Graystone Consulting Associates, Inc.

Trademark Trial and Appeal Board

Sep 3, 2015

No. 85913371 (T.T.A.B. Sep. 3, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 3, 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. 85913371
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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.
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Before Bucher, Cataldo and Wolfson,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Graystone Consulting Associates, Inc. (“Applicant”) seeks registration on the
Supplemental Register of the mark Value Statements (in standard character format)
for “business training consultancy services” in International Class 41.1
This application was originally filed on April 24, 2013, seeking registration on
the Principal Register, based upon Section 1(a) of the Trademark Act, claiming first

1 Although originally filed on the Principal Register, the application was amended to one
filed on the Supplemental Register on August 29, 2014.
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use anywhere and first use in commerce at least as early as February 16, 2001. In
the initial Office Action of August 10, 2013, the Trademark Examining Attorney
refused registration of the mark under Section 2(e)(1) of the Trademark Act,
15 U.S.C. § 1052(e)(1), because the mark allegedly merely describes a feature of the
identified services, specifically the subject matter of Applicant’s business training
consultancy services. The Trademark Examining Attorney also refused registration
under Sections 1 and 45 on the basis that the initial specimen does not show the
applied-for mark in use in commerce as a mark for the identified services, requiring
that Applicant submit a substitute specimen that shows the mark being used in
connection with the identified services at least as early as the filing date of the
application.
On February 10, 2014, in addition to arguing that its mark was not merely
descriptive, Applicant also submitted a substitute specimen consisting of a
screenshot of a business form showing the mark and requested approval for
publication. The Trademark Examining Attorney issued a Final Office Action on
March 4, 2014, maintaining the refusals based upon descriptiveness and the failure
to submit an acceptable specimen.
On July 25, 2014, Applicant filed a Request for Reconsideration after Final
Action, in which it again argued against the mere descriptiveness refusal and
submitted another substitute specimen. The Trademark Examining Attorney
denied the Request for Reconsideration on August 17, 2014, and maintained the
refusal and requirement set forth in the final Office action. Applicant filed a second
Request for Reconsideration on August 29, 2014, amending the Application to the
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Supplemental Register and submitting yet another substitute specimen. On
September 4, 2014, Applicant filed a third Request for Reconsideration. In it,
Applicant again confirmed its interest in amending to the Supplemental Register,
submitted the same eleven-page legal argumentation against the descriptive refusal
it had earlier submitted on July 25, and resubmitted the same substitute specimen
it had earlier sent to the Office on August 29. In light of Applicant’s requested
amendment to the Supplemental Register, the earlier Final refusal under
Trademark Act Section 2(e)(1) became a moot point. Nonetheless, on December 29,
2014, the Trademark Examining Attorney issued another denial of Applicant’s
repeated Requests for Reconsideration as to the acceptability of the submitted
specimens.
Along with its third Request for Reconsideration, Applicant timely filed its
Appeal on September 4, 2014, and its Appeal brief on April 1, 2015. The Trademark
Examining Attorney filed her Appeal brief on behalf of the Office on May 28, 2015.
I. Request to Remand Application Denied
On August 18, 2015, months after the final briefing of this Appeal, Applicant
filed a motion to remand the involved applications to the Trademark Examining
Attorney “so that the Applicant may amend the filing basis of the instant
Application to a 1(b) intent-to-use basis thus removing the basis for the instant
refusal.”2 In support of the motion for remand, Applicant makes the following
arguments:

2 19 TTABVue at 2 of 3.
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“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 4, 2014 on the grounds that the specimen does not
show a trademark, or the trademark, used in commerce.
On September 4, 2014, Applicant filed an appeal to the
Board regarding the refusal made final on March 4, 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.
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); see also TBMP § 1205.01. Generally, the later in the appeal
proceeding that the request for remand is filed, the stronger the reason that must
be given for good cause to be found. TBMP § 1207.02.
In this case, Applicant has given no reason for the accumulation of several
periods of delay. Before this latest request for remand, it had been more than
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seventeen months from the issuance of the final Office Action. The request for
remand was filed three months after briefing had been completed. Thus, Applicant’s
reason for our granting remand must be strong indeed.
However, 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. Granted, even
at this late stage of a proceeding, a proposed amendment that would obviate
outstanding statutory issues might well constitute good cause. But this requested
amendment to the basis of the application would not put it in condition for
acceptance. Rather, the request to change the basis of the application from Section
1(a) to Section 1(b) (use to intent-to-use) would serve no purpose inasmuch as it
would be inconsistent with an application for registration on the Supplemental
Register. An application on the Supplemental Register must be based upon use of
the mark in commerce – not on intent to use. Section 23(a); 15 U.S.C. § 1091(a). On
the other hand, an application filed under Section 1(b) of the Act is based upon an
applicant’s bona fide intent to use the mark – not on use in commerce. Therefore, in
a Supplemental Register application, Applicant cannot amend the filing basis of the
application to remove the assertion of use of the mark in commerce.
Furthermore, in addition to the incompatibility of Section 1(b) with the
Supplemental Register, if the Board were to allow remand in this situation, it would
likely create further examination issues, including the possibility of new refusals or
requirements on the Supplemental Register. On the other hand, if the Board were
to allow an amendment of the application back to the Principal Register,
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prosecution would require a reinstatement of the refusal litigated since August
2013, on the ground of mere descriptiveness under Section 2(e)(1) of the Act.
Having found there will be no expeditious resolutions upon remand, we turn to
the timing of the request for remand. TBMP § 1209.04. On this critical element, we
find that we are far too late in the appeal process, with briefing having been limited
to the issue of the acceptability of the specimen, to now essentially reopen
examination and briefing on new issues. As a result, at this late juncture in the
appeal, we find that Applicant has failed to show good cause for granting its request
for remand of August 18, 2015. 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
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
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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 then to the issue that has been briefed, i.e., whether the specimens
submitted by Applicant show use of its applied-for designation in the sale or
advertising of its business training consultancy services, and therefore whether
Applicant’s proposed mark Value Statements is registrable on the Supplemental
Register. The specimens submitted by Applicant on April 24, 2013, and again on
February 10, 2014, are shown in relevant part below (highlighting supplied):

