Executive Coaching Network, Inc.

Trademark Trial and Appeal Board

Jun 3, 2004

No. 76020606 (T.T.A.B. Jun. 3, 2004)

Mailed: June 3, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Executive Coaching Network, Inc.
________
Serial No. 76020606
_______
Marnie Wright Barnhorst of The Trademark Group for
Executive Coaching Network, Inc.
Michael E. Bodson, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______
Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
On April 6, 2000, Executive Coaching Network, Inc.
(hereafter "applicant") filed an application, based on an
asserted bona fide intention to use the mark in commerce,
for the mark STRATEGIC EXECUTIVE COACHING for services
which were subsequently identified as "educational
services, namely, conducting individual counseling
sessions, seminars and workshops which provide executives
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76020606
2
with information about business management."1 In the first
Office action the Examining Attorney, inter alia, required
a disclaimer of the merely descriptive words EXECUTIVE
COACHING, and when applicant complied with this requirement
the mark was published for opposition on October 16, 2001.2
On May 9, 2002, a letter of protest was forwarded to
the Examining Attorney by the Administrator for Trademarks
Classification and Practice, and jurisdiction over the
application was restored to the Trademark Examining
Attorney. Prior to that, however, a notice of allowance
issued on January 8, 2002, and applicant filed a Statement
of Use on April 9, 2002, in which it claimed first use
dates of September 1999 for its identified services.
On May 13, 2002 the Examining Attorney issued an
Office action in which he refused registration pursuant to
Section 2(e)(1), 15 U.S.C. 1052(e)(1), on the ground that
applicant's mark is merely descriptive of its services.
Applicant filed a notice of appeal on November 12, 2002 and
an appeal brief on January 16, 2003. Although the appeal
was initially instituted by the Board, upon further review
of the file it was determined that the appeal was
1 Application Serial No. 76020606.
2 The Examining Attorney also required a more definite
identification of services, and applicant also complied with this
requirement in its response.
Ser No. 76020606
3
premature. The Board order instituting the appeal was
vacated, and the Examining Attorney was instructed to treat
applicant's appeal brief as a response to the May 13, 2002
Office action. On February 13, 2003 the Examining Attorney
made the refusal of registration pursuant to Section
2(e)(1) final, and on May 9, 2003 applicant filed the
appeal which is now before us.
Applicant and the Examining Attorney have filed appeal
briefs. Applicant did not request an oral hearing.
As a preliminary matter, we note that in its response
to the first Office action raising the descriptiveness
refusal, and again in its brief, applicant has asserted
that the letter of protest, which was the basis for
restoring jurisdiction over the application to the
Examining Attorney, was untimely filed, and should never
have been considered. In making these assertions,
applicant apparently believed that the letter of protest
was filed on April 9, 2002, which was six months after the
application was published for opposition. However, in his
appeal brief, the Examining Attorney explained that the
letter of protest was actually submitted on October 31,
2001, within thirty days of the publication of the mark,
and it was therefore timely. The Examining Attorney has
Ser No. 76020606
4
further explained that the letter of protest was accepted
on May 9, 2002.
We must admit that we can find no indication in the
file as to the date the letter of protest was submitted to
the Office. This is not surprising, since when a letter of
protest is submitted it does not form a part of the
application file to which it pertains. Rather, if the
Administrator for Trademark Classification and Practice
grants the letter of protest, the Examining Attorney is
informed that such a letter was filed, and any pertinent
evidence that is submitted with the letter of protest is
forwarded to the Examining Attorney. However, the
Examining Attorney is not given the actual letter of
protest, and therefore the date of receipt of the letter of
protest does not appear in the file. In this case, the
memorandum from the Administrator for Trademark
Classification and Practice transmitting the letter to the
Examining Attorney is dated May 9, 2002. The April 9, 2002
date to which applicant refers in its brief appears to be
the date applicant filed its Statement of Use.
In any event, the timeliness of the filing of the
letter of protest is not a question for the Board. If
applicant wished to raise the issue of the propriety of the
granting of the letter of protest, it should have done so
Ser No. 76020606
5
by way of petition to the Commissioner. This is not an
issue for appeal. See TBMP §1201.05.
