Capital Project Manage-ment, Inc.v.IMDISI, Inc.

Trademark Trial and Appeal Board

Jul 30, 2003

No. 91121819 (T.T.A.B. Jul. 30, 2003)

Hearing: Paper No. 13
March 5, 2003 TJQ
Mailed:7/30/03
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Capital Project Management, Inc.
v.
IMDISI, Inc.
_____
Opposition No. 121,819
to application Serial No. 75/474,121
filed on April 24, 1998
_____
Nicholas Guarente and Mark A. Garzia of the Law Offices of
Mark Garzia for Capital Project Management, Inc.
Camille M. Miller and Brian J. Urban of Cozen O’Connor for
IMDISI, Inc.
______
Before Hanak, Quinn and Rogers, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by IMDISI, Inc. to
register the designation TIA for “investigation of problems
experienced on construction projects using a technique which
analyzes the effect of a particular event on schedulized
activities.”1
1 Application Serial No. 75/474,121, filed April 24, 1998,
alleging first use anywhere and first use in commerce in October
1981. The application was originally filed by MDC Systems, Inc.
An assignment of the application to the above-named applicant was
THIS DECISION IS CITABLE
AS PRECEDENT OF THE
TTAB
Opposition No. 121,819
2
Registration has been opposed by Capital Project
Management, Inc. on the ground that the designation TIA,
when used in connection with applicant’s services, is
generic or merely descriptive thereof.2
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by each party; discovery depositions and
applicant’s responses to opposer’s discovery requests
(interrogatories and requests for admissions), introduced by
way of opposer’s notices of reliance; and discovery
recorded in the Assignment Branch records of the Office on April
19, 2000 at reel 2069, frame 0798. In view thereof, IMDISI, Inc.
is substituted as the party defendant in this proceeding. It
should be noted, however, that references in this decision to
“applicant” mean MDC Systems, Inc.
2 To the extent that there is any confusion regarding the issues
in this case, it is clear that the issues are genericness and
mere descriptiveness under Section 2(e)(1) of the Trademark Act.
Applicant, in its brief, lists the above issues as well as a
third issue, namely likelihood of confusion under Section 2(d).
A review of the notice of opposition shows the following
allegation as paragraph 14:
The use of the mark TIA by Applicant on the
services specified in Application Serial
No. 75/474,121 is likely to cause
confusion, mistake or deception such that
consumers will believe that Opposer’s use
(and the use by others in the construction
management trade) of Time Impact Analysis
techniques in their daily business are
actually techniques that belong to, or
originate from, the Applicant.
It is clear from the trial in this case and the arguments in the
brief and at the oral hearing that opposer is not claiming any
proprietary rights in the designation TIA, and that the above
pleading is part of its claim under Section 2(e)(1).
Opposition No. 121,819
3
depositions, and opposer’s responses to applicant’s
discovery requests (interrogatories and requests for
admissions) made of record by applicant’s notice of
reliance.3 The parties filed briefs, and both were
represented by counsel at an oral hearing before the Board.
The record in this case is voluminous, with thousands
of pages of testimony and hundreds of pages of exhibits.
The deposition testimony is replete with objections, most of
them entirely unnecessary. It is obvious, from a review of
the record and the briefs, that this litigation has been
overly contentious. The clashes between counsel contributed
nothing in advancing the merits of this case. Be that as it
may, before turning to the merits, we first direct our
attention to some evidentiary objections which applicant has
maintained in its brief.
The first objection involves applicant’s attempt to
strike the expert witness testimony of Thomas Driscoll and
Walter Cosinuke.4 According to applicant, these witnesses
3 Applicant also submitted with its notice of reliance documents
produced by opposer in response to applicant’s document
production requests. However, documents produced in response to
document production requests may not be made of record by way of
notice of reliance. See: Trademark Rule 2.120(j)(3)(ii). In
this instance, however, opposer essentially has treated the
documents to be of record and, accordingly, we deem them to be
stipulated into the record. (It is further noted that many of
the produced documents were also identified as exhibits during
testimony.) In sum, all of the involved documents have been
considered by the Board.
4 Messrs. Driscoll and Cosinuke also were offered as fact
witnesses by opposer.
Opposition No. 121,819
4
“were unqualified to render expert opinion as to the issues
of registrability of the TIA service mark, and their
testimony was not scientific, technical or specialized, nor
based on reliable principles and methods to qualify as
admissible expert testimony.” (brief, p. 18)
The record shows that Messrs. Driscoll and Cosinuke
have numerous professional accreditations, accomplishments
and overall experience in the construction management field.
Although neither witness has ever testified in a trademark
case, that fact hardly diminishes their expert knowledge in
the construction management field wherein opposer claims the
subject mark to be generic or merely descriptive. Neither
witness received any compensation for his testimony.
Mr. Driscoll indicated that he has testified as an
expert in at least twenty construction claim cases at the
state and federal levels, and that he has appeared before
arbitration panels and a jury. In addition, Mr. Driscoll is
a member of the American Arbitration Association Panel of
Construction Arbitrators, and he has been an arbitrator on
3-4 occasions. Over a period of forty years, Mr. Driscoll
has taught numerous classes and given presentations on
scheduling techniques, and has been involved in authoring
parts of three books on the subject. Mr. Driscoll has been
involved in scheduling analyses for numerous projects,
including Denver International Airport and the Chunnel.
Opposition No. 121,819
5
Although Mr. Cosinuke is testifying in this case as an
expert for the first time, he is now retired after a long
career in the construction management field. During his
career, Mr. Cosinuke taught at almost 200 seminars and
workshops (exhibits show Mr. Cosinuke scheduled as a speaker
on the Critical Path Method5 dating back to the early
1960’s), and was involved in construction schedule analyses
of projects such as the World Trade Center and the Apollo
moon program (Vehicle Assembly Building, and launch
complexes). A representative list shows that Mr. Cosinuke
and his company have been involved in many “mega projects”
(i.e., at least $1 billion).
