Graystone Consulting Associates, Inc.

Trademark Trial and Appeal Board

Sep 9, 2015

No. 85914457 (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
_____

Trademark Trial and Appeal Board
_____

In re Graystone Consulting Associates, Inc.
_____

Serial Nos. 85914457, 85914469, and 85914478
_____

Matthew H. Swyers of The Trademark Company PLLC,
for Graystone Consulting Associates, Inc.
Laura Golden, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
_____

Before Seeherman, Wolfson and Masiello,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
This is a consolidated appeal involving three applications filed by Graystone
Consulting Associates, Inc. (“Applicant”) on April 25, 2013 for the standard
character marks QUALITY SHOPPER,1 VALUE SHOPPER,2 and PRICE
SENSITIVE SHOPPER.3 The services in each application are identified as
“business training consultancy services.” The applications originally sought

1 Serial No. 85914457. Applicant has disclaimed exclusive rights to the term “Shopper.”
2 Serial No. 85914469.
3 Serial No. 85914478.
Serial No. 85914457, 85914469, and 85914478
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registration on the Principal Register, and were based on Section 1(a) of the
Trademark Act, each claiming first use and first use in commerce on February 1,
2010. The application for the mark VALUE SHOPPER was amended to the
Supplemental Register on August 29, 2014, and the application for the mark PRICE
SENSITIVE SHOPPER was amended to the Supplemental Register on August 28,
2014.
In all three cases, registration has been refused under Trademark Act Sections 1
and 45, 15 U.S.C. §§1051 and 1127, and Trademark Rules 2.34(a)(1)(iv) and 2.56(a),
on the ground that none of the specimens filed therein shows use of the involved
mark in association with the recited services.
Background
A. QUALITY SHOPPER (Serial No. 85914457)
Applicant submitted five different specimens in this case: one with the initial
application; another with its February 21, 2014 response to the first Office Action;
and two more with requests for reconsideration (filed July 9, 2104 and August 29,
2014).4 The appeal was filed on September 15, 2014, while the August 29, 2014
request for reconsideration was still pending, and on November 14, 2014 (the date
its appeal brief was due), Applicant filed a request for remand together with the
fifth specimen filed herein.5 On November 19, 2014, the Board granted Applicant’s

4 The two requests for reconsideration were filed prior to appeal and within 6 months of the
date of the final Office Action.
5 Applicant filed the notice of appeal through the Board’s ESTTA electronic system. In
doing so, Applicant should have checked the box stating that a request for reconsideration
had been filed, but Applicant did not. See TBMP § 1205.01 (“If filing the notice of appeal
through the Board’s ESTTA electronic system, the applicant should check the box
Serial No. 85914457, 85914469, and 85914478
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request for remand, suspended action on the appeal and returned jurisdiction to the
Examining Attorney to consider the additional specimen. On December 2, 2014, the
Examining Attorney determined that neither specimen shows proper use of the
mark, denied Applicant’s second request for reconsideration and returned the file to
the Board. The appeal was resumed.
B. VALUE SHOPPER (Serial No. 85914469)
In this case, registration was refused pursuant to Section 2(e)(1) on the ground
of mere descriptiveness, as well as pursuant to Sections 1 and 45 (and Rules
2.34(a)(1)(iv) and 2.56(a)) because the specimen failed to show proper use of the
mark. Applicant also filed five specimens during the course of the prosecution of
this application, some of them identical to those filed in the other cases.6 Applicant
also argued against the descriptiveness refusal, but in its second request for
reconsideration (filed August 29, 2014), Applicant amended the application to seek
registration on the Supplemental Register. Applicant then, while its request for
reconsideration was still pending, filed an appeal on September 15, 2014, and on