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The first specimen is a worksheet for training and assisting employees in dealing
with potential telephone callers to Applicant’s clients, which are, in turn, business
establishments in the funeral industry. Applicant identified this sheet in its
application papers as a “[s]canned handout of Value Statements material.”
Similarly, Applicant identified the specimen submitted on February 10, 2014, as a
“[s]creenshot of business form.” This too appears to be a review page making up
part of a training form for the employees of one of Applicant’s clients.
Undoubtedly, the two-word proposed mark is printed on each of the documents
shown above, and appears to function as the subject matter of an employee training
module. However, this use of the term “Value Statements” does not show a direct
association between the proposed mark and the services for which registration is
sought. The nature of the involved services is unclear and cannot be determined
based upon these specimens. An application based on Trademark Act Section 1(a)
must include a specimen showing the applied-for mark in use in commerce for the
services identified in the application. 15 U.S.C. § 1051(a)(1); 37 C.F.R. §§ 2.34
(a)(1)(iv), 2.56(a). Instead, Applicant is using the term to describe the way in which
a business client (e.g., a funeral home entity) may want to present its core values to
its customers.3

3 Interestingly, the original specimen contains a suggestion that the employee “Create a
Value Statement … .” In this context, this singular form (i.e., “Statement” rather than
“Statements”) reinforces the connotation of the applied-for designation as the name of a
collaborative work product, not a source for consultancy services.
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In short, nothing in the specimens indicates that Applicant is providing business
training consultancy services in International Class 41 under the applied-for mark.
Hence, these specimens are unacceptable.
The promotional material submitted on July 25, 2014, as a third proposed
specimen of record, uses the term “Value Statements” at least eight times, and
offers a more detailed insight into how Applicant uses this concept:
4
“Value Statements,” the plural noun, is explicitly characterized as a concept, a
communications tool, and a deliverable. We learn that some “Value Statements” are
in the areas of “Care” and “Concern”; others are in the areas of “Reassurance,”
“Comfort,” funeral “Charges”; there are “Personal” “Value Statements” and “Super”
“Value Statements.” In this specimen, although Applicant has placed the informal

4 Highlighting of the designation “Value Statements” supplied.
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trademark notification symbol (“™”) next to the term “Value Statements™” located
in the sub-heading of the page, no direct association is made between the applied-
for mark and business training consultancy services in International Class 41. The
mention in the text of the specimen that “our professional trainers will train your
staff” is not sufficient to make the association. Rather, we agree with the
Trademark Examining Attorney that “Value Statements” as used in this brief
promotional material merely names a single “subject or concept of the consulting
services.”
Similarly, the specimen submitted on August 29, 2014 (and again on September
4, 2014) is more clearly an advertisement for Applicant’s business training
consultancy services:

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In this ad, we see the designation “value statements” in several places within
sentences in the text, having all lower-case letters. In the ad, Applicant claims to
teach clients’ employees techniques of dealing with planning a funeral “in the form
of value statements” and that its “funeral professionals practice using value
statements throughout a variety of possible situations.” Given the connotation of
this designation and the form of its usage on these specimens of record, the applied-
for mark does not identify business training consulting services or their source.
Members of the relevant public would likely view the term as referring to one tool,
technique, topic, concept, work product, component or module of Applicant’s
training programs – not as the source of its business training consultancy services.
Decision: Inasmuch as none of the various specimens submitted by Applicant
during the course of the prosecution of this application show use of the applied-for
mark in connection with business training consultancy services, the refusal under
Sections 1 and 45 of the Lanham Act is hereby affirmed.