Graystone Consulting Associates, Inc.

Trademark Trial and Appeal Board

Sep 9, 2015

No. 85913693 (T.T.A.B. Sep. 9, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 9, 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. 85913693
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Matthew H. Swyers of The Trademark Company, PLLC,
for Graystone Consulting Associates, Inc.
Seth A. Rappaport, 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”) from
the final refusal of the Trademark Examining Attorney to register CREMATION
SELF DIRECTED in standard characters on the Supplemental Register for
“business training consultancy services” in Class 41.1 Registration was refused
pursuant to Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127,

1 Application Serial No. 85913693. The application was originally filed April 24, 2013 on the
Principal Register, asserting first use and first use in commerce at least as early as
December 15, 2010. The application was amended to the Supplemental Register on
August 29, 2014.
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and Trademark Rules 2.34(a)(1)(iv) and 2.56(a), on the basis that Applicant has not
provided an acceptable specimen showing use in commerce of CREMATION SELF
DIRECTED as a mark for the identified services.
The somewhat convoluted history of this application and appeal has been set out
at length in the Board’s August 25, 2015 order. Accordingly, we do not repeat it
here. Suffice it to say that the only issue on appeal is the acceptability of Applicant’s
specimens.
As an initial matter, we note that the application was amended after issuance of
the final Office action to the Supplemental Register. Although the final action
refused registration under Section 1 and Trademark Rules 2.34(a)(1)(iv) and
2.56(a), Trademark Rule 2.47(e) provides that “An application or registration on the
Supplemental Register must conform to the requirements for registration on the
Principal Register under section 1(a) of the Act, so far as applicable.” Therefore, the
statutory section and rules cited by the Examining Attorney, as well as the case law
interpreting this section and these rules insofar as the requirement for a specimen
is concerned, still apply.
These provisions regarding use in commerce and a specimen to evidence such
use, as applied to an application to register a mark on the Supplemental Register,
require that the application include a specimen showing the applied-for mark in use
in commerce. Trademark Act Section 1(a), 15 U.S.C, § 1051(a); Trademark Rule
2.34(a)(1)(iv) (one of the requirements is “one specimen showing how the applicant
uses the mark in commerce”); and Trademark Rule 2.56(a) (An application under
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section 1(a) 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 service mark use 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).
In addition, Applicant has cited certain case law in its brief that also recognizes
the requirement for an acceptable specimen:
“An important function of specimens in a trademark application is,
manifestly, to enable the PTO to verify the statements made in the
application regarding trademark use. In this regard, the manner in
which an applicant has employed the asserted mark, as evidenced by
the specimens of record, must be carefully considered in determining
whether the asserted mark has been used as a trademark with respect
to the goods named in the application”. In re Bose Corp., 546 F.2d 893,
897 (C.C.P.A. 1976). “Before there can be registration, there must be a
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trademark, and unless words have been so used they cannot qualify.
Thus, it is essential for registration that words first become a
trademark, i.e., any word, name, symbol, or device or any combination
thereof adopted and used by a manufacturer or merchant to identify
his goods and distinguish them from those manufactured or sold by
others.” 15 U.S.C.S. § 1127. In re Bose Corp., 546 F.2d 893 (C.C.P.A.
1976).
***
An advertisement is a sufficient specimen of use if there is a direct link
between the term and the services advertised. Peopleware Sys. v.
Peopleware, Inc., 1985 TTAB LEXIS 84, 11-12 (Trademark Trial &
App. Bd. May 31, 1985). The actual appearance of the mark in context
is also relevant as a measure of how a consumer would perceive the
mark. In Re Safariland Hunting Corp., 24 USPQ2d 1380 (TTAB 1992).
***
An advertising specimen is sufficient evidence of a proposed mark’s use
in commerce if it is “used in a manner calculated to project to
purchasers or potential purchasers a single source or origin for the
goods.” In re Volvo Cars of North America, Inc., 46 USPQ2d 1455
(TTAB 1998). …

Brief, 10 TTABVUE 6-7.

Although Applicant submitted three different specimens, one with its initial
application on April 24, 2013, one with its July 9, 2014 request for reconsideration,
and one with its August 29, 2014 request for reconsideration,2 Applicant has
discussed in its brief only the most recent specimen, submitted on August 29, 2014,
so we also will focus our comments on that specimen, which is described in the

2 Applicant filed two requests for reconsideration because it submitted the first one
approximately 3½ months after the Examining Attorney issued the final Office action on
March 31, 2014, and the Examining Attorney denied it on August 2, 2014, so Applicant had
time to file a second request for reconsideration prior to the expiration of the period for
filing a notice of appeal. It should be noted that if Applicant had filed a notice of appeal
before filing the second request for reconsideration, the second request would have been
treated as a request for remand despite the fact that it was filed within six months of the
issuance of the final Office action. See TBMP § 1209.04 (if the examining attorney denies a
request for reconsideration after the appeal is filed, a second request for reconsideration
will be treated as a request for remand even if it is filed within six months of the final
Office action).
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response with which the specimen was submitted as “flyer describing services &
tm.” It consists of five pages; we reproduce below the first page, which is the only
page in which the applied-for mark appears.