Another procedural matter concerns the Statement of
Use filed by applicant on April 9, 2002. Applicant filed
its Statement of Use three months after the mailing date of
the Notice of Allowance, and one month prior to the grant
of the letter of protest and the restoration of
jurisdiction to the Examining Attorney. However, the
Notice of Allowance was cancelled on May 13, 2002, at the
point that the letter of protest was granted and
jurisdiction was restored to the Examining Attorney. At
that point the Statement of Use had not been examined.
Thus, should applicant ultimately prevail in this
proceeding, the file will be returned to the Examining
Attorney to examine the Statement of Use.
This brings us to the substantive issue in this
proceeding: whether or not applicant's mark STRATEGIC
EXECUTIVE COACHING is merely descriptive of its identified
services, "educational services, namely providing
executives with information about business management."
A mark is merely descriptive, and therefore prohibited
from registration by the provisions of Section 2(e)(1), if
it immediately conveys knowledge of the ingredients,
qualities, or characteristics of the goods or services with
Ser No. 76020606
6
which it is used, while it is suggestive, and registrable,
if imagination, thought or perception is required to reach
a conclusion on the nature of the goods or services. See
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987). The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of a product or
service. The question is not decided in a vacuum but in
relation to the goods on which, or the services in
connection with which, it is used. In re Venture Lending
Associates, 226 USPQ 285, 286 (TTAB 1985). See also In re
Abcor Development Corporation, 588 F.2d 811, 200 USPQ 215
(CCPA 1978).
Applicant has acknowledged the descriptiveness of
EXECUTIVE COACHING by disclaiming exclusive rights to this
term. Moreover, applicant's own specimens, submitted with
its Statement of Use, amply demonstrate the descriptiveness
of this phrase:
EXCN's accomplished executive coaches
focus vast corporate experience on
improving business performance....
STRATEGIC EXECUTIVE COACHING
Provides one-on-one coaching to
executives in areas they have
identified as vital to their
effectiveness....
Ser No. 76020606
7
Additional materials which were provided through the
letter of protest, and made of record by the Examining
Attorney, indicate the highly descriptive, if not generic
nature of this term. For example, the biographies that are
shown in the website for Assess Plus Affiliate Consultants,
www.assessmentplus.com, frequently describe the personnel
as having an expertise in executive coaching:
Arline N. Berman has over 18 years
experience in organizational
development, strategic planning,
performance management, outplacement,
and executive and business coaching.
Robert David Lapidus...has implemented
interventions including executive
coaching....
Dr. Joy McCarthy...has designed and
implemented programs in executive
coaching....
William R. Tiffan...blends consulting,
training, executive coaching and
facilitation services....
The materials from Cambria Consulting use "executive
coaching" in a generic manner, e.g., "Executive coaching
grew substantially..." and "The number of organizations
engaged in executive coaching...."
Even two articles which applicant states were written
by its own officers use "executive coaching" generically,
e.g.:
Ser No. 76020606
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The rapid growth of executive coaching
reflects its bottom-line benefits...
Freas, Alyssa M. and Mankin, Don,
"Strategic Coaching has Bottom-Line
Benefits," www.aesc.org
To be effective, executive coaching
must be both strategic and
individualized....
Id.
To engage and motivate individuals,
executive coaching must be tailored....
Id.
To the casual observer, the practice of
executive coaching...
Lyons, Laurence S., "Coaching at the
Heart of Strategy,"
www.coachingnetwork.org.uk, p. 2
The second insight to be gained takes
us beyond executive coaching.
Id.
Yet, an organization that regards
executive coaching as a service
provided entirely by external suppliers
can never attain a true climate of
leadership.
Id.
The Examining Attorney has also submitted evidence to
show that applicant's mark as a whole, STRATEGIC EXECUTIVE
COACHING, is merely descriptive. This evidence includes
the material which was included with the letter of protest.
Applicant has argued that these excerpts do not show
descriptive use, and has discussed each of these excerpts
in some detail. We will do the same.
