Graystone Consulting Associates, Inc.

Trademark Trial and Appeal Board

May 12, 2015

No. 85913509 (T.T.A.B. May. 12, 2015)

THIS OPINION IS NOT
A
PRECEDENT OF THE
TTAB
Mailed:
May 12, 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. 85913509
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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).

Before Zervas, Gorowitz and Hightower, Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Graystone Consulting Associates, Inc. (“Applicant”) seeks registration on the
Supplemental Register of the mark Walk-In Shopper (in standard character form)
for “business training consultancy services” International Class 41.1
The Examining Attorney issued a final Office Action in which, in relevant part,
she found the original specimen filed with the application unacceptable under

1 Application Serial No. 85913509 was filed on April 24, 2013, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), and claims first use and use in commerce on
February 1, 2010.
Serial No. 85913509

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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), because it was not a substantially exact representation
of the applied-for mark.2 Applicant filed a notice of appeal with the Board and a
request for reconsideration. The request for reconsideration included a substitute
specimen. The Examining Attorney did not accept the substitute specimen because
it does not demonstrate use of the mark in commerce in connection with the subject
services. When the appeal was resumed, Applicant and the Examining Attorney
each filed a brief. We affirm the refusal to register.
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

2 The final Office Action also included a refusal of the applied-for term under Section 2(e)(1)
of the Trademark Act, 35 U.S.C. § 1052(e)(1). Applicant subsequently amended its
application to seek registration on the Supplemental Register; therefore the Section 2(e)(1)
refusal became moot.
We also note that Applicant’s recitation of the prosecution history at page 4 of its brief is
not entirely accurate. The substitute specimen was not filed until after the issuance of the
final Office Action.
Serial No. 85913509

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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).
We turn first to Applicant’s initial specimen filed with its application, which is
depicted below:

The Examining Attorney is correct; the specimen does not exhibit the applied-for
mark. It only identifies “shoppers” in the plural form, not the singular form as
Serial No. 85913509

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depicted in the application drawing page. 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 substitute specimen, depicted below:

Applicant argues that the substitute specimen is acceptable because it “show[s]
the business training consultancy services identified in the … sentence[] of the body
of the flyer ‘Graystone offers communication training regarding the Walk-In
Shopper.’”3 The Examining Attorney disagrees, and states,
While the mark appears on the specimens and the
specimens reference training and consulting
services, it is clear from the text of the specimens
that the mark is the topic of applicant’s consulting

3 This sentence does not appear in the specimen. The specimen states, “Graystone offers in-
depth communication training targeting the walk-in shopper.”
Serial No. 85913509

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and training services and is not being used as a
source indicator for consulting services. For
example, reading below the mark WALK-IN
SHOPPER™, the advertisement claims to provide
“training targeting the walk-in shopper” and that
“Graystone has put together vast scenarios of
possible situations and what can affect the buying
decisions of a walk-in shopper.” … 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 topic or category of applicant’s consulting
services, not as the source of the consulting
services.

We agree with the Examining Attorney; the specimens do not show the requisite
“direct association” between the applied-for mark and Applicant’s “business training
consultancy services.” Applicant is using “Walk-In-Shopper” to identity a particular
customer, i.e., one who “visit[s] a funeral home in advance to determine which firm
they will choose.” This is evident from the use of the term in lower cases letters
(“targeting the walk-in-shopper”) and from the content of the paragraph which is
referring to an individual identified as a walk-in shopper (“Graystone has put
together vast scenarios of possible situations and what can affect the buying
decisions of a walk-in shopper.”) Nothing in the specimen associates the designation
with “business training consultancy services.”
Further, the mere reference to “training and consulting” in the specimen is not
sufficient to make the association. Even though this reference is followed by the
term WALK-IN-SHOPPER with a “tm” designation, a direct association is not made
between the two. The explanations that follow regarding the target customer for one
of Applicant’s clients makes clear that the reference is not to any service mark for
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“business training consultancy services,” but to a particular customer. 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 with
no reference to, or association with, the services does not show service mark
usage.”).
Decision: The refusal to register Applicant's mark because the specimens do
not show use of the applied-for mark in connection with any of the services specified
in the application is affirmed.