Modern Survey, Inc.

Trademark Trial and Appeal Board

Jun 26, 2015

No. 86283419 (T.T.A.B. Jun. 26, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 26, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Modern Survey, Inc.
_____

Serial No. 86283419
_____

Erika S. Koster of Oppenheimer, Wolff & Donnelly, LLP
for Modern Survey, Inc.
Tejbir Singh, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
_____

Before Seeherman, Kuhlke and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Modern Survey, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark mExit (in standard characters) for
Human resource services, namely, designing, configuring,
administering and analyzing feedback from customers
and potential, current and former employees of
organizations by means of web based software
applications, in International Class 35.1

1 Application Serial No. 86283419 was filed on May 16, 2014, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as August 31, 2008.
Serial No. 86283419
- 2 -

The Trademark Examining Attorney has refused registration of Applicant’s
mark based on Applicant’s failure to comply with a requirement for an acceptable
description of services that does not exceed the scope of the services as originally
filed. See Trademark Rule 2.71(a); 37 CFR § 2.71(a).
In addition, the Trademark Examining Attorney has refused registration of
Applicant’s mark under Sections 1 and 45 of the Trademark Act of 1946, 15 U.S.C.
§§ 1051 and 1127, and 37 CFR §§ 2.34(a)(1)(iv) and 2.56(a), on the ground that
Applicant failed to submit specimens showing the use of the mark for the services
listed in the application.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed.
I. Whether Applicant’s proposed description of services is
acceptable?

In order to address the Trademark Examining
Attorney’s requirement respecting Applicant’s description of services in
International Class 35, we set out the relevant prosecution history on this issue.
1. Applicant’s original description of services was “human resource services.”
2. In the September 8, 2014 Office Action, the Trademark Examining Attorney
required a more specific description of services, recommending “human resource
consultancy,” if accurate.2

2 The Acceptable Identification of Goods and Service Manual lists the following “human
resource” services in Class 35:
Serial No. 86283419
- 3 -

3. In the September 18, 2014 Response, Applicant amended the description of
services to read as follows:
Human resource services, namely, designing, configuring,
administering and analyzing feedback from customers
and potential, current and former employees of
organizations by means of web based software
applications.
4. In the September 26, 2014 Office Action, the Examining Attorney issued a
final refusal requiring an amended description of services that did not exceed the
scope of the original recitation of services. The Trademark Examining Attorney
explained the basis for the requirement as follows:
This proposed amendment is beyond the scope of the
original identification because applicant has changed its
services from human resource services to provision of
web-based software applications that provide for aspects
of human resource services such as designing,
configuring, administering and analyzing feedback.
Human resource services are in Class 35 and providing
software services are typically in Class 42. The type of
services has been significantly altered from the original
identification. Thus, the identification, incorporating this
amendment, is not acceptable. See 37 C.F.R. §§ 2.32(a)(6),
2.71(a); TMEP §§ 805, 1402.01.

Human resource analysis and consulting services
Human resource services, namely, collecting, analyzing, reporting, and providing feedback
from individuals who separate from an organization
Human resource services, namely, facilitating the employee termination and separation
process by executing the required activity and communication related to employee
termination and separation
Human resources consultation
Human resources consultancy
Human resources management
Serial No. 86283419
- 4 -

The Trademark Examining Attorney suggested “human resource analysis and
consultancy services,” if accurate.
5. In the November 5, 2014 Request for Reconsideration, Applicant argued that
it “is essentially providing human resource services by means of the Internet which
must be classified according to the subject matter of the services and the fact that
the information is provided over the Internet does not affect its classification.” In
other words, “Applicant provides … collection, analysis, recording and reporting
services with respect to individuals who separate from an organization … by means
of a web-based interface.”
6. In the November 13, 2014 Office Action, the Trademark Examining Attorney
denied the Request for Reconsideration on the ground that the proposed
amendment “changes the inherent nature of the type of services being offered.”
With respect to services that are provided over the Internet, the TRADEMARK
MANUAL OF EXAMINING PROCEDURE (January 2015) provides the following
instructions:
1402.11(a)(i) Services Classified in Classes 35, 36,
37, 39, 40, 41, 44, and 45
Any activity consisting of a service that ordinarily falls in
these classes (e.g., real estate agency services, banking
services, dating services), and that happens to be provided
over the Internet, is classified in the class where the
underlying service is classified. For example, banking
services are classified in Class 36 whether provided in a
bank or online.
The following are examples of some acceptable
identifications:
“Internet advertising services in Class 35.”
Serial No. 86283419
- 5 -

“Online banking services in Class 36.”
“Providing information about automobiles for lease by
means of the Internet, in Class 39.”
“Online cosmetic skincare consultation services in Class
44.”
“Internet-based dating, social introduction and social
networking services, in Class 45.”
The fact that Applicant is providing its human resource services by means of
“web based software applications” does not change the inherent nature of its human
resource services; rather, it just explains how the services are rendered.
The addition of “designing, configuring, administering and analyzing feedback
from customers and potential, current and former employees of organizations”
limits the human resource services set forth in the description of services. The
additional wording does not expand on the original description of services because it
explains that the human resource services are in the field of analyzing feedback
from customers and potential, current and former employees.
In view of the foregoing, we find that Applicant’s amended description of services
is acceptable.
II. Whether the specimen shows the mark used to identify the
services in the application?

