recently, I received a similar specimen refusal, and although I did not agree, I asked the client if revised packaging could be made where there was a line return between the trademark and the descriptive term.
New packaging was submitted (prior to original NOA deadline) and all was well.
While I don't agree, it is sometimes easier and much much faster to insert some space. A line return seems to work well.
I can understand a possible perception of JUXTALITE as a unified mark. However, in light of the prevalent use of LITE to indicate a lower calorie version of some product, I believe the prevalent perception would be of JUXTA LITE. Trademark attorneys and examiners are in the awkward position of positing consumer perception without the aid of consumer studies unless applicants submit them -- something that applicant should have considered.
I believe this is a close call and reasonable to appeal from a purely academic legal standpoint. But unless this appeal was performed for free or at a heavy discount, it seems to me that creating new specimens (i.e. revising the usage) would be a less expensive and more effective fix than a TTAB appeal. That's probably often the case with specimen refusals that are not too substantive.
I agree with Michael R. However, the use of the TM after Lite does make it appear to be a unitary mark.
I would have told the client to fix the package and move on.
However, often the client does not get you a specimen until the last minute and maybe after it is too late to make changes. But even then, unless this was at the last extension, I would pay the $150 for an extension and make sure the specimen is proper. Isn't it our job to get it right?
I did appeal a similar case, from a purely academic standpoint, (with a client's permission for a mark they did not care much about). The mark had one word above the other and we felt it was clearly not unitary.
The Board disagreed and we left it at that. Based on the case law, it seems the Board leans towards a mark being unitary in close cases.
As a typical consumer, immediately when I saw the specimen I got the impression that there must be a JUXTA if there is a JUXTA LITE. Bet the Examining Attorney did too. I'm going to have to go off and enjoy a MILLER LITE.
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