Accordingly, we find that both individuals qualify as
experts in the construction management field, specifically
with respect to claims analysis of time delays in
construction schedules. In reading their testimony, we have
not, of course, considered them to be experts in trademark
law, and any opinion relating to the ultimate question of
law in this case has been given no weight. See, e.g., Harjo
v. Pro-Football Inc., 50 USPQ2d 1705, 1718 (TTAB 1999); and
Medtronic, Inc. v. Medical Devices, Inc., 204 USPQ 317, 325
(TTAB 1979).
Applicant also has lodged numerous objections, grounded
on hearsay and lack of proper foundation, to testimony about
5 See explanation of the Critical Path Method, infra.
Opposition No. 121,819
6
certain documents. Suffice it to say, in reviewing the
record, that we have accorded this testimony whatever
probative weight it merits.
Applicant further has objected to opposer’s “imputing
particular knowledge to Applicant through discovery
deposition testimony from officers and directors of
Applicant that were not produced to testify on behalf of
Applicant.” (brief, p. 21) After reviewing the testimony
of the three individuals called by opposer’s notices of
deposition, it is readily apparent that Robert McCue
(applicant’s president), James McKay (applicant’s executive
vice president) and William Wheatley (chairman of a
subsidiary of applicant), officers and shareholders of
applicant, all possess personal knowledge of many aspects of
applicant’s business activities, including those relating to
applicant’s use of the designation TIA. Given their
intimate knowledge of applicant’s business, we find it
appropriate to impute their knowledge to applicant. That
applicant did not call these individuals as witnesses does
not undermine the probative value of their testimony during
discovery depositions noticed and taken by opposer. As the
rules clearly allow for the introduction at trial, by notice
of reliance, of discovery depositions a party takes of its
adversary, there can be no question that such depositions
Opposition No. 121,819
7
are an acceptable method for gathering evidence for trial.
See: Trademark Rule 2.120(j).
In sum, we have considered all of the testimony and
related exhibits, as well as all of the other evidence, in
reaching our decision, according each item whatever
probative value it merits. In doing so, we also note that
applicant, in some instances, has relied upon certain
evidence to which it has objected (see, for example,
applicant’s notice of reliance on the D’Onofrio testimony
with exhibits identified and introduced during the
deposition). In these instances, the objection is deemed to
have been waived.
We now turn to the merits of the opposition.
The Parties
Opposer is a consulting firm engaged in providing
claims analysis, expert witness services, construction
project management oversight services, and project
scheduling services. In the words of Michael D’Onofrio,
opposer’s president, “[b]asically, we are consultants to the
construction industry.”
IMDISI, Inc. is a holding company for the intellectual
property rights of the original applicant, MDC Systems, Inc.
(hereinafter “MDC”). MDC, like opposer, is engaged in the
construction project and management consulting field,
offering, inter alia, management of problem projects,
Opposition No. 121,819
8
preparation of contract claims, and claims prevention,
mitigation and resolution services. In addition to the
present application, applicant filed an application to
register the term TIME IMPACT ANALYSIS, Serial No.
75/474,122. The applications were filed on the same day and
identify the services in an identical manner, namely
“investigation of problems experienced on construction
projects using a technique which analyzes the effect of a
particular event on schedulized activities.”6
Applicant’s website (www.mdcsystems.com) shows the
following use, which is representative of other uses in
applicant’s promotional materials: “Time Impact Analysis.
TIA is a court-accepted schedule analysis technique created
by MDCSystems. Coupled with the application of legal
principles, TIA provides a means for equitably apportioning
time-related construction disputes.”7
Overview of Schedule Analysis
The parties both specialize in some of the same areas,
including analysis of the impact of time delays on the
schedules of construction projects. Construction claim
6 Application Serial No. 75/474,122 was amended to seek
registration on the Supplemental Register. In that application,
the Examining Attorney issued a final refusal grounded on
genericness and applicant filed an appeal. A check of Office
records shows that the appeal was dismissed due to applicant’s
failure to file an appeal brief, and the application was deemed
abandoned on June 10, 2003.
7 The literature includes a claim that “Time Impact Analysis” and
“TIA” are service marks of applicant.
Opposition No. 121,819
9
disputes often involve allegations of impact and delay.
Time delays obviously can result in legal claims, and there
are a variety of methods to determine or evaluate the impact
of delays on a specific project. Every construction project
has a schedule:
Time is a critical element in the
construction process. Gaining and
maintaining control of the time factor
is essential if you want to achieve the
goal of completing projects on time,
within budget, and in accordance with
the plans, specifications, and quality
expected. To attain this objective, it
is necessary for all parties involved in
a project to have a basic understanding
of scheduling and make a commitment to
plan and implement schedules
effectively. Such a commitment is vital
in order to cope with the complex
factors of inflation and escalation,
lack of materials, labor shortages,
multiple prime contracts, third-party
relationships, construction management
concepts, and frequent lack of controls.
In its practical use, a project
schedule is a warning device for
focusing attention on situations at the
stage where trouble is developing, but
still capable of being avoided with
prudent management, decisions, and
actions. In addition, the schedule is a
device for monitoring progress,
measuring progress, and, therefore, can
be used as a sword or shield in
presenting or refuting time extensions
and claims for extra cost.
Over the past three decades, the
importance of scheduling has increased
significantly...As a result, the use of
a schedule for legal purposes (sometimes
[ex] post facto) has become almost as
important to the success of a project as
the schedule is for planning and
Opposition No. 121,819
10
controlling the project during project
implementation.
Time Impact Analysis: A Key for Successful Proof of Delay
(Paper presented by Thomas J. Driscoll to the Fifth Annual
Construction Litigation Superconference, December 6, 1990).
