Graystone Consulting Associates, Inc.

Trademark Trial and Appeal Board

Aug 19, 2015

No. 85913269 (T.T.A.B. Aug. 19, 2015)

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This Opinion is not a
Precedent of the TTAB

Mailed: August 19, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Graystone Consulting Associates, Inc.
_____

Serial Nos. 85913238 and 859132691
_____

Matthew H. Swyers of The Trademark Company,
for Graystone Consulting Associates, Inc.
W. Wendy Jun, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
_____

Before Cataldo, Shaw and Gorowitz,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Graystone Consulting Associates, Inc. (“Applicant”) seeks registration on the
Principal Register of the mark CYCLE OF EXCELLENCE (in standard characters)
for
business consulting services relating to the integration of the areas of
business process technology, organizational learning, change

1 These proceedings were consolidated by Board order issued on March 2, 2015.
We observe that the involved applications were filed on the same date and supported by
identical original specimens. In addition, Applicant filed its responses to the Examining
Attorney’s Office Actions on the same dates in both applications, and supported its
arguments in support of registration with identical substitute specimens. References are to
application Serial No. 85913238 unless otherwise noted.
Serial Nos. 85913238 and 85913269

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management, and operational sustainability in International Class 35;
and

business training consultancy services in International Class 41.2

In both cases, the Trademark Examining Attorney refused registration of
Applicant’s mark under Trademark Act §§ 1 and 45, 15 U.S.C. §§ 1051 and 1127,
and 37 C.F.R. §§ 2.34(a)(1)(iv) and 2.56(a) on the ground that the original specimen
filed with the applications was unacceptable because it failed to show the applied-
for mark in use in commerce as a service mark for the recited services. Applicant
filed a response in both applications that included a substitute specimen. The
Examining Attorney did not accept the substitute specimen because it also
failed to show use of the applied-for mark in connection with the recited
services. In both cases, Applicant appealed and filed a request for
reconsideration including another substitute specimen. The Examining
Attorney rejected the second substitute specimen on the basis that it too
failed to show use of the applied-for mark in connection with Applicant’s
services.
When the appeal was resumed, Applicant and the Examining Attorney
filed briefs. We affirm the refusal to register.
I. Request to Remand Applications Denied
As a preliminary matter, Applicant filed its briefs on appeal in both of the involved
applications on November 17, 2014. The Examining Attorney filed her briefs on June

2 Application Serial Nos. 85913238 and 85913269 both were filed on April 24, 2013, based
upon Applicant’s claim of first use anywhere and use in commerce since at least as early as
February 16, 2001.
Serial Nos. 85913238 and 85913269

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18, 2015 after denying Applicant’s request for reconsideration and after the Board
determined Applicant’s motion to consolidate these proceedings. Thereafter, on August
18, 2015, Applicant filed a motion to remand the involved applications to the
Examining Attorney “so that the Applicant may amend the filing basis of the instant
Application[s] to a 1(b) intent-to-use basis thus removing the basis for the instant
refusal.”3 In support of the motion for remand, Applicant makes the following
arguments:
“If an applicant that has filed a timely appeal to the Board files
an amendment to its application more than six months after the
issuance of the final action, or the second refusal on the same
ground(s), or the repeated requirement from which the appeal was
taken, the Board will treat the amendment as a request for remand.”
See TBMP § 1209.04.
In the instant matter, the final office action was issued on
March 18, 2014 on the grounds that the specimen does not show a
trademark, or the trademark, used in commerce. On September 17,
2014 Applicant filed an appeal to the Board regarding the refusal
made final on March 18, 2014.
In this regard, Applicant seeks to remand the instant application
prior to a final determination on the merits of the specimen-based
refusal to amend the application to a Section 1(b) application so as to
remove the basis for the refusal at issue and on appeal before the
Board.
This request is not being done to delay these proceedings.
Rather, the request is being made to obviate the need for the
Board’s further consideration of this matter in an effort to resolve
the same at the examination level.
Accordingly, pursuant to TBMP § 1209.04 it is respectfully
requested that the Board grant the instant motion and remand the
matter to the examining attorney so that the application may be
amended to a Section 1(b) basis.4

3 14 TTABVUE 2. Citations to the briefs refer to TTABVUE, the Trademark Trial and
Appeal Board’s publically available docket history system. See Turdin v. Trilobite, Ltd., 109
USPQ2d 1473, 1476 n.6 (TTAB 2014).
4 Id. at 2-3.
Serial Nos. 85913238 and 85913269

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A request for remand must include a showing of good cause. “In determining
whether good cause has been shown, the Board will consider both the reason given
and the point in the appeal at which the request for remand is made.” TBMP
§ 1209.04 (2015). “However, whether good cause will be found will depend, in part, on
the stage of the appeal at the time the amendment is filed, including the reason given
for the delay.” TBMP § 1205.01.
In this case, Applicant has given no reason for its delay of seventeen months from
the issuance of the final Office Action in both applications. Instead, Applicant merely
states that granting its motion for remand would “obviate” the need for this tribunal
to decide the matter before us and restore consideration of the matter to the
Trademark Examining Operation. In addition, and as noted above, Applicant filed its
motion for remand after the close of briefing in these consolidated appeals. As a result,
we find that Applicant has failed to show good cause for granting its motion for
remand, particularly at this late juncture in the appeal. See, e.g., In re Thomas White
International Ltd, 106 USPQ2d 1158, 1160 n.2 (TTAB 2013).
In view thereof, Applicant’s motion for remand is hereby denied.
II. Issue on Appeal – Decisional Law
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
Serial Nos. 85913238 and 85913269

