Tailored Management System, Inc.

Trademark Trial and Appeal Board

Mar 26, 2021

88857513 (T.T.A.B. Mar. 26, 2021)

Mailed: March 26, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
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In re Tailored Management System, Inc.
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Serial No. 88857513
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Eric Karich, Esq. for Tailored Management System, Inc.

Kathleen Lorenzo, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
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Before Wolfson, Adlin and Coggins, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant Tailored Management System, Inc. seeks a Principal Register
registration for the proposed mark TAILORED MANAGEMENT SYSTEM, in
standard characters (MANAGEMENT SERVICES disclaimed1), for “providing
temporary use of online non-downloadable computer software for insurance claims
management for inputting first notice of loss, assigning claim to an adjuster, as well

1 Following the initial June 30, 2020 Office Action refusing registration on the ground of
descriptiveness, Applicant voluntarily disclaimed MANAGEMENT SERVICES, in an
apparent attempt to disclaim MANAGEMENT SYSTEM, the term in the proposed mark. In
the final August 13, 2020 Office Action, the Examining Attorney acknowledged the
disclaimer, but pointed out the error, stating “applicant’s mark includes the word ‘SYSTEM’
not ‘SERVICES’.”
This Opinion is Not a
Precedent of the TTAB
Serial No. 88857513
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as performing billing and production, provide management reports, and tracking
accounts receivable, related to the claim,” in International Class 42.2 The Examining
Attorney refused registration on the ground that the proposed mark is merely
descriptive of the identified services under Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1). After the refusal became final, Applicant appealed and Applicant
and the Examining Attorney filed briefs.
I. Evidence and Arguments
The Examining Attorney relies on the following dictionary definitions of the
proposed mark’s constituent terms:
TAILORED—“custom made”

MANAGEMENT—“the act or art of managing: the
conducting or supervising of something (such as a
business)”
SYSTEM—“A network of related computer software,
hardware, and data transmission devices.”
June 30, 2020 Office Action TSDR 5-17.
In addition, the Examining Attorney relies on third-party uses of the
phrase/proposed mark TAILORED MANAGEMENT SYSTEM. For example, QRC
Assurance and Solutions, a risk management company, lists the “Top #5 Reasons why
you should choose QRC” on its website, and fourth on the list is “Tailored
management systems that meet your business needs”:

2 Application Serial No. 88857513, filed April 2, 2020 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on an alleged intent to use the mark in commerce.
Serial No. 88857513
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August 13, 2020 Office Action TSDR 15 (emphasis added).
Similarly, Shalynx Solutions’s Mission Statement is as follows: “The One stop
Shop for I.C.T. Solutions’ We engage in Computer Networking, Hardware and
Software maintenance, website design, systems, data and network security, tailored
management systems, Internet solutions and product sales”:

Id. at 12 (emphasis added).
4Sight, another risk management company, indicates on its website that “[w]e
work with you to create a tailored management system that … manages your
organisation’s everyday and exceptional risks”:
Serial No. 88857513
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Id. at 10 (emphasis added).3
Thomas E. Brown Inc., a Pennsylvania auto body repair shop, touts its use of “a
tailored management system by ABW and (sic) tracks all our K.P.I.’s for us.” Id.
at 8 (emphasis added).

3 While some of these third parties appear to be based in other countries, the record indicates
that they each operate in the highly technical fields of information technology and risk
management, and at least some of them operate internationally while others tout compliance
with international standards. We thus find their uses of “tailored management system” to be
relevant here. “Information originating on foreign websites or in foreign news publications
that are accessible to the United States public may be relevant to discern United States
consumer impression of a proposed mark.” In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828,
1835 (Fed. Cir. 2007). The determination of whether to consider foreign evidence must be
made “on a case-by-case basis.” Id. Here, given the nature of the services at issue, we follow
precedent recognizing that “professionals in medicine, engineering, computers,
telecommunications and many other fields are likely to utilize all available resources,
regardless of country of origin or medium.” In re Remacle, 66 USPQ2d 1222, 1224 n.5 (TTAB
2002); see also, In re Int’l Business Machs. Corp., 81 USPQ2d 1677, 1681 n.7 (TTAB 2006)
(“In this case involving computer technology, it is reasonable to consider a relevant article
regarding computer hardware from an Internet web site, in English in another country.”).
Serial No. 88857513
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The “Management System Services” page of T.A.S. Group’s website promotes “a
tailored management system to support your operations,” which is intended for
when “informal controls are no longer effective,” and “regulatory and contractual
obligations regarding the safety and quality of your products” and “certification or
accreditation” of systems are of concern:

Id. at 7 (emphasis added).
Finally, Acclaro Advisory’s Management Systems webpage states that
“[m]anagement systems are tools to get the job done, to oversee processes and
implement policies that bring goals closer to completion.” It concludes “[c]onsistency
of processes, uniformity of protocol, ensuring stakeholders are on the same page, the
benefits of a tailored management system are many and the time/cost benefits
can’t be underestimated.” Id. at 5-6 (emphasis added).
Based on this evidence, the Examining Attorney argues that each of the individual
terms in the proposed mark retains its dictionary meaning in the composite
Serial No. 88857513
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TAILORED MANAGEMENT SYSTEM, such that the entire phrase is nothing more
than the sum of its constituent parts. Specifically, the composite term immediately
and generally describes “computer software and programs that are custom-made or
made for a particular purpose.” 6 TTABVUE 6. More specifically, given Applicant’s
identification of services in this case, it immediately describes “a network of related
online software and transmission components designed specifically for use in the
management of insurance claims.” Id. at 5-7.
Applicant did not introduce any evidence. It argues, however, that TAILORED
MANAGEMENT SYSTEM is suggestive rather than descriptive. Specifically, “the
term TAILORED is merely suggestive … the word TAILORED is not literally a
description of the Applicant’s [services], they don’t offer custom software services, but
a standardized product. TAILORED suggests that the product will be suited for the
customer’s needs, but it is not an actual description of the services.” 4 TTABVUE 3-
4.
II. Analysis
The record leaves no doubt that TAILORED MANAGEMENT SYSTEM is merely
descriptive of Applicant’s services because the term “immediately conveys knowledge
of a quality, feature, function, or characteristic” of the identified services. In re
Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012) (quoting In re Bayer AG, 82 USPQ2d at 1831); In re Abcor Dev., 588 F.2d 811,
200 USPQ 215, 217-18 (CCPA 1978). Specifically, according to its identification of
services, Applicant provides its customers access to “computer software,” a type of
“system,” which is “tailored,” i.e., made for the purpose of (as set forth in the
Serial No. 88857513
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identification of services): “insurance claims management,” including providing
“management reports” (emphasis added).4
In fact, when an applicant identifies its goods or services using a term in the mark,
as Applicant has in this case with the term “management,” that may be persuasive
evidence of descriptiveness. In re Taylor & Francis (Publishers) Inc., 55 USPQ2d
1213, 1215 (TTAB 2000) (PSYCHOLOGY PRESS & Design found merely descriptive
of nonfiction books in the field of psychology, in part because the applicant’s
“identification of goods expressly states that the series of non-fiction books upon
which applicant uses its mark are ‘in the field of psychology.’ The word
PSYCHOLOGY therefore is merely descriptive of the subject matter of applicant’s
books, as identified in the application ….”); In re Johanna Farms, Inc., 222 USPQ
607, 609 (TTAB 1984) (“The term ‘yogurt’ is concededly the name of the goods. That
fact is uncontrovertible where, as here, the same term has been used in the
identification of goods for which registration is sought.”).