It may become necessary to determine the cost of time
lost because of various types of delays encountered during
the life of a construction project, and that is where
schedules and their updating take on increased importance:
A construction project by its very
nature is dynamic. Plans and estimates,
no matter how carefully considered, are
bound to change as a result of
unexpected events. Strikes, unusually
bad weather, sudden material shortages,
unforeseen subsurface conditions, and
change orders are a few of the factors
that may result in a need to change the
project schedule. The project schedule
must continually reflect these changes
or become outdated and misleading. To
be successful, a schedule must be
accurate, and to be accurate, it must be
kept up-to-date and revised on a regular
basis. Indeed, the failure to update
the schedule can be fatal to the
contractor’s claim.
The periodic review of the project
schedule and daily progress is termed
updating. The object of updating the
schedule is to determine physical
progress to date, identify sequence
revisions and duration changes, and thus
provide a complete and accurate report
of how well the actual construction
progress compares with the established
schedule. In addition, its purpose is
to determine how all parties intended to
continue the work and meet the overall
schedule objective.
*****
Opposition No. 121,819
11
Calculating the extent of delay can
best be accomplished through a process
called time impact analysis. This
procedure utilizes network schedule
techniques (fragnets) and an analysis of
the facts associated with each delay to
demonstrate the effect of specific
delays on the overall project schedule.
Many project specifications include
time impact analysis procedures...
When change orders, delays, or
problems do occur, a time impact
analysis should be prepared to document
the facts and circumstances and to
quantify the estimated delay and/or
impact on the project schedule...
Network schedule techniques have
great utility in evaluating delay and
impact on a project. These techniques
permit simultaneous proof of both the
fact and the cause of delay.
Accordingly, a time impact analysis can
be an effective tool for determining
whether or not certain work was delayed
and if it had an impact on the overall
project.
Proving and Pricing Construction Claims (2d ed. 1996).
Analysis of delays is directly related to a technique
called “Critical Path Method” (CPM) which is used to keep a
project schedule up to date by accurately indicating actual
performance and delays as they occur. A continuously
updated and revised CPM allows one to do an accurate
schedule analysis at any given point in the construction
project. The Critical Path Method is basically a graphic
presentation of the planned sequence of activities which
shows the interrelationships and interdependencies of the
Opposition No. 121,819
12
elements comprising a construction project. An
administrative tribunal with expertise in the field, the
Corps of Engineers Board of Contract Appeals, described in
detail the Critical Path Method as follows:
The CPM scheduling technique is one
which requires a breakdown of the entire
project into individual tasks and an
analysis of the number of days required
to perform each task. The analysis is
then programmed into a computer, which
produces a chart showing the tasks and a
line which controls the completion of
the overall work. The line through the
nodes, the junction points for
completion of essential tasks, is known
as the critical path. In addition there
are numerous side paths for subordinate
tasks, which normally can be performed
without affecting the critical path.
However, these subordinate tasks, if
improperly scheduled or unduly delayed
in performance, can on occasions become
critical and thus change the critical
path for the entire project.
The critical path method of scheduling
requires the logical analysis of all the
individual tasks entering into the
complete job and the periodic review and
re-analysis of progress during the
performance period. It is essential
that any changes in the work and the
time extensions due the contractor be
incorporated into the progress analysis
concurrently with the performance of the
changes, or immediately after the delay,
and thus integrated into the periodic
computer runs to reflect the effect on
the critical path. Otherwise, the
critical path chart produced by the
computer will not reflect the current
status of work performed or the actual
progress being attained.
Opposition No. 121,819
13
Continental Consolidated Corp. v. United States, ENG BCA
Nos. 2743, 2766, 67-2 BCA, PP 6624: 68-1 BCA PP 7003.8
As shown by the record, network analysis techniques,
such as Critical Path Method, were first introduced into the
construction field in the early 1960’s. Governments now
require network analyses on most, if not all, major
construction projects. The utilization of Critical Path
Method techniques to plan and schedule work has become the
accepted standard in the construction field. Boards of
contract appeals and courts have shown a willingness to
utilize such techniques to identify delays and their causes.
Jon M. Wickwire, Stephen B. Hurlbut and Lance J. Lerman,
“Use of Critical Path Method Techniques in Contract Claims:
Issues and Developments 1974 to 1988,” Public Contract Law
Journal, (March 1989).
One of the techniques which has its foundation in
Critical Path Method principles is referred to as “time
impact analysis.” According to Mr. Driscoll, the technique
has “been around for ages” dating back to the early 1960’s;
the objective of such analysis is “to pinpoint, isolate, and
quantify any time impact associated with a specific issue
8 A copy of this decision was introduced into the record by
opposer. Generally, decisions of courts or other tribunals are
relied upon for legal principles, rather than for purposes of
establishing facts. Here, however, we find that the Board of
Contract Appeals has presented a succinct summary of factual
information found in materials or testimony otherwise properly of
record.
Opposition No. 121,819
14
and determine its time relationship to past or other current
delays.”
Genericness Analysis
A mark is a generic name if it refers to the class or
category of goods and/or services on or in connection with
which it is used. In re Dial-A-Mattress Operating Corp.,
240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H.
Marvin Ginn Corp. v. International Association of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
The test for determining whether a mark is generic is its
primary significance to the relevant public. Section 14(3)
of the Act; In re American Fertility Society, 188 F.3d 1341,
51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB
Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); and H.
Marvin Ginn Corp. v. International Association of Fire
Chiefs, Inc., supra. Evidence of the relevant public’s
understanding of a term may be obtained from any competent
source, including testimony, surveys, dictionaries, trade
journals, newspapers, and other publications. In re
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ
961 (Fed. Cir. 1985).
The Category of Services and the Relevant Public
In determining genericness, we must first identify the
category of services at issue. As noted above, applicant’s
services are identified as “investigation of problems
Opposition No. 121,819
15
experienced on construction projects using a technique which
analyzes the effect of a particular event on schedulized
activities.” Applicant’s Internet website indicates that
its analysis “provides a means for equitably apportioning
time-related construction disputes” and that analysis of
scheduling documents “allows assignment of causation and
quantification of delay.”
In this case, the category or type of services
identified in the involved application is clear: scheduling
analysis services for construction projects.
Also clear is the relevant public for these services.