Ser No. 76020606
9
The first excerpt is from www.springboardcoaching.com,
which is apparently the website of SpringBoard Coaching
Group LLC. Under the general heading "Executive Coaching
Programs" is the phrase, "Discover your success formula
with a coaching program designed for you," which is in turn
followed by the listing:
Strategic Executive Coaching
Jump Start Development
High Potential Leader Development
There is a subheading for the "Strategic Executive
Coaching Program," and then a description of the program,
which states that it is "Designed to provide the executive
with ongoing support of strategic and tactical professional
and personal goals," and goes on to say, "This traditional
coaching program focuses on your professional and personal
goals...."
Applicant claims that "Strategic Executive Coaching
Program" is not a descriptive use, but a common law
trademark use that may be infringing on applicant's rights.
We do not agree. Rather, it appears to be a descriptive
name for a particular coaching program, which is used in
the same way as the phrase "Jump Start Development Coaching
Program" is used for a program for "Individuals who want to
jump-start skill development" and the phrase "High-
Potential Leader Development Program" is used for a program
Ser No. 76020606
10
"designed to accelerate the progress of high-potential
managers and executives" which "coaching program is
designed to develop key leadership competencies necessary
to move the senior manager or executive to the next
position."
The material from www.assessmentplus.com lists what
appear to be the biographies of "Affiliate Consultants" for
Assessment Plus. The biography of Jill Davis, who is
described as "an experienced strategic planner" "who has
transitioned to executive coaching" states that she is a
"Senior Associate of the Strategic Executive Coaching
Alliance and partners with that experienced team of
corporate coaches on larger scale engagements." Again,
applicant asserts that Strategic Executive Coaching
Alliance is a "probably infringing" common law trademark
use. Even if Strategic Executive Coaching Alliance is the
name of a group or organization, this does not necessarily
mean that the phrase "Strategic Executive Coaching" is not
merely descriptive. The biographies are replete with the
use of descriptive terms within or as the names of
organizations. For example, the biography of Kathryn
Hayman says that she is a member of the Society of Human
Ser No. 76020606
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Resource Management,3 and the biography of Dr. Ken Jackson
says that he is a member of the Southeastern Psychological
Association, the Society for Industrial and Organizational
Psychology and the Atlanta Society of Applied Psychology.
The third excerpt is from www.mayogenuine.com, and
contains, under the title "Executive Coaching," the
following sentence:
Your headquarters for executive
coaching materials, executive coaching
tips, executive coaching experts, on-
site executive coaching, speakers for
executive coaching, tactical executive
coaching, strategic executive coaching,
basic executive coaching and executive
coaching for veterans.
Even applicant acknowledges that "strategic executive
coaching" is used in this website in a descriptive manner.
However, applicant states that "this phrase is no longer
used on the www.mayogenuine.com website." Brief, p. 6.
Applicant did not provide a copy of what it contends is
currently on the website in support of its assertion.
Moreover, this Board was able to access the website during
the course of drafting this opinion, and it has the same
content and appearance as the excerpt which is in the
record. Thus, we give full weight to the fact that
3 The biography of Kevin E. Cruse states that that he "has over
16 years of human resource management experience" and has "a MS
in Human Resource Management...."
Ser No. 76020606
12
"strategic executive coaching" is used on this website as a
descriptive term.
The fourth excerpt is a printout of a computer screen,
showing the address www.valerieandcompany.com. Under the
title "Executive Coaching" are the following paragraphs:
Coaching is a concept with considerable
merit, particularly in a corporate
world that has difficulty coming up
with mentors for talented
executives....
Valerie & Company launched the
Executive Coaching division by filling
a need requested by clients....
Since 1993, Valerie & Company's
Strategic Executive Coaching has been
used internationally by organizations
including....
Applicant claims that because "Strategic Executive
Coaching" is used with initial capitals, this is another
common law trademark use of the term. We disagree.
Obviously not all capitalized terms are trademarks;
descriptive and generic terms can be depicted with capital
letters merely to make them stand out. That is the
impression that is conveyed by this company's use of
"Strategic Executive Coaching."
Further, the phrase "Strategic Executive Coaching"
appears to be used by this company as a generic term, and
there is no generic term used with the phrase. It is also
Ser No. 76020606
13
noted that "Executive Coaching," which is a descriptive or
generic term, is also depicted with initial capital
letters.
