Graystone Consulting Associates, Inc.Download PDFTrademark Trial and Appeal BoardAug 19, 2015No. 85913238 (T.T.A.B. Aug. 19, 2015) Copy Citation - 1 - 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 - 2 - 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 - 3 - 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 - 4 - 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 - 5 - 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 - 6 - 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 - 7 - 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 - 8 - 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 - 9 - 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 - 10 - 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 - 11 - 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 - 12 - 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. Copy with citationCopy as parenthetical citation