In this case, the relevant public is highly sophisticated,
and would include engineers, architects, lawyers,
construction owners, contractors and other professionals in
the construction management field who purchase schedule
analysis services. The relevant public also would include
courts, boards of contract appeals, arbitrators and others
in the field who read or are concerned with schedule
analysis reports. This relevant public, comparatively small
in size, would be involved in some capacity with schedules
in construction projects (before, during or after). See:
The Loglan Institute Inc. v. The Logical Language Group
Inc., 962 F.2d 1038, 22 USPQ2d 1531 (Fed. Cir. 1992)[limited
size of relevant group]. Oftentimes, the construction
projects involve major corporations and governmental
Opposition No. 121,819
16
agencies. Mr. D’Onofrio testified that time impact analyses
can cost upwards of hundreds of thousands of dollars.
That brings us to the critical question in this case,
namely whether the designation “TIA” is understood by the
relevant public in the construction management field
primarily to refer to the class of scheduling analysis
services involving time impact analysis.
We find that opposer, as the party making the charge of
genericness, has proved its claim by a preponderance of the
evidence. Martahus v. Video Duplication Services Inc., 3
F.3d 417, 27 USPQ2d 1846, 1850 (Fed. Cir. 1993). In the
construction management field, “TIA” is synonymous with
“time impact analysis,” and the relevant public in the field
will know what “TIA” means.
Time Impact Analysis
We first examine the record with respect to uses of the
term “time impact analysis.” The record is replete with
such use in a generic manner to name a type or kind of
schedule analysis in construction projects.
O’Brien had been requested by the
Contracting Officer to prepare a time
impact analysis to determine how the
change proposals and extra work claims
had affected project completion...
(Appeal of NAB-Lord Associates, Postal
Service Board of Contract Appeals, 1984
PSBCA LEXIS 51, August 30, 1984)
Once construction is commenced, it may
be necessary to quantify the time impact
that may be caused by various types of
Opposition No. 121,819
17
delays encountered during a project.
Calculating the extent of delay can best
be accomplished through a process called
time impact analysis.
(Manual of Standards of Practice,
Construction Management Association of
America (1986))
“Time impact analysis” uses the updated
as-built schedule as the baseline to
evaluate any impact or delay to the
work.
(Construction Law Handbook (1999))
On March 9, 1993, Cogefar submitted a
time impact analysis to the FBOP setting
forth the events which had a significant
impact on the work to date and a
projection of how those events would
impact the contract completion date.
(Appeal of Cogefar-Impresit U.S.A.,
Inc., U.S. Department of Transportation
Board of Contract Appeals, 1997 DOT BCA
LEXIS 8, August 27, 1997)
Once a project is started, it becomes
necessary to determine the amount of
time impact that may be caused by the
various types of delays encountered
during the life of the project. A
suggested method for calculating the
extent of delay is the use of updated
(as-built) critical path method (CPM)
schedules in conjunction with a process
called time impact analysis...In recent
decades, the techniques of time impact
analysis have been used successfully on
projects to justify or refute time
delays.
(Jon M. Wickwire, Thomas J. Driscoll and
Stephen B. Hurlbut, Construction
Scheduling: Preparation, Liability, and
Claims, (1991))
The Time Impact Analysis technique is
most effective when required by the
contract as part of the scheduling
specification.
(Jon M. Wickwire, Stephen B. Hurlbut and
Opposition No. 121,819
18
Lance J. Lerman, “Use of Critical Path
Method Techniques in Contract Claims:
Issues and Developments 1974 to 1988”,
Public Law Contract Journal, (March
1989))
Calculating the extent of delay can best
be accomplished through a process called
Time Impact Analysis, which is a time
estimating procedure that utilizes
networking techniques to demonstrate the
effect of specific delays on the project
schedule.
(Thomas J. Driscoll, The Project
Schedule as a Tool, Sword and Shield,
paper prepared for The Corps Of
Engineers Network Analysis for
Executives Seminar, May 1984)
As to such third-party uses of the term as shown above,
applicant’s president, Mr. McCue, states that “I am aware of
some people using the term time impact analysis infrequently
because it is associated so closely with us that it is just
marketing for MDC every time they use it.” Mr. McCue adds,
“[I]t is my testimony now and forever more that we do it
right and other people are imitators and they do it wrong.
They use the name to bastardize the technique to make their
case, make their claim.” When asked to respond to other
uses of “time impact analysis” in the industry, applicant’s
executive vice president, Mr. McKay, said that “when a
competitor says he has performed a time impact analysis, he
means analysis of the time effect of some condition or
activity or event, and that is different and separate from
its cost impact or some other impact. It doesn’t mean that
Opposition No. 121,819
19
he has used the same methodology that we would use and given
it the same name.” While maintaining that the term is a
source identifier of services emanating from applicant, Mr.
McKay added that “[o]ther businesses in our line of work do
time impact analysis in the sense of the effect upon project
completion of an event or set of circumstances. They
characterize that as a time impact but it is not Time Impact
Analysis...I have seen other types of analysis than what I
just described submitted or incorporated into reports
prepared by other experts and identified as time impact
analysis but they used a different methodology. They used
the same name, they use the same identify term [sic], but it
is not Time Impact Analysis as we developed the procedure
and as we apply it.”9
The term “Time Impact Analysis” clearly is generic for
the category of services listed in applicant’s recitation.
It names a type or kind of service, and the relevant public,
including sophisticated attorneys, contractors and engineers
in the construction field, would perceive the term as
generic. The fact that the term often appears in print in
9 The comments of Messrs. McCue and McKay are not persuasive.
Although applicant asserts that it “is not looking to obtain a
trademark registration for any methodologies used...but rather
for the name of [applicant’s] specialized services,” one cannot
avoid genericness because there are minor differences in the way
that one’s product or service differs from the norm, or from
those of others. That is to say, while applicant’s “specialized”
services may be slightly different from the services of
competitors, the name of the category of applicant’s services is
still “time impact analysis.”
Opposition No. 121,819
20
initial capital letters, that is, “Time Impact Analysis,”
does not compel a different result.