The fifth excerpt is an article entitled "Strategic
Coaching Has Bottom-Line Benefits" which appears on the
website of The Association of Executive Search Consultants,
www.aesc.org. The party submitting the letter of protest
apparently highlighted the phrase "our Strategic Executive
Coaching (SEC) program produces more effective leaders."
Applicant has explained that this is a reference to its own
program, and that the article was written by one of its
officers, and asserts that this shows proper trademark use.
We find that the article as a whole shows that "strategic"
is merely descriptive of applicant's services, and that
when used in combination with "executive coaching," the
term STRATEGIC EXECUTIVE COACHING is also merely
descriptive. For example, the article contains the
following statements:
To be effective, executive coaching
must be both strategic and
individualized.
Executive coaching that is strategic,
that focuses on business needs as well
as individual needs, is the key to
achieving business results.
Where executive coaching becomes
strategic is in the preparation that
Ser No. 76020606
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precedes the actual coaching process.
Before the process begins, the coaches
meet with the client's executive
leadership to define the strategic
context.
Once the strategic context has been
mapped out, the actual executive
coaching process can begin.
A strategic coaching approach offers a
supporting work-context ....
Given this turbulent world and the
challenges and opportunities it
presents, the "strategic" in strategic
executive coaching will become even
more important than it is today.
The next excerpt, taken from the website
www.coachingnetwork.org.uk, is an article consisting of 17
pages which are described as the first chapter of the book
"Coaching for Leadership." Applicant has stated that this
book was written by an officer of applicant and, while
applicant acknowledges that the article depicts two of the
three words of its mark in lower case, it ascribes this to
the author's inattention or a printer's error.
The reference, shown in the context of the entire
paragraph, appears below:
For the coach, strategy need not reside
in quarterly profit targets alone.
Those committed to strategic coaching
will expand the meaning of strategy to
at once embrace individual, team, and
corporate actors. Strategic executive
coaching is an inclusive practical
approach, incorporating the idea of a
Ser No. 76020606
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dashboard or balanced scorecard, and is
well-adapted to a complex world in
which even the ground rules are in a
state of change.
One reading the words "strategic executive coaching"
in this article will not view it as a trademark. There are
no other trademark uses of STRATEGIC EXECUTIVE COACHING in
the article, nor are there any references to applicant and
its services, such that this usage would be seen as a
printer's error or the author's inattention. In fact, the
capitalization of the single word "Strategic" in the phrase
will be seen as only the normal capitalization of any word
that begins a sentence. Moreover, in the context of the
overall article, the word "strategic" describes a
characteristic of executive coaching services:
When the whole organization is engaged,
coaching becomes strategic.
However, whenever coaching succeeds in
aligning the needs of the business with
the development needs of its people, it
cannot help but be strategic in nature.
...a drive to expand into global
markets are also examples of situations
demanding a strategic coaching
response.
For the person being coached, the
experience is invariably strategic.
To the extent that coaching sensitizes
people to reflect and act in a more
purposeful way, it is again strategic
in nature....
Ser No. 76020606
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...coaching is strategy in motion.
The next exhibit is material from Cambria Consulting.
It appears to be a piece of advertising material, but an
additional page shows a website address of
www.cambriaconsulting.com. The title is "Executive
Coaching—A Strategic Approach. One paragraph includes the
phrase "strategic executive coaching," as follows:
With our years of experience in
building executive coaching programs,
Cambria Consulting has launched a new
practice area—Strategic Executive
Coaching—to help our clients achieve
the greatest return on their investment
in this area.
Applicant characterizes this as trademark use, noting that
the term appears in initial capital letters and bold face
font.
We agree that the manner in which the term is depicted
can be viewed as trademark use. It can also be viewed as
simply a way to highlight the company's new practice area.
Even if we do not treat this particular phrase as
constituting descriptive usage, the rest of the copy in the
exhibit, including the title, shows that "strategic" has a
descriptive meaning when applied to executive coaching
services, such that STRATEGIC EXECUTIVE COACHING must be
Ser No. 76020606
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deemed a merely descriptive term. See, for example, the
following statements:
Our strategic approach focuses on what
a group of executives needs to do...to
achieve organizational goals....
As part of the plan, we do the
following:
Translate business strategy into
executive development goals by working
with our clients' top executives to set
qualitative and quantitative
targets....
