Graystone Consulting Associates, Inc.

Trademark Trial and Appeal Board

Nov 30, 2015

No. 85913705 (T.T.A.B. Nov. 30, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Graystone Consulting Associates, Inc.
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Serial No. 85913705
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Matthew H. Swyers of The Trademark Company, PLLC,
for Graystone Consulting Associates, Inc.
W. Wendy Jun, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
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Before Seeherman, Zervas and Shaw,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
Graystone Consulting Associates, Inc. (“Applicant”) has appealed from the final
refusal of the Trademark Examining Attorney to register “Cremation 3rd Party
Directed” in standard characters on the Supplemental Register for “business
training consultancy services” in Class 41.1 Exclusive rights to the word

1 Application Serial No. 85913705. The application was originally filed April 24, 2013
seeking registration on the Principal Register, and asserting first use and first use in
commerce at least as early as December 15, 2010. The application was amended to the
Supplemental Register on February 16, 2015, after the Examining Attorney issued a
further refusal under Section 2(e)(1) on the ground that the mark is merely descriptive of
the services. The amendment to the Supplemental Register obviated that refusal.
Serial No. 85913705
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CREMATION have been disclaimed. Registration was refused pursuant to Sections
1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, and Trademark Rules
2.34(a)(1)(iv) and 2.56(a)2 on the basis that Applicant has not provided an
acceptable specimen showing use in commerce of “Cremation 3rd Party Directed” as
a mark for the identified services.
We affirm the refusal of registration.
The Board has previously had occasion to rule on the acceptability of Applicant’s
specimens in connection with its application to register the mark CREMATION
SELF-DIRECTED for the same services. See In re Graystone Associates, Inc., Serial
No. 85013693 (TTAB Sept. 9, 2015). Many of the same comments we made in that
opinion apply to the present appeal, and therefore we will liberally quote from or
paraphrase that decision.
As an initial matter, we note that the application was amended to the
Supplemental Register after issuance of the Final Office Action. Although the Final
Action refused registration under Sections 1 and 45 and Trademark Rules
2.34(a)(1)(iv) and 2.56(a), Trademark Rule 2.47(e) provides that “An application or
registration on the Supplemental Register must conform to the requirements for
registration on the Principal Register under section 1(a) of the Act, so far as
applicable.” Therefore, the statutory sections and rules cited by the Examining

2 The Examining Attorney also cited Trademark Rule 2.64(a) as a basis for refusal. This
rule has been “removed and reserved”; we assume that the reference to it in the Office
Action was a typographical error.
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Attorney, as well as the case law interpreting these sections and rules insofar as the
requirement for a specimen is concerned, still apply.
These provisions regarding use in commerce and a specimen to evidence such
use, as applied to an application to register a mark on the Supplemental Register,
require that the application include a specimen showing the applied-for mark in use
in commerce. Trademark Act Section 1(a), 15 U.S.C, § 1051(a); Trademark Rule
2.34(a)(1)(iv) (one of the requirements is “one specimen showing how the applicant
uses the mark in commerce”); and Trademark Rule 2.56(a) (An application under
section 1(a) must include one specimen per class showing the mark as used on or in
connection with the goods or services.). We set forth the general principles
regarding whether a specimen shows service mark use, originally set forth in a
precedential opinion involving the acceptability of Applicant’s specimens for the
mark WALK-IN SHOPPER, and also quoted in the Board’s opinion affirming the
refusal in the CREAMATION SELF-DIRECTED application:
A service mark is “any word, name, symbol, or device, or any
combination thereof … [used] to identify and distinguish the services of
one person … from the services of others and to indicate the source of
the services, even if that source is unknown.” 15 U.S.C. § 1127. A
service mark must be “used in such a manner that it would be readily
perceived as identifying” the services, which is “determined by
examining the specimens of record in the application.” In re Moody's
Investors Service Inc., 13 USPQ2d 2043, 2047 (TTAB 1989); see also In
re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1458 (TTAB
1998) (a mark “must be used in a manner calculated to project to
purchasers or potential purchasers a single source or origin” for the
services, but mere intent that it function as a mark is not sufficient); In
re Duratech Industries Inc., 13 USPQ2d 2052 (TTAB 1989). “At a
minimum, the specimen must show a direct association between the
services and the mark sought to be registered.” In re Osmotica
Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010). That is, “[a]
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specimen that shows only the mark with no reference to, or association
with, the services does not show service mark usage.” In re DSM
Pharmaceuticals, Inc., 87 USPQ2d 1623, 1624 (TTAB 2008).