TIA
The fact that the term “time impact analysis” is
generic does not, however, end the inquiry in this case.
That is to say, it does not necessarily follow that the
initial letters of the generic term are recognized as being
substantially synonymous with “time impact analysis.”
Whether the initials for this generic term should also be
deemed generic presents a separate, yet related issue. In
determining this issue, we must examine whether the letters
“TIA” are generally recognized and used in the construction
field as an accepted abbreviation for “time impact
analysis.”
An abbreviation or initialism of a generic name which
still conveys to the relevant public the original generic
connotation of the abbreviated name is still generic.
Acronyms and initialisms are often used interchangeably with
the full generic name and recognized as equivalent. The
predecessor to our primary reviewing court had occasion to
deal with this issue in the case of Modern Optics, Inc. v.
Univis Lens Co., 234 F.2d 504, 110 USPQ 293 (CCPA 1956). In
that case, involving the registration of the letters CV as a
trademark for ophthalmic lens blanks, the Court stated:
The letters “CV” are, of course, the
initial letters of the words “continuous
Opposition No. 121,819
21
vision,” and it is possible for initial
letters to become so associated with
descriptive words as to become
descriptive themselves. [citations
omitted] It does not follow, however,
that all initials or combinations of
descriptive words are ipso facto
unregistrable. While each case must be
determined on the basis of the
particular facts involved, it would seem
that, as a general rule, initials cannot
be considered descriptive unless they
have become so generally understood as
representing descriptive words as to be
accepted as substantially synonymous
therewith.
Id. at 295. See also, e.g., Southwire Co. v. Kaiser
Aluminum 7 Chemical Corp., 196 USPQ 566 (TTAB 1977); and
Intel Corp. v. Radiation Inc., 184 USPQ 54 (TTAB 1974). See
generally: J.T. McCarthy, McCarthy on Trademarks and Unfair
Competition, §12:37 (4th ed. 2001).
We thus turn to examine the uses of “TIA” revealed by
the record. Numerous examples of such uses have been
introduced, and a representative sample appears below.
WHI’s current Time Impact Analysis (TIA)
concludes that cell partitions are
causing critical path delays to
Substantial Completion of the Project.
(Time Impact Analysis (TIA) re Cell
Partitions and Security Windows on
Federal Detention Center Brooklyn, New
York for Morganti/Trataros, Joint
Venture, November 6, 1996)
To assess the delays that caused and
otherwise contributed to the untimely
completion of the PAX, [opposer]
undertook a series of Time Impact
Analyses (TIA). The TIA is a schedule
analysis technique that allows the
Opposition No. 121,819
22
assessment of delay in a manner that
closely proximates the actual progress
of the work...As of TIA #1, 6 May 1996,
Angelini had lost 52 days along the
critical path of the plan...Angelini’s
contemporaneous schedule update with
data date 30 June 1996 is most current
with the status date of TIA #2...despite
a one and a half month delay to the
critical path of the project during the
period of TIA #3...
(Schedule Analysis re Mobility Passenger
Processing Center, Dover Air Force Base
(December 1999))
The schedule analysis for a particular
time period is referred to in this REA
as a Time Impact Analysis (TIA). The
TIAs were performed in chronological
order, at significant dates during
contract performance. Each TIA includes
an as-built schedule from the status
date forward based on AEL’s
contemporaneous planned schedule. Each
TIA schedule was compared with the
summary as–planned schedule, and with
the previous TIA, in order to determine
controlling and noncontrolling delays,
and concurrency among these delays.
(ECM Aircraft Electronic Combat Trainer,
AEL Industries, Inc.’s Request for
Equitable Adjustment, May 9, 1995)
Time Impact Analysis (TIA) is a schedule
analysis technique designed to identify
and quantify schedule impacts
contemporaneously through an analysis of
the status of the project at certain
critical points during the course of
construction.
(Schedule and Damages Analysis in
Construction Contract Disputes, CLE
International, (The Holloway Consulting
Group, LLC, September 1997) at
www.hollowayllc.com)
Project Management, CPM Schedule
Analysis, Cost Evaluation, TIA Time
Impact Analysis Claims & Negotiation
Preparation
Opposition No. 121,819
23
(Jacobs Consultant Services website
accessed at www.firms.findlaw.com)
Time Impact Analysis shall be used by
the Contracting Officer in determining
if a time extension or reduction to the
contract milestone date(s) is
justified...Each TIA shall include...
(Department of the Navy, General
Requirements, Network Analysis Schedules
September 30, 2000))
Contractors shall be required to provide
an accurate Time Impact Analysis (TIA)
using the CPM schedule to justify any
time adjustment. It is imperative that
the CPM provision is enforced for any
contractor request by requiring a
TIA...the TIA shall be contractor-
submitted and engineer-accepted.
(Construction Program Procedure
Bulletin, State of California Department
of Transportation (January 2001))
The Revised Quantum claim was based on a
Time Impact Analysis (“TIA”)...it
submitted its TIA on October 9, 1998, to
the CO, and “[t]hat TIA qualified and
revised the number of impacted days the
Brero was claiming against the
Respondent.”
(Brero Construction, Inc., U.S.
Department of Labor Board of Contract
Appeals (March 29, 2000))
The time impact analysis (TIA) was
developed to enable the parties to
assess a contractor’s right to receive a
time extension in a real-time manner and
to provide the ability for the parties
to resolve disputes prior to an
exhaustive after-the-fact analysis
reconstructed upon completion of the
project...The TIA is a chronological and
cumulative method to analyze delay...The
TIA has been widely accepted and has
significant merit.
(Jon M. Wickwire and Stuart Ockman, Use
of Critical Path Method on Contract
Opposition No. 121,819
24
Claims--2000, The Construction Lawyer,
(October 1999))
Time Impact Analysis (TIA)—Approach—
Advantages—Disadvantages—Case Studies
CPM Scheduling: Changes and Dispute
Resolution
(www.fedpubseminars.com)
Each request for a time extension based
on claimed delays or changed work was to
be accompanied by a time impact analysis
(TIA), based upon the date or dates when
changes were issued or delays
began...With respect to the TIAs, the
contract explicitly requires...