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Applicant claims that the specimen displays “the applied for trademark at the
top of the page, in bold letters,” and the “paragraph beneath the trademark
describes the services provided under the applied for trademark.” Brief,
10 TTABVUE 7. We disagree. The applied-for mark, CREMATION SELF
DIRECTED, does not appear, as Applicant states, at the top of the page, in bold
letters. Instead it is in a paragraph that describes five types of purchasers of
cremation services, with “Cremation Self-Directed” being one of two categories of
the “Cremation Minimalist.” It is quite clear that these terms are used to describe
types of purchasers of the services. The text states that “These shoppers [Cremation
Self-Directed and Cremation 3rd Party Directed] take the service or gathering
outside of the funeral home and will either plan services themselves or use a 3rd
party to do so.” Although the paragraph states that “the communication skills
taught by Graystone educate the funeral professional on these types of shoppers,
how to identify and guide families through the arrangement process,” the term
CREMATION SELF-DIRECTED does not identify the source of the business
training consultancy services. On the contrary, the text states that “Graystone” does
the educating, and would be perceived as the source of the services. The bold text at
the top of the page also conveys this same impression. The Graystone Associates,
Inc. logo is the most prominent feature on the page, followed by the phrase
“Graystone Associates Presents,” and the sentence below that, in bold, states that
“Graystone Associates offers business strategies and tools for your firm to become a
premier Funeral Service Provider through training and consulting.” As a result,
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Graystone Associates will be perceived as the source of business training and
consulting services, not CREMATION SELF-DIRECTED. The specimen does not
show the requisite “direct association” between the applied-for mark and
Applicant’s identified business training consultancy services. 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”). As the Board found in
connection with Applicant’s mark WALK-IN SHOPPER in the Graystone Associates
case, the term is used in the specimen to identify a particular type of customer, not
as the source of the services.
We acknowledge that the “TM” symbol appears next to CREMATION SELF-
DIRECTED, and that the term is shown in bold type within the paragraph.
However, merely because a term is capitalized or in bold type or a TM symbol is
used with it does not make it a trademark. See In re Aerospace Optics Inc., 78
USPQ2d 1861, 1864 (TTAB 2006).
In its brief, Applicant has not even addressed the acceptability of its original
specimen or the specimen it submitted on July 9, 2014, 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 the
applied-for mark for the identified services. The first specimen Applicant submitted
does not even show the applied-for mark. The substitute specimen it submitted on
July 9, 2014 consists of three pages, and CREMATION SELF DIRECTED does not
appear until page 3, in a list of terms describing various types of consumers who
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want cremation services, as one of three sub-categories of “Cremation Minimalist”
shoppers, along with “Cremation Self-Directed” and “Cremation No Services.”

Because of the manner in which CREMATION SELF DIRECTED is used in the
specimen, it acts as merely a descriptor for a type of consumer, rather than as a
source-indicator for “business training consultancy services.” Not only is the term
part of a list of various types of customers, but the text following “Cremation Self-
Directed” emphasizes that the term refers to a particular type: “This family makes
all arrangements and planning on their own and conducts gathers [sic] and
memorials without funeral home.” We note that the specimen includes the
statement, “to understand how you can provide your customer with the best level of
service, it is very helpful to understand the type of SHOPPER they are,” on page 1,
and “Understanding the subtle but important and distinctively diverse traits in
your cremation customers can provide you with a competitive difference within your
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community,” on page 2. However, this language is removed from the term
CREMATION SELF-DIRECTED, and the term would not be viewed as the source of
“business training consultancy services,” but merely as a shorthand term to identify
a type of client for funeral home services. The specimen does not show the requisite
“direct association” between the applied-for mark and Applicant’s identified
business training consultancy services.
We agree with the Examining Attorney that none of Applicant’s specimens
shows CREMATION SELF-DIRECTED in a source-identifying manner for the
identified business training consultancy services, but only as the name for a type of
client. Accordingly, the specimens are unacceptable to show use of the mark for the
identified services.
In conclusion, consumers or potential consumers viewing any of the specimens
submitted by Applicant would not regard CREMATION SELF DIRECTED in the
specimens (to the extent that the term appears in the specimen at all) as a mark
that identifies the source of business training consultancy services. As a result, the
specimens are unacceptable to show use in commerce of the mark CREMATION
SELF DIRECTED for business training consultancy services.
Decision: The refusal to register Applicant’s mark CREMATION SELF
DIRECTED is affirmed.