Spiritas Senior Services

Trademark Trial and Appeal Board

Apr 29, 2015

No. 86072239 (T.T.A.B. Apr. 29, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Spiritas Senior Services
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Serial No. 86072239
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R. Bennett Ford of Roy Kiesel Ford Doody & Thurmon,
for Spiritas Senior Services
Robert Clark, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Zervas, Greenbaum and Hightower,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Spiritas Senior Services (“Applicant”) seeks registration on the Principal
Register of the mark EXCELLENCE INVENTORY (in standard characters) for
Business management consulting and advisory services in
the assisted living, retirement and nursing home industry
in International Class 35.1

1 Application Serial No. 86072239 was filed on September 23, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
Serial No. 86072239
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The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the
ground that the mark is merely descriptive of the identified services.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We reverse the refusal to register.
I. Evidentiary Issue
We note that Applicant attached approximately 50 pages of evidence to its
appeal brief. It appears that much (and possibly all) of it is duplicative of
Applicant’s previously submitted evidence. Rather than engaging in a time-
consuming comparison of the attachments to the brief and the previously-filed
material, because any material that was not previously submitted is not properly of
record (see Trademark Rule 2.142(d)), we have only considered the previously-filed
material. See In re Greenliant Systems Ltd., 97 USPQ2d 1078, 1080 (TTAB 2010).
II. Applicable Law
“A mark is merely descriptive if it ‘consist[s] merely of words descriptive of the
qualities, ingredients or characteristics of the goods or services related to the mark.”
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir.
2004), quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543
(1920). See also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778,
1780 (Fed. Cir. 2003). The determination of whether a mark is merely descriptive is
whether it immediately conveys information concerning a significant quality,
Serial No. 86072239
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characteristic, function, ingredient, attribute or feature of the product or service
with which it is used, or intended to be used. In re Engineering Systems Corp., 2
USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It
is not necessary, in order to find a mark merely descriptive, that the mark describe
each feature of the goods or services, only that it describe a single, significant
ingredient, quality, characteristic, function, feature, purpose or use of the goods or
services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Where a mark consists of multiple words, the mere combination of descriptive
words does not necessarily create a nondescriptive word or phrase. In re Associated
Theater Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). If each component retains
its merely descriptive significance in relation to the goods or services, the
combination results in a composite that is itself merely descriptive. Oppedahl, 71
USPQ2d at 1371. However, a mark comprising a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
unique, nondescriptive meaning, or if the composite has a bizarre or incongruous
meaning as applied to the goods or services. See In re Colonial Stores Inc., 394 F.2d
549, 157 USPQ 382 (CCPA 1968); In re Shutts, 217 USPQ 363 (TTAB 1983); and
TMEP § 1209.03(d) (January 2015).
A mark is suggestive if, when the goods or services are encountered under the
mark, a multi-stage reasoning process, or the utilization of imagination, thought or
perception, is required in order to determine what attributes of the goods or services
the mark indicates. See, e.g., In re Abcor Development Corp., 588 F.2d 811, 200
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USPQ 215, 218 (CCPA 1978). As often has been stated, there is a thin line of
demarcation between a suggestive mark and a merely descriptive one, with the
determination of which category a mark falls into frequently being a difficult matter
involving a good measure of subjective judgment. See, e.g., In re Atavio, 25 USPQ2d
1361 (TTAB 1992), and In re TMS Corp. of the Americas, 200 USPQ 57, 58 (TTAB
1978). The distinction, furthermore, is often made on an intuitive basis rather than
as a result of precisely logical analysis susceptible of articulation. See In re George
Weston Ltd., 228 USPQ 57, 58 (TTAB 1985). The examining attorney bears the
burden of showing that a mark is merely descriptive of the identified goods or
services. See In re Merrill, Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987).
III. Analysis
The Examining Attorney contends that EXCELLENCE INVENTORY defines a
purpose of Applicant’s “[b]usiness management consulting and advisory services in
the assisted living, retirement and nursing home industry.” Relying on dictionary
definitions of “excellence” (the quality of being excellent) and “inventory” (a list of
traits, preferences, attitudes, interests or abilities used to evaluate personal
characteristics or skills relating to the quality of excellence),2 the Examining
Attorney asserts that “the purpose of [A]pplicant’s services is to provide a list of
traits, preferences, attitudes, interests or abilities used to evaluate personal

