Graystone Consulting Associates, Inc.

Trademark Trial and Appeal Board

Sep 22, 2015

No. 85914442 (T.T.A.B. Sep. 22, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 22, 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. 85914442
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Matthew H. Swyers of The Trademark Company, PLLC,
for Graystone Consulting Associates, Inc.
Laura Golden, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
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Before Seeherman, Wolfson and Masiello,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
This is an appeal by Graystone Consulting Associates, Inc. (“Applicant”); the
issue on appeal is the acceptability of Applicant’s specimens of use of the asserted
mark.
I. Procedural History
As background, Applicant originally filed an application for registration on the
Principal Register, based on use in commerce, for the mark INTENTIONAL
CONVERSATION in standard characters for “business training consultancy
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services” in Class 41.1 In the initial Office action, the Examining Attorney refused
registration pursuant to Section 2(e)(1) of the Trademark Act on the ground that the
mark was merely descriptive of the services, and required an acceptable specimen of
use because the specimen submitted with the application did not show use of the
mark in commerce for the identified services. Applicant responded on February 27,
2014 by asserting that its mark was not merely descriptive, and by submitting a
substitute specimen. The Examining Attorney was not persuaded by this response,
and on March 13, 2014 issued a final Office action, making final the refusal on the
ground of mere descriptiveness and making final the requirement for an acceptable
specimen. The Examining Attorney found the substitute specimen unacceptable
because it does not show a direct association between the mark and the services,
and thus fails to show the mark in use in commerce.
On August 29, 2014, Applicant filed a request for reconsideration, again arguing
against the mere descriptiveness refusal, and submitting a third specimen. The
Examining Attorney did not act on this request at that time, because Applicant filed
a notice of appeal with the Board just two weeks later, on September 15, 2014.
Applicant filed its notice of appeal through the Board’s ESTTA filing system, by
which notices of appeal can be electronically filed. When a notice of appeal is filed
through the ESTTA system, and there is either a pending request for
reconsideration or the applicant is filing a request for reconsideration at the same
time as the notice of appeal, there is a “check-off box” on the notice of appeal form

1 Application Serial No. 85914442, filed April 25, 2013, asserting first use and first use in
commerce at least as early as March 1, 2009.
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where that should be noted. In that situation, the ESTTA system will generate an
order instituting the appeal, but suspending proceedings and remanding the
application to the Examining Attorney for consideration of the request for
reconsideration. Because Applicant failed to check this box to notify the Board of the
pending request for reconsideration, the ESTTA system automatically generated an
order instituting the appeal and indicating that Applicant’s brief was due on
November 14, 2014. This order also contained the advisory that if the applicant had
pending a request for reconsideration it should telephone the Board paralegal to
whom the appeal was assigned. Despite this advisory, Applicant did not make the
call. Thus, even though Applicant failed to check the box as part of its initial filing
of the notice of appeal, and was specifically notified of the procedure to follow to
rectify this, Applicant did nothing. As a result, because the Examining Attorney no
longer had jurisdiction over the application, and the Board was unaware that there
was a reason to remand jurisdiction to her, the Examining Attorney did not act on
the pending request for reconsideration.
On the due date of its brief, Applicant filed a request for remand, asking that the
application be remanded “so that the examining attorney may consider the
amendment of the application to the Supplemental Register, review the substitute
specimen previously made of record with Applicant’s request to reconsider, and
[consider] whether the amendment of the same will render moot the instant
refusal.”2 We note that Applicant did not submit the actual amendment, although

