A March 2026 TTAB decision involving a medical device company offers two distinct lessons about trademark prosecution that have nothing to do with each other, except that both contributed to the same outcome: refusal affirmed.
The applicant was DEKA Research and Development Corp., a company founded by inventor Dean Kamen. DEKA applied to register the mark DAISY for intradermal injection devices across three international classes. The application was filed on a use-in-commerce basis. The USPTO refused registration in Classes 9 and 10, and on appeal, the Board affirmed both refusals, for entirely different reasons.
The Application and the Specimen
The original application covered three classes of goods: Class 5 for disposable intradermal injectors sold pre-filled with vaccines, Class 9 for disposable intradermal injectors for laboratory use, and Class 10 for disposable intradermal injectors for medical purposes sold empty, along with related empty injection devices for administering drugs, vaccines, and therapeutic agents.
DEKA submitted photographs of product packaging as its specimen across all three classes. The packaging showed the DAISY mark prominently on the front and included a set of directions on the back. The directions walked through five steps: confirm applicator is full, open pack and remove applicator, apply applicator to forearm, push down on cap, wait ten minutes, then remove applicator.
The examining attorney refused registration in all three classes on the ground that the same specimen had been submitted for each class, and it was unclear which goods it was intended to depict. DEKA responded by amending the identifications in Classes 9 and 10 and submitting a substitute specimen. The substitute specimen was, to the pixel, identical to the original.
The examining attorney then issued a final refusal in Classes 9 and 10, reasoning that the specimen appeared to show a pre-filled injection device, which would correspond to the Class 5 goods, not the empty devices in Classes 9 and 10. DEKA appealed.
Class 9: Lost on Waiver
The Class 9 story is a cautionary tale about what happens when an appeal brief argues the wrong case.
The Class 9 goods in the application were disposable intradermal injectors for laboratory use. The issue before the Board was whether the specimen showed use of DAISY on those goods.
DEKA's brief did not address that question. Instead, the brief described the Class 9 goods as medical software for tracking vaccine administration and managing patient vaccination records, and argued that the specimen showed screenshots of a software interface. There was no medical software anywhere in the application.
The Board declined to fill in the gaps. Under TTAB procedure, if an applicant does not address a refusal in its appeal brief, the argument is waived and the refusal is affirmed. The Board noted it would not guess at arguments DEKA could have made but did not. The Class 9 refusal was affirmed on that basis alone, without reaching the merits of the specimen question.
This is worth pausing on. DEKA lost Class 9 not because its specimen was bad, but because its brief never engaged with the actual refusal. The appeal, as to Class 9, was effectively abandoned in the brief.
Class 10: The Specimen Contradicted the Goods
Class 10 required a different analysis, and the outcome turned on what the specimen itself communicated.
All of the Class 10 goods shared a common characteristic: they were sold empty. That distinction mattered because the Class 5 goods were sold pre-filled. A specimen that shows a pre-filled device cannot support registration for an empty one, even if the underlying hardware is the same device.
DEKA argued that its device is sold in both forms, pre-filled for some customers and empty for others, and that a single specimen can support registration across multiple classes when a product has more than one use. That principle is correct as far as it goes. The Federal Circuit has recognized that a product with multiple uses can be registered in multiple classes, and a single specimen can support that registration, provided the specimen does not restrict the product to a single use on its face.
The problem was the directions. Step one of the instructions on the packaging was to confirm the applicator is full. The remaining four steps assumed the device was loaded and ready: apply to forearm, push down on cap, wait, remove. There was no instruction anywhere about how to fill the device. There was no acknowledgment that a user might receive it empty and need to load it before use.
The Board found that the directions presupposed a pre-filled device. A consumer reading the packaging would reasonably conclude the product comes loaded. DEKA's argument that the phrase confirm applicator is full was merely an operational check, applicable whether the device arrives pre-filled or is filled by the practitioner, was not supported by anything in the record. DEKA had not introduced any product documentation, marketing materials, or other evidence showing that the device is sold in both forms. The only evidence was the specimen itself, and the specimen pointed one way.
Attorney argument in a brief is not a substitute for evidence. The Board cited that principle directly, and it proved dispositive. Without something in the record to support the dual-use theory, DEKA was left with a specimen that appeared to contradict the goods it was meant to support.
The Outcome
The refusal was affirmed as to both Classes 9 and 10. The application proceeds in Class 5 only, covering the pre-filled vaccine injectors. Classes 9 and 10 are gone, one for waiver and one for a specimen that said the wrong thing.
The Board also declined DEKA's request to suspend the appeal and reopen the record for additional specimens. Once a case has been decided on appeal, it cannot be reopened except in narrow circumstances. That door was closed.
Two Lessons, One Decision
The Class 9 and Class 10 failures arose from different mistakes, but both reflect the same underlying problem: misalignment between what the application claims and what gets put in front of the examiner and the Board.
For Class 9, the misalignment was in the brief. The argument submitted had nothing to do with the goods in the application, which meant there was no argument on the actual issue, which meant the refusal was uncontested and therefore affirmed.
For Class 10, the misalignment was between the specimen and the goods. The packaging showed a device that appeared to be pre-filled, and the directions confirmed it. Registering that specimen for empty devices required evidence that the same device is also sold empty. DEKA apparently had that evidence somewhere, but it was never made part of the record.
The specimen requirement exists because the USPTO needs to verify that a mark is actually being used in commerce in connection with the specific goods identified in the application. A photograph of packaging is generally a reliable way to meet that requirement. But the packaging has to match what you are claiming. If your goods are sold empty and your packaging says confirm it is full, you have a problem, and the time to address it is during prosecution, not for the first time in an appeal brief.
Questions about your trademark application or how to put together the right specimen? Book a free consultation with Five Dogs Law.
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