We point out that there are two pieces of evidence
that were submitted with the letter of protest which we do
not consider to have probative value. One is what appears
to be a flyer for Laszlo & Associates, Inc., and seems to
have no relevance to the issue before us. Another is the
material from the website www.kevingsaunders.com, which
includes the statement, "the flagship service of KGS
Technology is strategic executive coaching." Although we
disagree with applicant's characterization of the use of
the phrase "strategic executive coaching" as trademark use,
we agree with applicant that this statement and, indeed,
the entire web page, can no longer be found at the web
address.
As can be seen from the statements we have quoted
herein, and as is amply demonstrated by the evidence of
record, strategic coaching is clearly one of the aspects of
Ser No. 76020606
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executive coaching. Although there is evidence that the
entire phrase which forms applicant's mark, STRATEGIC
EXECUTIVE COACHING, is used by third parties in a
descriptive manner, such evidence is not necessary to
support a finding that the mark is merely descriptive. At
the very least, the evidence shows that "executive
coaching" is a type or aspect of educational services which
provide executives with information about business
management, and that "strategy" is touted as a feature of
executive coaching, such that consumers of applicant's
services would immediately understand STRATEGIC BUSINESS
COACHING to refer to this characteristic of applicant's
business coaching educational services.
We also note that, as used in applicant's specimens,
"strategic executive coaching" would be perceived as a
descriptive term. Although set apart as a subheading, and
depicted in all capital letters, the phrase appears in the
same manner as the descriptive phrases "Customer Client
Feedback," "Assessment," "Workshops" and "Keynote
Speakers.”
Applicant has argued that because "strategic" has many
definitions that are not descriptive of applicant's
services, "consumers will not immediately perceive what the
Ser No. 76020606
19
words of the mark refer to." Brief, p. 9.4 Applicant also
contends that "A consumer who knows nothing of Applicant's
services will not know from the mark STRATEGIC EXECUTIVE
COACHING that they are educational services, namely,
conducting individual counseling sessions, seminars and
workshops which provide executives with information about
business management." Brief, p. 13. Both these statements
fail to recognize the well-established principle, stated
earlier in this opinion, that the question of
descriptiveness is not to be determined in the abstract,
but in relation to the identified goods or services. Thus,
it is irrelevant whether a consumer can guess from the mark
what the goods or services are. The question is whether a
consumer who sees the mark in connection with the offering
or rendering of the services will understand that strategic
coaching is a feature of applicant's educational services
for executives.
Applicant has also pointed to several third-party
registrations for marks which include the word "strategic,"
4 The Examining Attorney has submitted a printout from The
American Heritage Dictionary of the English Language, 3d ed. ©
1992 which provides the following definitions: 1. Of or relating
to strategy 2.a. Important or essential in relation to a plan of
action: a strategic withdrawal. b. Essential to the effective
conduct of war: strategic materials. C. Highly important to an
intended objective: The committee discussed strategic marketing
factors. 3. Intended to destroy the military potential of an
enemy: strategic bombing.
Ser No. 76020606
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and which were registered without a disclaimer of this
term. Applicant argues that the Office should, in
accordance with past practice, allow the registration of
applicant's mark, which also consists of the word STRATEGIC
followed by a descriptive term.
Although consistency in Office practice is certainly a
goal, we do not believe that registration of other
STRATEGIC marks demonstrates a policy that such marks
should be registered. Each application must be considered
on its own merits. As the Court of Appeals for the Federal
Circuit stated in In re Nett Designs Inc., 236 F.2d 1339,
57 USPQ2d 1564 (Fed. Cir. 2001):
Nonetheless, the Board (and this court
in its limited review) must assess each
mark on the record of public perception
submitted with the application.
Accordingly, this court finds little
persuasive value in the registrations
that Nett Designs submitted to the
examiner or in the list of registered
marks Nett Designs attempted to submit
to the Board.
Here, the record amply supports a finding that STRATEGIC
EXECUTIVE COACHING is a merely descriptive mark.
Decision: The refusal of registration is affirmed.5
5 As previously noted, should applicant ultimately prevail in
this appeal, the file will be transmitted to the Examining
Attorney in order to examine the Statement of Use.