2 In support of its remand request, Applicant made the statement that “a request filed by an
applicant within six months after the issuance of the final office action is typically granted
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the correct procedure is that an Amendment (or evidence, or whatever matter is
sought to be put before the Examining Attorney on remand) should accompany the
request for remand. Cf. TMBP § 1207.02 (request for remand to introduce evidence
must be accompanied by the additional evidence sought to be introduced).
Nonetheless, the application was remanded to the Examining Attorney, and on
December 2, 2014 she issued an action accepting the amendment to the
Supplemental Register, which rendered moot the refusal pursuant to Section 2(e)(1)
on the ground of mere descriptiveness. She did, however, maintain the requirement
for a specimen showing use of the mark in commerce for the identified services.
At that point proceedings in the appeal were resumed,3 and both Applicant and
the Examining Attorney filed briefs. The sole issue remaining in this appeal is
whether the specimens are acceptable, and specifically whether any of the
specimens that have been submitted show use of the applied-for term as a mark in
connection with the identified services.
We affirm the refusal of registration.
II. Analysis
The Examining Attorney has refused registration under Sections 1 and 45 of the
Trademark Act, 15 U.S.C. §§ 1051 and 1127, and Trademark Rules 2.34(a)(1)(iv)
and 2.56(a) because the specimens submitted by Applicant do not show the applied-

as a matter of right.” Although this is a correct statement, it is not applicable in Applicant’s
case, since Applicant’s request for remand was filed eight months after the issuance of the
final Office action.
3 Prior to filing its brief Applicant filed a motion to consolidate the appeal in this
application with those in seven other applications; the motion was denied as to this
application.
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for mark in use in commerce with the services specified in the application. An
application based on Trademark Action Section 1(a), 15 U.S.C, § 1051(a), must
include a specimen showing the applied-for mark in use in commerce. See
Trademark Rule 2.34(a)(1)(iv) (one of the requirements for an application for a
service mark filed under Section 1(a) of the Act is “one specimen showing how the
applicant uses the mark in commerce”) and Trademark Rule 2.56(a) (An application
under section 1(a) of the Act must include one specimen per class showing the mark
as used on or in connection with the goods or services.). We set forth the general
principles regarding whether a specimen shows use of a term as a service mark
from another decision involving this same Applicant:
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
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).

In re Graystone Consulting Assocs., __USPQ2d__, No. 85913509 (TTAB May 12,
2015).
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Although Applicant refers in its brief to its “most recent substitute specimen,” 10
TTABVUE 6 (which would be the specimen submitted with its request for
reconsideration on August 29, 2014), it is clear from the recital in its brief of the
wording in the specimen that it is discussing the substitute specimen submitted
with its February 27, 2014 response. In that response Applicant described the
specimen as a “screenshot of training materials,” but in its brief claims that it is “an
advertising flyer for [sic] which is part of the comprehensive training method which
individuals may purchase from the Applicant.” 10 TTABVUE 8. In the face of the
description of the specimen in the response, which was accompanied by a
declaration supporting use of the specimen, we cannot accept Applicant’s
unsupported statement in its brief that the specimen is a “flyer.” Further, as shown
below, the specimen is very truncated, with more text appearing from left to right
than from top to bottom, as might appear if a screen shot were taken of a portion of
a webpage. In addition, the specimen contains the advisory, “Trainer Note—Pages
14 & 15 are integrated in execution and should be trained as a single exercise,”
indicating that, unlike an advertising flyer, this page is part of a larger booklet or
manual. (The blue shading highlighting “Intentional Con” appears in the specimen
as submitted; Applicant has provided no explanation as to whether this partial
highlighting appears in the actual training materials, or was added by Applicant in
connection with its transmission to the Office.)
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Whether the specimen is considered a screenshot or an advertising flyer, the
applied-for mark, INTENTIONAL CONVERSATION, is not being used as a mark
for business training consultancy services. Although “The Intentional Conversation”
at the top of the page is prominently displayed, when viewed in connection with the
rest of the text it gives the impression that it is a topic, rather than a source
indicator for the identified services. We also note that the applied-for mark is
INTENTIONAL CONVERSATION, not THE INTENTIONAL CONVERSATION as
appears in the title. See Graystone Consulting, id., finding that specimen showing
the “mark” as “Walk-in Shoppers” did not exhibit the applied-for mark, WALK-IN
SHOPPER.
The applied-for term, INTENTIONAL CONVERSATION, is used in the text as
follows:
Even the most spontaneous and casual conversation has an agenda.
Intentional Conversation should be both casual and focused.