In re Graystone Consulting Assocs., 115 USPQ2d 2035, 2036 (TTAB 2015).
In addition, Applicant has cited certain case law in its brief that also recognizes
the requirement for an acceptable specimen:3
“An important function of specimens in a trademark application is,
manifestly, to enable the PTO to verify the statements made in the
application regarding trademark use. In this regard, the manner in
which an applicant has employed the asserted mark, as evidenced by
the specimens of record, must be carefully considered in determining
whether the asserted mark has been used as a trademark with respect
to the goods named in the application”. In re Bose Corp., 546 F.2d 893,
897 (C.C.P.A. 1976). “Before there can be registration, there must be a
trademark, and unless words have been so used they cannot qualify.
Thus, it is essential for registration that words first become a
trademark, i.e., any word, name, symbol, or device or any combination
thereof adopted and used by a manufacturer or merchant to identify
his goods and distinguish them from those manufactured or sold by
others.” 15 U.S.C.S. § 1127. In re Bose Corp., 546 F.2d 893 (C.C.P.A.
1976).
***
An advertisement is a sufficient specimen of use if there is a direct link
between the term and the services advertised. Peopleware Sys. v.
Peopleware, Inc., 1985 TTAB LEXIS 84, 11-12 (Trademark Trial &
App. Bd. May 31, 1985). The actual appearance of the mark in context
is also relevant as a measure of how a consumer would perceive the
mark. In Re Safariland Hunting Corp., 24 USPQ2d 1380 (TTAB 1992).
… An advertising specimen is sufficient evidence of a proposed mark’s
use in commerce if it is “‘used in a manner calculated to project to
purchasers or potential purchasers a single source or origin for the
goods.” In re Volvo Cars of North America, Inc., 46 USPQ2d 1455
(TTAB 1998). …

Brief, 4 TTABVUE 5-6.