4 Even if Applicant had introduced evidence in support of its argument that its software
system is “a standardized product” rather than “custom software services,” 4 TTABVUE 4,
the proposed mark would still be merely descriptive. In the context of Applicant’s
identification of services, the term “tailored” refers to the services being suited to a particular
purpose, specifically “insurance claims management,” rather than suited to a particular
customer. Furthermore, Applicant’s reliance on the non-binding 127 year-old New York state
case Keasbey v. Brooklyn Chem. Works, 142 N.Y. 467, 37 N.E. 476 (N.Y. 1894) is misplaced.
There, the term in question had “never been before used in medical science to designate any
other medicine or medicinal preparation,” id. at 477, and the term did not “even give any
clear general idea as to what [the goods] are,” or have any “known significance in the medical
world.” Id. at 479. The record in this case, by contrast, shows that the proposed mark consists
of well-known terms which third parties have combined into the exact same composite as
Applicant − TAILORED MANAGEMENT SYSTEM − to refer to similar or related products
and services.
Serial No. 88857513
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While Applicant does not use the words “tailored” or “system” in its identification
of services, these terms are merely descriptive of, respectively, services made for a
specific purpose (“insurance claims management,” “management reports” and
“tracking accounts receivable”) and the method of providing the services (“non-
downloadable computer software”), which are specifically included in the
identification.
The third-party descriptive uses of the exact phrase Applicant seeks to register,
(“tailored management system”) in connection with computer systems and associated
services support the dictionary definitions and further establish that TAILORED
MANAGEMENT SYSTEM is merely descriptive. Indeed, these third parties do not
use the term to identify Applicant’s services, or any particular goods or services
whatsoever, but instead to convey the types of “systems” they are offering. In re
Leonhardt, 109 USPQ2d 2091, 2095 (TTAB 2008) (relying on third-party uses to find
descriptiveness); cf. In re Nordic Naturals, Inc., 755 F.3d 1340, 111 USPQ2d 1495,
1498 (Fed. Cir. 2014) (finding in context of genericness that “numerous [third-party]
uses of ‘children’s DHA’ … supports the Board’s conclusion that the relevant public
primarily uses the phrase as it is defined in the dictionary, i.e., to generally describe
DHA products formulated for children.”). To the extent that one or more of these third
parties may use SYSTEM broadly, to describe tailored methods of management which
go beyond just software and related services, the term still encompasses the identified
software services.
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In fact, the third-parties use “tailored management system” the same way
Applicant does − to identify management systems made for a specific purpose. These
uses, the dictionary definitions and Applicant’s identification of services all make
clear that in Applicant’s proposed mark, each component term, TAILORED,
MANAGEMENT and SYSTEM, retains its merely descriptive significance in relation
to the services. The composite term TAILORED MANAGEMENT SYSTEM is
therefore nothing more than the sum of its parts when used for computer-based
management systems for insurance claims. Applicant does not suggest any
alternative commercial impression resulting from the combination of these
immediately descriptive terms. The composite term TAILORED MANAGEMENT
SYSTEM is therefore merely descriptive. See, e.g., In re Oppedahl & Larson LLP, 373
F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of
computer software for managing a database of records that could include patents, and
for tracking the status of the records by means of the Internet); In re Petroglyph
Games, Inc., 91 USPQ2d 1332 (TTAB 2009) (BATTLECAM merely descriptive for
computer game software); In re Carlson, 91 USPQ2d 1198 (TTAB 2009)
(URBANHOUZING merely descriptive of real estate brokerage, real estate
consultation and real estate listing services); In re Tower Tech Inc., 64 USPQ2d 1314
(TTAB 2002) (SMARTTOWER merely descriptive of commercial and industrial
cooling towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001)
(AGENTBEANS merely descriptive of computer programs for use in developing and
deploying application programs).
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III. Conclusion
The record leaves no doubt that TAILORED MANAGEMENT SYSTEM is merely
descriptive of Applicant’s services, which as identified encompass computer systems
tailored to managing insurance claims.

Decision: The refusal to register Applicant’s proposed mark on the Principal
Register because it is merely descriptive under Section 2(e)(1) of the Trademark Act
is affirmed.