Lecturette—
The purpose of Questioning and Listening is to learn about the unique
life of the deceased through an “Intentional Conversation.”
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Applicant is using “Intentional Conversation” to identify an aspect of
conversation, in the same manner as it uses “Questioning and Listening” and
“Casual and focused,” rather than as a source indicator. Merely because a term is
capitalized or in quotation marks or bold type does not make it a trademark. Cf. In
re Aerospace Optics Inc., 78 USPQ2d 1861, 1864 (TTAB 2006) (use of TM symbol on
specimen does not change commercial impression of applied-for mark).
Simply put, consumers or potential consumers would not view the term
INTENTIONAL CONVERSATION in this specimen as a mark that identifies the
source of business training consultancy services.
In its brief, Applicant has not even addressed the acceptability of its original
specimen or the specimen it submitted with its August 29, 2014 request for
reconsideration, so we assume that it no longer relies on these specimens as
evidence of use of its mark. However, to be complete, we confirm that these
specimens are also unacceptable to show use of INTENTIONAL CONVERSATION
as a mark for the identified services. The original specimen is described in the
application as a “scanned hand out on Intentional Conversation documentation,”
and as the Examining Attorney suggests, and Applicant has not disputed, appears
to be a handout distributed in the course of a training session. The heading is “The
Intentional Conversation,” (not the applied-for mark INTENTIONAL
CONVERSATION), and uses INTENTIONAL CONVERSATION as a description
for a type of conversation: “An ‘Intentional Conversation’ enables the funeral
director to get to know the family and develop a trusting relationship”; the only
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other use of the term is, “Keep the Intentional Conversation casual, yet focused--.”
Nothing in the specimen mentions training or consulting services. As used in this
specimen, “Intentional Conversation” would be understood by purchasers or
potential purchasers of Applicant’s services as the term for a type of conversation
with their clients, rather than as a source-indicator for business training
consultancy services.
The August 29, 2014 specimen, described in the request for reconsideration with
which it was submitted as a “flyer displaying tm & services,” is very similar to the
substitute specimen in Graystone Consulting which was found to be unacceptable.
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Serial No. 85914442
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The entire top section is identical to that in Graystone Consulting, with the only
difference being that “Intentional Conversation™ is substituted for “Walk-in
Shopper™.” The paragraph of text that forms the bottom portion of the specimen is
different from that in the WALK-IN SHOPPER specimen; for clarity, we have
retyped it below:
When the process breaks down, the funeral professional must go into
recovery mode with the client family. This can happen during the
arrangement process, the actual services provided or even during
support and follow-up phases. Having the intentional conversation will
determine the core problem and will start the recovery process.
Funeral professionals must learn to ask the right questions, read the
body language of those they are communicating with in order to
determine the real issues that hinder a positive experience.]

As the Board found in Graystone Consulting, this specimen does not show the
requisite “direct association” between the applied-for mark and Applicant’s
“business training consultancy services.” Applicant is using “Intentional
Conversation” as a topic indicator or chapter heading and, in the text, to describe
the type of conversation between Applicant’s customer and that customer’s client, as
is evident from the use of the term in lower case letters (“Having the intentional
conversation…”). Nothing associates the designation as being the source of business
training consultancy services, or as a trademark for such services. Although the
specimen describes Graystone Associates as offering business strategies and tools
for a purchaser to become a premier funeral service provider through training and
consulting, this sentence does not create a direct connection between these services
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and the term “Intentional Conversation,” which appears as a subtitle below it.
Rather, it is “Graystone Associates” that would be viewed as the source of such
services. The text following “Intentional Conversation” makes clear that this term is
not used to identify the source of business training consultancy services, but rather
references a type of communication. 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”).
We agree with the Examining Attorney that none of Applicant’s specimens
shows INTENTIONAL CONVERSATION in a source-identifying manner for the
identified business training consultancy services, but only as a topic or subject
matter of a presentation. Accordingly, the specimens are unacceptable to show use
of the applied-for mark for the identified services.
Decision: The refusal to register Applicant’s mark INTENTIONAL
CONVERSATION is affirmed.