CirCaid Medical Products

Trademark Trial and Appeal Board

Feb 5, 2013

No. 85401718 (T.T.A.B. Feb. 5, 2013)

Mailed:
February 5, 2013

United States Patent and Trademark Office
Trademark Trial and Appeal Board
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In re CirCaid Medical Products
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Serial No. 85401718
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James P. Broder of Roeder & Broder for CirCaid Medical Products.
Dominic R. Fathy, Trademark Examining Attorney, Law Office 104 (Chris
Doninger, Managing Attorney).
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Before Kuhlke, Lykos and Adlin, Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:
On August 18, 2011, CirCaid Medical Products (“applicant”) filed an ap-
plication to register the mark JUXTA in standard character format for “ther-
apeutic compression support bands, bandages and leggings for medical and
veterinary use” in International Class 10.1 Applicant submitted the following
specimen consisting of a photograph of product packaging:

1 Application Serial No. 85401718, filed pursuant to Section 1(a).
This Opinion is Not a
Precedent of the TTAB
Serial No. 85401718

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Applicant appeals the Trademark Examining Attorney’s final refusal to
register applicant’s mark on the Principal Register on the grounds that the
mark in the drawing is not a substantially exact representation of the mark
Serial No. 85401718

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as used on the specimen under Trademark Rule 2.51(a). For the reasons ex-
plained below, we affirm the refusal to register.
The examining attorney argues that the specimen displays the mark as
the unitary term JUXTA-LITE or JUXTALITE while the drawing shows the
mark as JUXTA. As evidence that use of the term JUXTA-LITE on the spec-
imen is unitary, the examining attorney contends that the wording appears in
the same font and size. The examining attorney also points to the positioning
of the trademark symbol (™) after the term “-LITE.”2
Applicant, relying on the cases of In re Sansui Electric Co. Ltd., 194
USPQ 202 (TTAB 1977) and In re Raychem Corp., 12 USPQ2d 1399 (TTAB
1989), and excerpts from the Trademark Manual of Examining Procedure
(“TMEP”), argues that the wording “JUXTA” as it appears on the specimen
creates a separate and distinct commercial impression from the hyphenated
term “-LITE” shown next to applicant’s mark on the specimen. More specifi-
cally, applicant asserts that the term LITE “is and has been used in commerce
by various manufacturers to identify a particular version of a given product
line.” Applicant’s Brief, p.11. Applicant also submitted other examples of use
from its own website which show its applied-for mark JUXTA displayed next

2 We note the examining attorney’s contention that to accept applicant’s specimen
would by analogy amount to registration of a phantom mark. We do not find such an
analogy appropriate here. In any event, applicant has clarified for the record that it
is not seeking to register a phantom mark.

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to alternative composite mark forms such as –FIT and –CURES to differenti-
ate distinct product lines.
The “drawing depicts the mark sought to be registered.” Trademark Rule
2.52, 37 CFR § 2.52. “In an application under section 1(a) of the Act, the
drawing of the mark must be a substantially exact representation of the mark
as used on or in connection with the goods and/or services.” Trademark Rule
2.51(a), 37 CFR § 2.51(a). “An applicant may seek to register any portion of a
composite mark if that portion presents a separate and distinct commercial
impression.” In re Lorillard Licensing Co., 99 USPQ2d 1312 (TTAB 2011), cit-
ing In re 1175854 Ontario Ltd., 81 USPQ2d 1446 (TTAB 2006). In other
words, “the mark as actually used must not be so entwined (physically or con-
ceptually) with other material that it is not separable from it in the mind of
the consumer.” In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008),
quoting In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828, 1830
(Fed. Cir. 1988).
Here we find that the drawing of the mark is not a substantially exact
representation of the mark as it appears on the specimen of use because as
actually used, prospective consumers will not perceive the term “JUXTA” as
separable from the term “LITE.” As the examining attorney points out, both
terms appear in the same style font. In addition, although the applicant
points to uses of the term JUXTA with other matter, the record evidence does
not include any uses of the term JUXTA by itself.
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The facts presented in Raychem and Sansui Electric, supra, are distin-
guishable from the facts presented here. In Raychem, the Board reversed the
examining attorney’s refusal to register the mark “TINEL-LOCK” on the
grounds that the mark as shown on the drawing did not agree with the dis-
play of the mark on the specimens as “TRO6A1-TINEL-LOCK-RING.” In re
Raychem, 12 USPQ2d at 1400. The evidence in the record showed that the
alpha-numeric designation “TRO6A1” was a stock number, and that the term
“RING” was a generic designation for the goods. Id. Similarly, in Sansui
Electric, the Board reversed the examining attorney’s refusal to register two
marks on the grounds that the applied-for marks, “QSE” and “QSD,” created a
commercial impression “separate and apart from the series of model numbers
in association with which they are used.” In re Sansui Electric Co. Ltd., 194
USPQ at 203. As the Board reasoned, it would be readily apparent to pro-
spective purchasers that “the various changing numbers serve simply as mod-
el designations to identify and distinguish, one from another, the successive
generations of applicant's equipment.” Id.
In the case before us, however, the specimens do not display the mark as
used with a model or stock number. Although applicant asserts that other
manufacturers use the term “LITE,” applicant has submitted no evidence
thereof. Nor has applicant submitted evidence that the term “lite” is a de-
scriptive or generic indicator for the identified goods. Hence, contrary to ap-
plicant’s assertion, we find that the “LITE” portion of applicant’s mark as it
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appears on the specimen does not present “a separate and distinct commercial
impression” but rather is “entwined” with the “JUXTA” element. In other
words, based on the record before us, we find that consumers will not perceive
the term “LITE” as merely indicating variations of the “JUXTA” product line.
Section 807.12(d) of the TMEP, which applicant relies upon, does state
that “an applicant has some latitude in selecting the mark it wants to regis-
ter. The mere fact that two or more elements form a composite mark does not
necessarily mean that those elements are inseparable for registration purpos-
es.” These statements, however, are tempered by the requirement derived
from the rules and case law that an element of a composite mark may be reg-
istered if, as used on the specimens, it presents “a separate and distinct com-
mercial impression apart from any other matter with which the mark is or
will be used.” Id. For the reasons explained above, we do not find that the
term “JUXTA” as used on the specimens creates a separate commercial im-
pression. We therefore find that applicant's drawing of the mark is not a sub-
stantially exact representation of the mark as used in commerce. See Trade-
mark Rule 2.51(b).
Decision: The refusal to register is affirmed.