2 Attached to January 3, 2014 Office Action.
Serial No. 86072239
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characteristics or skills relating to the quality of excellence.”3 The Examining
Attorney also asserts that “EXCELLENCE INVENTORY is a descriptive term and
immediately and directly conveys some information about the services which are a
list of characteristics used to evaluate the quality of excellence.”4
In support of his position, the Examining Attorney made of record Internet
evidence consisting of four articles and one screenshot of a web page in which the
term “excellence inventory” is used.5 The four articles refer to questionnaires and
self-assessments used to evaluate particular qualities of a business or organization:
• The articles from and
discuss a questionnaire from the U.S. Office of
Personnel Management called “Management
Excellence Inventory (MEI)”, which is described as
“a management strengths and needs assessment
instrument developed by [OPM] for use by federal
agencies in their management development
systems.”;
• The article from discusses
“[a] self-assessment that measures personal
characteristics and factors that are directly related
to the nature and demands of pastoral ministry”
called “Sustaining Pastoral Excellence Inventory”
or “SPEI;” and
• The article in from the
business website of an executive coach
presents a two-
page self-assessment questionnaire that the
executive coach calls an “excellence inventory.”

3 Ex. Atty. Br. p. 5, 6 TTABVUE 5. Citations to Applicant’s and the Examining Attorney’s
briefs in this opinion also include citations to the TTABVUE docket entry number, and the
electronic page number where the argument appears. TTABVUE is the Board’s electronic
docketing system.
4 Ex. Atty. Br. p. 8, 6 TTABVUE 8.
5 Attached to March 10, 2014 Final Office Action.
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In addition to being few in number, none of the above four uses of “excellence
inventory” is relevant to the services identified in the application, namely,
“[b]usiness management consulting and advisory services in the assisted living,
retirement and nursing home industry.” Further, the Examining Attorney
introduced no evidence to explain how the term “excellence inventory” pertains to
said services. Even if Applicant offers a questionnaire designed to measure how well
its clients in the assisted living, retirement and nursing home industry are
performing, the evidence does not support a finding that the term “excellence
inventory” is merely descriptive of a feature of a survey. In addition, the printout
from the website is inapposite because it refers to a business
named “Auto Excellence,” and uses the word “inventory” in the conventional sense:
“Visit Auto Excellence’s Inventory in Salt Lake City …”.
Applicant argues that “because there is no such thing as an inventory of
excellence,”6 EXCELLENCE INVENTORY is incongruous when used in connection
with the identified services. Applicant contends that it “wishes to create the
impression that its customers can come to it and acquire excellence in their
retirement home business in the same way they might head to the gas station and
fill up on gasoline. While Applicant certainly expects to help its customers improve
the quality of service they provide, literally stocking up on excellence is not
possible.”7

6 App. Br. p. 4, 4 TTABVUE 5.
7 Id.
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After reviewing all of the evidence, it is not readily apparent how the term
“excellence inventory” applies to “[b]usiness management consulting and advisory
services in the assisted living, retirement and nursing home industry.” Based on the
record submitted, we are not persuaded that EXCELLENCE INVENTORY directly
and immediately conveys information about a characteristic of the identified
services. Rather, we view Applicant’s mark as incongruous in the context of
Applicant’s services, because there is no such thing as an inventory of excellence.
We further find that purchasers of Applicant’s services would be required to engage
in a multi-stage reasoning process to understand that EXCELLENCE INVENTORY
could refer to “business management consulting and advisory services in the
assisted living, retirement and nursing home industry.”
Decision: The refusal to register under Section 2(e)(1) of the Trademark Act is
reversed.