This issue requires us to determine whether the specimen of record shows the
mark mExit used to identify “human resource services, namely, designing,
configuring, administering and analyzing feedback from customers and potential,
current and former employees of organizations by means of web based software
Serial No. 86283419
- 6 -

applications.” In other words, mExit must be used to identify human resource
services offered by web based software.
Applicant’s specimen is an excerpt from Applicant’s website. It displays the
mark as follows:

* * *

In its September 18, 2014 Response to an Office Action, Applicant submitted a
“white paper” to further explain the nature of Applicant’s human resource services.3
The white paper referenced the “m/exit tool to help [customer] manage the
transition process.”

3 November 5, 2014 Response to Office Action (in this Response, Applicant explained that
the September 18, 2014 white paper was not meant to be a specimen).
Serial No. 86283419
- 7 -

This tool was employed to administer a pre-exit interview
survey helping [customer] capture raw data from
departing employees, including detailed specifics and
demographic information. …
Harnessing the power of m/exit, [Applicant] worked with
[customer] to design an employee departure system that
helped them capture valuable information from departing
employees, aggregate and sort the data, and report the
results to uncover employee dissatisfaction trends,
ultimately giving [customer] better understanding of why
employees depart, and what they can do to minimize
attrition and maximize their employees’ performance.
The Trademark Examining Attorney submitted an excerpt from Applicant’s
website in the September 8, 2014 Office Action. The website referenced the mExit
mark as shown below:

The perception or commercial impression created by the specimen is that mExit
is human resource software. For example, the specimen invites the viewer to
Serial No. 86283419
- 8 -

“request a demo.” One can test or review software online, but one does not test a
human resource service online. The specimen references “mExit’s surveys and data
evaluation tools” that within the context of the specimen appear to be features of
Applicant’s software. There is nothing in the specimen that points to any human
resource activity that is rendered by Applicant. This conclusion is corroborated by
the informational white paper submitted by Applicant and the website excerpt
submitted by the Trademark Examining Attorney.
Applicant argues that Applicant “offers to gather and provide information so
that customers may better understand why people leave their employment.”4
However, based on the specimen of record, the mExit mark identifies the software
that gathers and provides the information; it does not identify the human resource
services. Applicant references In re Anchor Holdings LLC, 79 USPQ2d 1218 (TTAB
2006), to support its contention that its specimen demonstrates use of mExit as a
service mark. In Anchor, the applicant argued that it provides reminder messages
and that it “does not provide, download or sell any type of software.” Id. at 1220.
Under the circumstances in Anchor, the Board found that “applicant provides
customer marketing communication services that include ‘initiating and scheduling
email communications/reminders.’” In the present case, however, the specimen and
supporting information convey that Applicant provides software in the field of

4 4 TTABVUE 16.
Serial No. 86283419
- 9 -

analyzing employee departures rather than human resource services focusing on
employee departures.5
In view of the foregoing, we find that the specimen of record does not show
Applicant’s mark mExit used to identify and distinguish “human resource services,
namely, designing, configuring, administering and analyzing feedback from
customers and potential, current and former employees of organizations by means
of web based software applications.”

Decision: The refusal to register Applicant’s mark mExit on the ground that
the description of services is indefinite and beyond the scope of the original
description of services is reversed.
The refusal to register Applicant’s mark mExit on the ground that the specimen
of record does not show the mark mExit used to identify and distinguish “human
resource services, namely, designing, configuring, administering and analyzing
feedback from customers and potential, current and former employees of
organizations by means of web based software applications” is affirmed.

5 We note the Acceptable Identification of Goods and Service Manual lists the following
services in Class 42:
Software as a service (SAAS) services, namely, hosting software for use by others for use
{specify the function of the programs, e.g., for use in database management, for use as a
spreadsheet, for word processing, etc. and, if software is content-or field-specific, the field of
use}
Software as a service (SAAS) services featuring software for {specify the function nof the
programs, e.g., for use in database management, for use as a spreadsheet, for word
processing, etc. and, if software is content – or field-specific, the field of use}.