Force Management Holdings I, LLC

Trademark Trial and Appeal Board

Nov 14, 2019

88141018 (T.T.A.B. Nov. 14, 2019)

Mailed: November 14, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Force Management Holdings I, LLC
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Application Serial No. 88141018
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Alistair J. Warr of FisherBroyles, LLC for Force Management Holdings I, LLC.

Christopher Buongiorno, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Bergsman, Lynch and Dunn, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Force Management Holdings I, LLC (Applicant) seeks registration on the
Principal Register of the mark X COMMAND CENTER ENGAGEMENT
MANAGEMENT SYSTEM and design, reproduced below, for “business consulting,
management, and planning services in the fields of marketing and sales,” in Class
35.1

1 Application Serial No. 88141018 filed October 3, 2018, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere and first use in
commerce as of April 1, 2018.
This Opinion Is Not a
Precedent of the TTAB
Application Serial No. 88141018

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The description of the mark reads as follows:
Color is not claimed as a feature of the mark. The mark
consists of a stylized letter “X” that is faded and appears
behind the literal elements of the mark; the wording
“COMMAND CENTER” appears between two horizontal
2lines; the wording “ENGAGEMENT MANAGEMENT
SYSTEM” appears underneath the wording “COMMAND
CENTER”.
Applicant disclaims the exclusive right to use “Engagement Management System.”
The Examining Attorney refused to register Applicant’s mark on the ground that
the record does not contain a specimen that shows the proposed mark used in
commerce in connection with the services identified in Class 35. Sections 1 and 45 of
the Trademark Act, 15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a).
Section 1(a)(1) of the Trademark Act, 15 U.S.C. § 1051(a)(1), provides that an
application must be accompanied by a specimen of the mark as used in commerce.
According to Section 45 of the Trademark Act, 15 U.S.C. § 1127, a service mark is
used in commerce “when it is used or displayed in the sale or advertising of services.”
See also 37 C.F.R. § 2.56(b). An applicant establishes such use by (1) showing the
mark used or displayed as a service mark in the sale of the services, which includes
use in the course of rendering or performing the services, or (2) showing the mark

2 Application specimen (TSDR 12).
Citations to the documents contained in the Trademark Status & Document Retrieval
(TSDR) database are to the downloadable .pdf version of the document.
Application Serial No. 88141018

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used or displayed as a service mark in advertising the services, which encompasses
marketing and promotional materials. See In re Way Media, Inc., 118 USPQ2d 1697,
1698 (TTAB 2016), citing In re Metriplex, Inc., 23 USPQ2d 1315, 1316-17 (TTAB
1992) (an acceptable specimen need not explicitly refer to the services if it “show[s]
use of the mark in the rendering, i.e., sale, of the services”) and In re Red Robin
Enters., 222 USPQ 911, 914 (TTAB 1984) (stating that “rendition” of services is
properly viewed as an element of the “sale” of services). An acceptable specimen must
show “some direct association between the offer of services and the mark sought to
be registered therefor.” Way Media, 118 USPQ2d at 1698, quoting In re Universal Oil
Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (C.C.P.A. 1973). A specimen that shows
only the mark with no reference to or association with the services does not show
service mark usage. Way Media, 118 USPQ2d at 1698, citing In re Adair, 45 USPQ2d
1211, 1214-15 (TTAB 1997), and In re Duratech Indus. Inc., 13 USPQ2d 2052, 2054
(TTAB 1989). For specimens showing the mark in advertising the services, “[i]n order
to create the required ‘direct association,’ the specimen must not only contain a
reference to the service, but also the mark must be used on the specimen to identify
the service and its source.” Way Media, 118 USPQ2d at 1698, quoting In re Osmotica
Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010).
In the application, Applicant describes the specimen of record as “a presentation
deck for sales presentation to clients and potential clients.” It looks like a PowerPoint
presentation that Applicant uses to market or advertise its services. An excerpt from
the introduction to the presentation is reproduced below:
Application Serial No. 88141018

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According to Applicant, the specimen identifies the problems (i.e., challenges) that
its customers have selling and marketing their goods or services, such as
“differentiating from the competition,” “sales process not aligned with buying
process,” and “lack of alignment between sales and other organizations.”3 Applicant’s
solutions to these problems include “Customer Engagement” and “Management
Operating Rhythm.” See the “Our Solutions” page of the presentation deck
reproduced below:4

3 Applicant’s Brief, p. 11 (4 TTABVUE 16).
4 Application Specimen (TSDR 16).
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The specimen refers to “Customer Engagement” through messaging and sales.
One of the two pages displaying the customer engagement portion of the presentation
is reproduced below:5

Applicant presents a more detailed explanation of X COMMAND CENTER
ENGAGEMENT MANAGEMENT SYSTEM “Engagement Approach” in the
Appendix of the presentation deck.6 As shown in the page reproduced below, the
“Engagement Approach” includes development, delivery, and adoption stages.