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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] 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).
III. Analysis
We turn first to Applicant’s initial specimen filed with both of its involved
applications, depicted below.
Serial Nos. 85913238 and 85913269

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The Examining Attorney is correct that the original specimen of record exhibits
the applied-for designation CYCLE OF EXCELLENCE. However, it fails to show use
Serial Nos. 85913238 and 85913269

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thereof as a mark in the sale or advertising of the “business consulting services…” or
“business training consulting services” recited in the applications, or in the
rendering of such services. Rather, the original specimen, described in the
applications as a “digital image of the foundational concepts used in training and
consulting services”5 appears to identify a process by which funeral home staff may
interact with customers and potential customers. Applicant has not contended
otherwise in its brief, and in fact does not discuss the refusal of the original
specimen at all.
We now turn to Applicant’s first substitute specimen, depicted below.6

5 April 24, 2013 applications.
6 The first page of Applicant’s substitute specimen submitted in both application files is
largely illegible.
Serial Nos. 85913238 and 85913269

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Similarly, the first substitute specimen submitted in both applications,
identified by Applicant as “brochure pages,”7 exhibits the designation CYCLE OF
EXCELLENCE. However, to the extent it is legible the first substitute specimen
again fails to show use of the designation in connection with the recited services in
either application, or their sale or advertising. We note in addition that Applicant
has not presented arguments supporting the first substitute specimen in its
brief, and does not discuss the refusal as it applies thereto.
We turn then to Applicant’s second substitute specimen, depicted below.

7 Applicant’s February 12, 2014 communication, p. 2.
Serial Nos. 85913238 and 85913269

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Applicant argues that the substitute specimen, identified as a “flyer describing
services and tm,”8 is acceptable because it “shows a flyer displaying the applied for

8 Applicant’s August 29, 2014 request for reconsideration, p. 1.
Serial Nos. 85913238 and 85913269

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trademark at the top of the page, in bold letters. The paragraph beneath the
trademark describes the services provided under the applied for trademark.”9
Applicant argues in addition that its
applied-for mark CYCLE OF EXCELLENCE does appear on the
specimen, both at the top of the flyer in bold letters, and in the
description of the services in bold letters. The specimen does show the
business [training] consultancy services identified in the following
sentences of the body of the flyer “Graystone’s Cycle of Excellence
demonstrates the cycle of the client-family experience…from the first
impression, through the arrangement process to support and follow up
services after the funeral/cremation/burial, this process enables your
staff the tools and consistency needed to get it right…” Moreover, the
specimen does show the applied-for mark in “use in commerce,” by
displaying the mark on a flyer that is used as advertisement for the
Applicant’s services.10 (emphasis in original)

The Examining Attorney disagrees, and states,
While the mark appears on the specimen and there is a reference to
consulting services, it is clear from the text of the specimens that the
mark describes a concept used in Applicant’s consulting services and is
not being used as a source indicator for consulting services. For
example, the advertisement states “Graystone Associates offers
business strategies and tools for your firm…through training and
consulting.” It then lists the mark. As shown, the mark appears to
refer to the “business strategies and tools” rather than the source of
the consulting service. Further confirming this analysis is the
following statement on the advertisement:
Graystone’s Cycle of Excellence demonstrates the cycle of
the client-family experience when a death of a loved one
occurs. From the first impression, through the
arrangement process to support and follow-up services
after the funeral/cremation/burial, this process enables
your staff the tools and consistency needed to get it right
the first time.
This statement makes clear that the mark CYCLE OF EXCELLENCE
refers to a business concept of the process featured in Applicant’s

9 4 TTABVUE 6.

10 Id.
Serial Nos. 85913238 and 85913269

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consulting services. Thus as used in these specimens, the mark does
not identify the consulting services and its source. The relevant public
would only likely view the mark as referring to the concept of
Applicant’s consulting services, not as the source of the consulting
services.11

We agree with the Examining Attorney; the specimens do not show the
requisite “direct association” between the applied-for mark and Applicant’s
“business consulting services…” or “business training consultancy services.”
Applicant is using CYCLE OF EXCELLENCE to identity a series of steps
experienced by a “client-family” when making funeral arrangements after the
death of a loved one. Nothing in the specimen associates the designation with
“business consulting services…” or “business training consultancy services.”
Furthermore, the mere reference to “training and consulting” in the heading
of the specimen is not sufficient to make the association. Even though this
reference is followed by the term CYCLE OF EXCELLENCE with a “TM”
designation, a direct association is not made between the two. The explanations
that follow regarding the experiences of Applicant’s clients when making funeral
arrangements makes clear that the reference is not to any service mark for
“business consulting services…” or “business training consultancy services,” but
rather outline a process for dealing with funeral home clients. 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.”); In re DSM
Pharmaceuticals, 87 USPQ2d at 1624 (“A specimen that shows only the mark

11 12 TTABVUE 7.
Serial Nos. 85913238 and 85913269

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with no reference to, or association with, the services does not show
service mark usage.”). See also In re Graystone Consulting Associates, Inc.,
___USPQ2d___ (TTAB 2015).12
Decision: The refusal to register Applicant’s mark because the original
specimens, as well as the first and second substitute specimens, do not show use of
the applied-for mark in connection with any of the services specified in either
application, is affirmed.

12 This decision, issued on May 12, 2015 was redesignated as a precedent of the Trademark
Trial and Appeal Board on July 30, 2015.