(Board of Contract Appeals, General
Services Administration, SAE/Americon--
Mid Atlantic, Inc. v. General Services
Administration, (October 23, 1998))
The record also includes excerpts from a manual and a
print-out version of a Power Point presentation for the
“Student’s Training Manual” in Advanced Schedule Training
prepared for the Naval Facilities Engineering Command in
July 2001. The manual includes the following statements:
“The Contractor shall submit a Time Impact Analysis (TIA)
illustrating the influence of each change or delay on the
Contract Completion Date or milestones...Each TIA shall
include a Fragmentary Network (fragnet) demonstrating how
the Contractor proposes to incorporate the impact into the
Project Schedule.” The Power Point presentation indicates
that “Time Impact Analysis” is a widely recognized and
accepted technique to demonstrate the effects of a specific
delay on a project schedule. Beginning with the seventh
slide of the presentation until the conclusion, just the
Opposition No. 121,819
25
initialism “TIA” is used, as for example, “TIAs work most
effectively if regular schedule updates are performed.”
Also of record is a purported expert report and cover
letter (D’Onofrio dep., Ex. No. 25). The report was
prepared in connection with other litigation, by an
individual not associated with either of the two parties
herein. Jay Pandya asserts, in the cover letter to opposer
dated January 23, 2001, that he has been using the
terminology “Time Impact Analysis” and “TIA” since 1980.
The September 27, 1995 report, prepared in connection with
claims submitted on a Lake Michigan filtration plant, is
replete with references to both “Time Impact Analysis” and
“TIA.”
The above uses are consistent: in many printed
publications, papers and the like, the first use of this
specific type of scheduling technique is identified by the
designation “Time Impact Analysis (TIA).” Subsequent uses
within the same article or paper are of “TIA.” Mr.
D’Onofrio testified that “[a]s I do with many technical
terms, the first time I write it, such as time impact
analysis, in order to not keep repeating time impact
analysis throughout the paper or report, I would put an
acronym for that, and the common acronym associated with
time impact analysis is TIA. So I would use it by putting
TIA in parenthesis after the first time I used time impact
Opposition No. 121,819
26
analysis and throughout the rest of the report I would use
TIA in place of time impact analysis. I also think that is
how it is commonly used in the industry...” Mr. D’Onofrio
also stated the obvious, that it is just easier to write out
“TIA” and say “TIA” in oral presentations. He also
indicated that he has provided expert testimony in court
cases and that the reports “that I have written and others
in our firm have written, contain the term time impact
analysis and generally in those reports we have put the
acronym TIA in parentheses behind it and used that
throughout the report and also on the graphics.” Mr.
Wheatley seconded this view when he stated: “It is common
practice in writing articles to use acronyms or
abbreviations for terms in such a way that the term is just
introduced with the acronym in parenthesis after it and then
the acronym is used thereafter.” Further, Mr. D’Onofrio
stated that “we don’t distinguish between the long and the
short version.” See: In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 219 (CCPA 1978)[Rich, J.,
concurring, noting that “the users of language have a
universal habit of shortening full names--from haste or
laziness or just economy of words.”].
The Seventh Circuit, in finding that “L.A.” was a
descriptive abbreviation for the descriptive words “low
alcohol,” made the following observation:
Opposition No. 121,819
27
It is possible, although not likely,
that the public might become acquainted
with initials used in connection with a
product without ever being aware that
the initials were derived from, and
stood for, a descriptive phrase or
generic name. This is conceivable,
though rather improbable, because the
connection between the initials and the
descriptive words is in normal course
very likely to become known. The
process of identifying initials with the
set of descriptive words from which they
are derived is, after all, usually
fairly simple. Ordinarily, no flight of
imagination or keen logical insight is
required. There is a natural assumption
that initials do generally stand for
something. All that needs to be done is
to convert the next-to-obvious to the
obvious by answering the inevitable
question: What do the initials stand
for? [citations omitted] As a rule, no
very extensive or complicated process of
education or indoctrination is required
to convey that initials stand for
descriptive words...[T]here is a heavy
burden of a trademark claimant seeking
to show an independent meaning of
initials apart from the descriptive
words which are their source...[A]s a
practical matter, initials do not
usually differ significantly in their
trademark role from the descriptive
words that they represent.
G. Heileman Brewing Co. v. Anheuser-Busch, Inc., 873 F.2d
985, 10 USPQ2d 1801, 1808-09 (7th Cir. 1989).
As noted above, we have accepted Mr. Driscoll as an
expert in schedule analysis in the construction management
field. When he was asked who coined the term “Time Impact
Analysis,” he responded “You’re probably looking at him, but
I’m not going to claim it.” Throughout his testimony, Mr.
Opposition No. 121,819
28
Driscoll reiterated his view that “Time Impact Analysis” and
“TIA” are widely used industry terms--“[i]t is just so
routine in the industry.” Although Mr. Driscoll indicated
that he uses the full term “Time Impact Analysis” in his
writings, “[t]o me, TIA is Time Impact Analysis. I refer to
it all the time. If you were in my classes, you would know
what it is real quick.” At one point, Mr. Driscoll stated:
“To me TIA is Time Impact Analysis; they are interchangeable
as far as I am concerned.” Mr. Cosinuke, with long-time
experience in the field, weighed in with the same view, and
indicated that the letters “TIA” connote “Time Impact
Analysis.”