5 Application Specimen (TSDR 21-22).
6 Application Specimen (TSDR 30).
Application Serial No. 88141018

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In the Appendix of the presentation, “Leveraging the Command Center to Drive
Your Engagement,”7 Applicant explains in detail the purported X COMMAND
CENTER ENGAGEMENT MANAGEMENT SYSTEM services, including providing
an overview of the methodology,8 conducting workshops to ensure the services are
tailored to meet the customer’s needs,9 a method of tracking participation to make

7 Application Specimen (TSDR 31-34).
8 Application Specimen (TSDR 31).
9 Application Specimen (TSDR 32-33).
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sure adoption is taking place,10 and providing a “90-day adoption plan that effectively
walks them through how to apply the training concepts to ‘live’ deals.”11
Applicant identifies “Customized Engagement” as one of its “Key Differentiators.”
Key Differentiators
Sustainable Revenue Growth …
Customized Engagement
Our sales effectiveness solutions are customized for your
industry, your organization and your customers. Our
clients are intrinsically involved in the development and
rollout of our initiatives, ensuring final deliverables
specific to your needs.12
Focusing on the “Engagement Approach” page displaying the mark, the
Examining Attorney argues, “Applicant has not demonstrated that those individuals
viewing the specimen would perceive the proposed mark in association with
consulting, management, and planning services.”13 According to the Examining
Attorney:
The highlighted wording “Workshops,” “Train Managers,”
“Train Sales Organization,” “Fast Start Program &
eLearning,” “Manager Certification,” “Mobile-Enabled
Spaced Learning,” “New Hire Training” and “Opportunity
Coaching” may infer educational, training or coaching
tools. However, business consulting, management, and
planning services are separate services that do not
encompass educational, training, and coaching activities.14

10 Application Specimen (TSDR 34).
11 Application Specimen (TSDR 34).
12 Application Specimen (TSDR 18).
13 Examining Attorney’s Brief (6 TTABVUE 6).
14 Examining Attorney’s Brief (6 TTABVUE 5). Applicant highlighted those portions of the
specimen to emphasize where the specimen shows use of the mark in connection with the
Application Serial No. 88141018

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We disagree. The Examining Attorney’s analysis is based on the false premise that
the “Engagement Approach” presentation page displaying the mark stands alone.
Our analysis is not limited to the presentation page displaying the mark.
As the Board stated in In re Walker Research, Inc., 228
USPQ 691, 692 (TTAB 1986), … “whether or not a term
functions as a service mark necessarily depends on how
that term is used and how it is perceived by potential
recipients of the services.” Thus, we must base our
determination of public perception of applicant’s mark on
the manner of use of INFOMINDER in the advertising
which has been submitted as a specimen. Further, we must
make that determination within the current commercial
context, and, in doing so, we may consider any other
evidence of record “bearing on the question of what impact
applicant's use is likely to have on purchasers and
potential purchasers.”
In re Ancor Holdings, LLC, 79 USPQ2d 1218, 1220 (TTAB 2006) (quoting In re
Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992)).15
We find that the specimen sufficiently refers to the recited services and shows a
proper nexus between the mark and those services. Applicant’s mark is used in the
26-page advertising/marketing presentation for Applicant’s “business consulting,
management, and planning services in the fields of marketing and sales.” The mark
appears on a page with an overview of the various stages of the “Engagement

activities described in the description of services. October 19, 2018 Response to Office Action
(TSDR 18-19).
15 Whether a trademark is used to identify a particular service is a question of fact. See In re
Job Diva, Inc., 843 F.3d 936, 121 USPQ2d 1122, 1125 (Fed. Cir. 2016). We base our findings
of fact on the evidence of record, not the arguments or reasoning of Applicant or the
Examining Attorney. Thus, the Examining Attorney’s contention that the Board should not
consider the pages of the presentation deck that do not display the mark sought to be
registered because Applicant did not argue that consumers will perceive that mark as
identifying the business consulting, planning, and management services based on the
entirety of the presentation is incorrect. Examining Attorney’s Brief (6 TTABVUE 9).
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Approach” that Applicant takes in working with clients, and the presentation as a
whole provides additional context and information about the meaning of terms used
on that page to describe the various stages. Applicant promotes its services as a new
approach to sales and marketing within an organization. The proposed approach
includes more than just education, training and coaching. As reflected on the page
displaying the mark, the services include a discovery stage (i.e., gathering
information to identify the customer’s needs), a training stage, and an adoption stage
(i.e., application of the customer’s needs and training to sales and marketing
opportunities). Applicant’s sales presentation specimen makes clear to clients and
prospective clients that Applicant is selling its business consulting, management, and
planning services. Because Applicant uses the mark in a display referring to all the
stages of Applicant’s services, when clients and prospective clients encounter
Applicant’s mark, they will perceive it as identifying Applicant’s comprehensive
approach to sales and marketing and not just the educational portion of the services.
In other words, within the context of the sales presentation, Applicant’s mark
identifies the source of the activities set forth in the description of services.
Decision: The refusal to register Applicant’s mark is reversed.