3 The same language was used, almost word-for-word, in Applicant’s appeal brief for the
CREMATION SELF-DIRECTED application.
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Although Applicant submitted three different specimens, one with its initial
application on April 24, 2013, one with its July 9, 2014 request for reconsideration,
and one with its February 16, 2015 response, Applicant has discussed in its brief
only the most recent specimen, submitted on February 16, 2015, so we will focus our
comments on that specimen, which is described in Applicant’s brief as a “flyer” and
also as an “advertisement for skills-acquisition training which is sold as part of the
comprehensive method available for purchase from the Applicant.” Brief, 4
TTABVUE 7. It consists of five pages; we reproduce below the first page, which is
the only page in which the applied-for mark appears.
Serial No. 85913705
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Applicant claims that the mark "CREMATION 3RD PARTY DIRECTED is a
component of the training method the Applicant sells to interested individuals,” and
that “[w]hen an interested individual purchases services from the Applicant, the
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individual is also purchasing training in the skill of identifying how best to relate to
various types of customers.” Brief, 4 TTABVUE 6. However, although we
acknowledge that the phrase “Cremation 3rd Party Directed” does appear in the
specimen, it would not be viewed as a trademark for “business training consultancy
services.” Rather, it appears as part of a paragraph that describes five types of
purchasers of cremation services, with “Cremation 3rd Party Directed” being one of
two categories of the “Cremation Minimalist.” It is quite clear that these terms are
used to describe types of purchasers of funeral services. The text states that “These
shoppers [Cremation Self-Directed and Cremation 3rd Party Directed] take the
service or gathering outside of the funeral home and will either plan services
themselves or use a 3rd party to do so.” Although the paragraph states that “the
communication skills taught by Graystone educate the funeral professional on these
types of shoppers, how to identify and guide families through the arrangement
process,” the term “Cremation 3rd Party Directed” does not identify the source of the
business training consultancy services. On the contrary, the text states that
“Graystone” does the educating, and would be perceived as the source of the
services. The bold text at the top of the page also conveys this same impression. The
Graystone Associates, Inc. logo is the most prominent feature on the page, followed
by the phrase “Graystone Associates Presents,” and the sentence below that, in
bold, states that “Graystone Associates offers business strategies and tools for your
firm to become a premier Funeral Service Provider through training and
consulting.” As a result, Graystone Associates will be perceived as the source of
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business training and consulting services, not “Cremation 3rd Party Directed.” The
specimen does not show the requisite “direct association” between the applied-for
mark and Applicant’s identified business training consultancy services. See In re
Osmotica Holdings Corp., 95 USPQ2d at 1668 (“It is not enough that the mark and
a reference to the services both appear in the same specimen”). As the Board found
in connection with Applicant’s mark CREMATION SELF-DIRECTED in the prior
appeal, the term is used in the specimen to identify a particular type of customer,
not as the source of the services.
We acknowledge that the “TM” symbol appears next to “Cremation 3rd Party
Directed,” and that the term is shown in bold type within the paragraph. However,
merely because a term is capitalized or in bold type or a TM symbol is used with it
does not make it a trademark. See In re Aerospace Optics Inc., 78 USPQ2d 1861,
1864 (TTAB 2006).
In its brief, Applicant has not even addressed the acceptability of its original
specimen or the specimen it submitted on July 9, 2014, so we assume that it no
longer relies on these specimens as evidence of use of its mark. However, to be
complete, we confirm that these specimens are also unacceptable to show use of the
applied-for mark for the identified services. The first specimen Applicant submitted
does not even show the applied-for mark. The substitute specimen it submitted on
July 9, 2014 consists of three pages, and “Cremation 3rd party [sic] Directed” does
not appear until page 3, in a list of terms describing various types of consumers who
Serial No. 85913705
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want cremation services, as one of three sub-categories of “Cremation Minimalist”
shoppers, along with “Cremation Self-Directed” and “Cremation No Services.”

Because of the manner in which “Cremation 3rd Party Directed” is used in the
specimen, it acts as merely a descriptor for a type of consumer, rather than as a
source-indicator for “business training consultancy services.” Not only is the term
part of a list of various types of customers, but the text following “Cremation Self-
Directed” emphasizes that the term refers to a particular type: “This shopper has
some type of gathering but they pay someone other than the funeral home for
planning and conducting and has services at a church, hotel or restaurant, not the
funeral home.” We acknowledge that on the first page of the specimen is the
statement, “to understand how you can provide your customer with the best level of
service, it is very helpful to understand the type of SHOPPER they are,” and that
“Understanding the subtle but important and distinctively diverse traits in your
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cremation customers can provide you with a competitive difference within your
community” appears on page 2. However, this language is removed from the term
“Cremation 3rd Party Directed,” and the term would not be viewed as the source of
“business training consultancy services,” but merely as a shorthand term to identify
a type of client for funeral home services. The specimen does not show the requisite
“direct association” between the applied-for mark and Applicant’s identified
business training consultancy services.
We agree with the Examining Attorney that neither of the specimens in which
the proposed mark appears shows “Cremation 3rd Party Directed” in a source-
identifying manner for the identified business training consultancy services, but
only as the name for a type of client. Accordingly, the specimens are unacceptable to
show use of the mark for the identified services.
In conclusion, consumers or potential consumers viewing any of the specimens
submitted by Applicant would not regard “Cremation 3rd Party Directed” in the
specimens (to the extent that the term appears in the specimen at all) as a mark
that identifies the source of business training consultancy services. As a result, the
specimens are unacceptable to show use in commerce of the mark “Cremation 3rd
Party Directed” for business training consultancy services.
Decision: The refusal to register Applicant’s mark “Cremation 3rd Party
Directed” is affirmed.