Mr. McCue, while maintaining that both designations are
proprietary to applicant, also responded “[p]ossibly” to the
question whether he considered “Time Impact Analysis” and
“TIA” to be interchangeable. When asked if “TIA” ever meant
“Time Impact Analysis,” he responded “[i]t may.” He went on
to indicate that “sometimes on our schedule graphics we
would use shorthand notations when we are doing a series of
analyses and when we may put TIA in those cases rather than
using the words Time Impact Analysis #1 or #2.” Mr. McKay,
another of applicant’s officers, indicated that “TIA” stands
for “Time Impact Analysis” when used “in the context of
schedule analysis” and when asked if the terms were
interchangeable, Mr. McKay answered “[I]n the same context I
Opposition No. 121,819
29
would say so.” Mr. McKay also noted that “the term TIA in
the context of construction schedule analysis frequently
refers to Time Impact Analysis, but I would not say that is
exclusive.” When asked what other meanings TIA might have
in the field, Mr. McKay responded “I have no idea.”
The record also shows an almost complete failure on
applicant’s part, in the face of generic uses of “TIA” by
others in the field, to police its purported rights in the
designation “TIA.” See, e.g., King-Seeley Thermos Co. v.
Aladdin Industries, Inc., 321 F.2d 577, 138 USPQ 349, 350-51
(2d Cir. 1963).
Based on the extensive record in this case, we conclude
that the initialism “TIA” has become so generally understood
as representing the generic term “time impact analysis” as
to be accepted as substantially synonymous therewith.
In so finding, we recognize that the only uses of “TIA”
per se in printed materials are after an initial use of
“Time Impact Analysis (TIA),” but we do not believe that
this fact warrants a finding that the initials themselves
are registrable. The size of the relevant public herein is
relatively small, owing to the highly sophisticated nature
of the services. Purchasers of such services, for example,
attorneys, contractors, engineers and the like, already are
quite knowledgeable in what they are seeking. We have no
doubt that “no flight or imagination or keen logical insight
Opposition No. 121,819
30
is required” of them in perceiving that the initials “TIA”
are the generic equivalent of the term “time impact
analysis.” See: G. Heileman Brewing Co. v. Anheuser-Busch,
Inc., supra at 1808. Likewise, boards of contract appeals
and others presented with “TIA” reports would immediately
understand the nature of the report. Given the
interchangeability of the letters and the term, the
initialism “TIA” will be perceived as the equivalent of the
generic term “time impact analysis.”
We conclude that “TIA” has been used by opposer and
others in or associated with the construction industry as
the generic initialism for the scheduling technique known as
“time impact analysis.” As such, it has fallen into the
lexicon of the language utilized in this field serving to
name a particular type or kind of schedule analysis rather
than a service emanating from a single source of such
services.
Asset Purchase Agreement
In support of its argument against the claim of
genericness, applicant has relied upon an asset purchase
agreement wherein, according to applicant, it purchased
proprietary rights in the involved mark from a third party.
Applicant contends that competitors and customers “attribute
TIA to applicant, and no one else” and that “MDC, through
its lineage of companies both under the MDC name and others,
Opposition No. 121,819
31
but through the same core of people and corporate assets, is
closely associated in the minds of others within this
specialty field by its TIA mark.”
Applicant claims to have obtained the trademark rights
to “TIA” from a predecessor in interest, namely Day &
Zimmerman International, Inc. (D&Z). According to
applicant, it purchased from D&Z all intellectual property
rights relating to D&Z’s construction claims business with
the exception of certain D&Z marks identified in the asset
purchase agreement between applicant and D&Z. Mr. McCue,
applicant’s president, maintains that he and a deceased
employee of D&Z are the only persons who would be aware of
the intentions of the parties to the agreement. Applicant
argues: “While D&Z did not file any applications to
federally register TIA or other marks, the fact that D&Z did
not object to any trademark applications filed by Applicant
after Applicant purchased the assets of MDC from D&Z, tells
us that the marks were indeed transferred as part of the
intangible intellectual property acquired by Applicant.”
(brief, p. 15). Of record is a copy of the February 24,
1997 Asset Purchase Agreement.10 The agreement refers to
transfer of the trade names “MDC” and “MDC Systems,” but the
agreement makes no mention of the designations “TIA” or
10 Although the agreement has been filed under seal, we see no
harm in disclosing the provisions specifically referred to in
this decision.
Opposition No. 121,819
32
“Time Impact Analysis.” Paragraph 15.0 of the agreement
provides as follows:
ENTIRE AGREEMENT. This Agreement sets
forth the entire understanding of the
parties hereto with respect to the
transactions contemplated hereby. It
shall not be amended or modified except
by written instrument duly executed by
each of the parties hereto. Any and all
previous agreements and understandings
between or among the parties regarding
the subject matter thereof, whether
written or oral, are superseded by this
Agreement.
Annex 1 to the agreement is captioned “Definitions,” and one
of the listed definitions is “Assigned Tradename.” The term
is defined as follows: “‘MDC’, ‘MDC Systems’, logos
including these names, and variants thereof. The tradenames
‘Day’, ‘Day & Zimmerman’, ‘D&Z’, ‘Yoh’, logos including
these names and variants thereof are expressly excluded from
any assignment of tradenames, trademarks or other
intellectual property made under the Agreement.”
Also of record is the testimony of James Goodman,
president and general counsel of D&Z, who appeared pursuant
to subpoena. Although Mr. Goodman indicated that he had no
personal involvement in or knowledge of the negotiations
leading to the agreement, he reiterated that the agreement
made no mention of either “TIA” or “Time Impact Analysis.”
In an e-mail exchange with applicant, introduced as an
exhibit to his testimony, he again stated that the subject
Opposition No. 121,819
33
designation “TIA” was not included in the agreement. Mr.
Goodman also testified that his view was based on a review
of the agreement and other documents in a file relating to
the agreement, and a “discussion I had with the attorney in
my department who was directly involved in the transaction.”
In a letter dated March 13, 2002 from Mr. McCue to
Harold Yoh, D&Z’s president, Mr. McCue essentially requested
Mr. Yoh to confirm that rights to designations such as “TIA”
and “Time Impact Analysis” were transferred to applicant.
Mr. McCue wrote: “In fact, during the negotiations between
myself, on behalf of [applicant], and Barry Beuchner [the
now deceased employee of D&Z], on behalf of the Day &
Zimmerman conglomerate, it was made clear that [applicant]
purchased all of the intellectual property of the claims
unit, but so that there was no misconceptions or
misinterpretations, the D&Z marks were specifically
identified in the parties’ Asset Purchase Agreement as not
being sold to [applicant] because this language in the
agreement prepared by Day & Zimmerman conglomerate was so
broad that it could be misinterpreted by third parties to
include the D&Z marks.” Mr. McCue goes on to request Mr.
Yoh to confirm that D&Z does not reserve any rights in “TIA”
or “Time Impact Analysis.” Upon such confirmation, Mr.
McCue writes that “we will gladly release the remaining
funds and complete the payment for these assets.”
Opposition No. 121,819
34
What is somewhat unusual about Mr. McCue’s request is
that applicant’s payments pursuant to the agreement already
were past due (see D&Z’s letter dated February 15, 2002).
Mr. Goodman responded in a letter dated March 28, 2003 which
reads, in part, as follows:
The approach you have taken in your
letter constitutes extreme bad faith on
your part. You are in possession of
funds owed in connection with the MDC
asset purchase that are more than one
year overdue, and you are now holding
them hostage for a document that you
apparently intend to use to support your
position in litigation before the U.S.
Patent and Trademark Office’s Trademark
Trial and Appeal Board--litigation in
which Day & Zimmerman is not a party.
The Asset Purchase Agreement dated February 24, 1997
speaks for itself: it did not cover transfer of rights, if
any, to the designations “TIA” or “time impact analysis.”
The fact that any such rights were not conveyed comes as no
surprise inasmuch as it is apparent that D&Z never claimed
proprietary rights in either designation. Employees (both
former and current) of D&Z who testified in this case
indicate that D&Z never claimed exclusive rights in the
term. Even James McKay, applicant’s executive vice
president (and a former employee of D&Z), when asked if D&Z
ever claimed that “time impact analysis” or “TIA” were
proprietary terms, replied “not to my knowledge.” There is
neither testimony nor a single exhibit which suggests that
Opposition No. 121,819
35
D&Z ever claimed exclusive rights in “TIA” or “time impact
analysis,” and, thus, that D&Z was conveying any proprietary
rights in the designations.
We would point out that, in any event, even if D&Z had
claimed proprietary rights in “TIA,” and even if the
agreement had conveyed such purported rights to applicant,
this would not be dispositive or even particularly probative
evidence on the genericness issue. Whatever the intention
of applicant and the assignee may have been regarding
whether “TIA” is a trademark, that fact simply does control
our analysis. We must assess the meaning of “TIA” to the
relevant public, regardless of how D&Z and applicant may
have treated “TIA” in their dealings with each other.
Additional Arguments
Applicant’s recent registration of the mark TIME IN
ACTION for “consulting services in the field of construction
management; arbitration, alternative dispute resolution and
litigation support services; consulting services in the
field of arbitration, alternative dispute resolution and
litigation support services; consulting services in the
field of construction project problem solutions which
analyzes the effect of a particular event on scheduled
activities”11 is not persuasive of a different result.
11 Application Serial No. 76/295,830, filed August 6, 2001,
alleging a bona fide intention to use the mark in commerce. The
Opposition No. 121,819
36
Applicant essentially argues that the designation “TIA” may
also be an initialism for this mark.
A few comments are in order. First, the underlying
application was not filed until seven months after
commencement of this proceeding. When Mr. McKay was asked
in October 2001 “What is Time in Action?”, he responded:
“It sounds to me like some sort of procedure or process; I
don’t know, I’m not familiar with the term.” Simply put, it
is not likely that prospective purchasers would perceive
“TIA” as an initialism for TIME IN ACTION rather than “time
impact analysis.” Given the particular circumstances and
timing of the filing, it is disingenuous to suggest
otherwise.
Applicant argues that the letters “TIA” have other
meanings in other fields, as for example, “transient
ischemic attack” in the medical field. Suffice it to say,
the issue must be determined in the context of the specific
field in which applicant’s services are rendered. These
other meanings are irrelevant when determining the
genericness of the letters when used in connection with
applicant’s specific services. When Mr. Wheatley was asked
whether TIA ever gets used in connection with any phrase
other than “Time Impact Analysis” in the construction
application matured into Registration No. 2,676,834 on January
21, 2003, setting forth dates of first use of October 30, 2000.
Opposition No. 121,819
37
industry, he answered “not that I can recall.”
Mere Descriptiveness Analysis
In the event that the designation TIA ultimately is
found to be not generic, we turn to address the question of
mere descriptiveness. No claim of acquired distinctiveness
under Section 2(f) has been raised in this case by applicant
and, in response to the Board’s questioning at the oral
hearing, applicant acknowledged this point. Specifically,
counsel acknowledged that if the matter sought to be
registered were found to be merely descriptive, then no
registration would issue based on the involved application.
A mark is merely descriptive if, as used in connection
with the goods and/or services, it describes, i.e.,
immediately conveys information about, an ingredient,
quality, characteristic, feature, etc. thereof, or if it
directly conveys information regarding the nature, function,
purpose, or use of the goods and/or services. See: In re
Abcor Development Corp., supra; In re Eden Foods Inc., 24
USPQ2d 1757 (TTAB 1992); and In re American Screen Process
Equipment Co., 175 USPQ 561 (TTAB 1972). The issue is not
determined in a vacuum, but rather the mere descriptiveness
of the mark is analyzed as the mark is used in connection
with the goods and/or services. An abbreviation of a
descriptive term which still conveys to the buyer the
descriptive connotation of the original term will still be
Opposition No. 121,819
38
held to be descriptive. Spin Physics, Inc. v. Matsushita
Electric Industrial Co., 168 USPQ 605 (TTAB 1970).
We find that the testimony and evidence establishes
that the designation TIA is, at a minimum, merely
descriptive when used in connection with applicant’s
services. Given the interchangeability of “TIA” and “time
impact analysis,” the letters immediately and directly
convey information about applicant’s services, that is, that
the services involve time impact analysis.
Decision
The opposition is sustained, and registration to
applicant is refused.