indicating that it has filed a request for reconsideration.”) The Board’s order of the same
date, acknowledging receipt of the notice of appeal, advised Applicant that the Board
should be contacted if there were a pending request for reconsideration, but Applicant did
not do so. Had Applicant done so, or had Applicant checked the appropriate box in ESTTA,
the Board would have acknowledged receipt of the appeal and of the request, instituted the
appeal, suspended further proceedings with respect to the appeal (including Applicant’s
time for filing its appeal brief), and remanded the application to the Examining Attorney
for consideration of the request. Id.; see also TBMP § 1204. Applicant’s failure to follow
proper procedure has caused additional and needless work for the Office.
6 Applicant filed one specimen with its initial application; a second with its February 21,
2014 response to the first Office Action; and two more with its requests for reconsideration,
on July 9, 2014 and August 29, 2014; the fifth was filed with its November 14, 2014 request
for remand.
Serial No. 85914457, 85914469, and 85914478
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November 14, 2014 filed a request for remand so that the Examining Attorney could
consider the fifth specimen.7
On December 2, 2014, the Examining Attorney accepted Applicant’s amendment
to the Supplemental Register, noting that “applicant’s August 29, 2014 Request for
Reconsideration requested amendment to the Supplemental Register and thereby
rendered moot the refusal under Trademark Act Section 2(e)(1).” The Examining
Attorney also determined that the newly submitted specimen did not show use of
the mark in association with the services and denied Applicant’s second request for
reconsideration.
C. PRICE SENSITIVE SHOPPER (Serial No. 85914478)
Registration in this case, as in VALUE SHOPPER, was initially refused
pursuant to Section 2(e)(1) on the ground of mere descriptiveness, as well as on the
basis that the specimen did not show the applied-for mark in use in commerce as a
mark for the identified services.
Likewise, Applicant filed two requests for reconsideration seeking reversal of the
refusals and submitting substitute specimens. On July 24, 2014, the Examining
Attorney denied Applicant’s first request for reconsideration, maintaining the
descriptiveness refusal and the requirement for a proper specimen. In the second
request for reconsideration (filed August 28, 2014), Applicant submitted another
specimen and also amended the application to the Supplemental Register. As in the
other applications, while the request for reconsideration was pending, Applicant

7 Again, Applicant failed to follow proper procedures by not notifying the Board that its
second request for reconsideration was pending at the time it filed its appeal.
Serial No. 85914457, 85914469, and 85914478
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filed the appeal in this case on September 15, 2014.8 On November 14, 2014,
Applicant filed a request for remand. On November 20, 2014 the Board remanded
the application to the Examining Attorney who, on December 2, 2014, accepted the
amendment to the Supplemental Register, which rendered moot the descriptiveness
refusal. The Examining Attorney denied the request for reconsideration with
respect to the requirement for a proper specimen. She then returned the file to the
Board to resume the appeal.
On February 2, 2015, Applicant filed a motion to consolidate eight appeals of its
various marks. On March 2, 2015, the Board granted the motion in part, as a result
of which the appeals in the above-captioned applications were consolidated, and
Applicant and the Examining Attorney filed their briefs.
Applicant’s Pending Requests for Remand
Briefing in the consolidated appeals was completed on June 30, 2015. On
August 18, 2015, Applicant filed requests for remand of both the VALUE SHOPPER
and PRICE SENSITIVE SHOPPER applications, which we now decide. Applicant
seeks to have these applications returned to the Examining Attorney so that
Applicant can amend the filing basis in each application from Section 1(a) to Section
1(b) (intent-to-use) in order to obviate the requirement for acceptable specimens.
The requests for remand are denied as no good cause therefor has been shown.9

8 Again, Applicant did not follow proper procedure and failed to notify the Board of its
pending request for reconsideration at the time it filed the appeal.
9 We also note that Applicant has not actually submitted the proposed amendments with its
requests for remand, but merely seeks permission to submit an amendment after the
application is remanded. A request for remand should be accompanied by the proposed
amendment that the applicant wishes to have the Examining Attorney consider. Cf. TBMP
Serial No. 85914457, 85914469, and 85914478
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A request for remand must include a showing of good cause. TBMP § 1209.04. In
determining whether good cause has been shown, the Board will consider both the
reason given and the point in the appeal at which the request for remand is made.
Id. As noted, the requests for remand were filed several months after briefing had
been completed. Thus, the reason for granting remand at this stage of the appeal
must be strong indeed.
Here, the requests would serve no purpose because the applications are on the
Supplemental Register. The Section 1(b) basis, intent-to-use, pertains to
applications for registration on the Principal Register. Applications for registration
on the Supplemental Register must be based on use of the mark in commerce.
Trademark Act Section 23(a); 15 U.S.C. § 1091(a). Therefore, Applicant cannot
amend the filing basis of these Supplemental Register applications to Section 1(b).10
Accordingly, we find that Applicant has not shown good cause for its August 18,
2015 requests for remand, and we hereby deny the requests.
Whether Applicant’s Specimens Show Use of Applicant’s Marks in Association with
the Recited Services

We now turn to the issue that is the subject of this consolidated appeal, i.e.,
whether the specimens submitted by Applicant show use of its applied-for marks for
its identified services.

§ 1207.02 (request for remand to introduce evidence must be accompanied by the additional
evidence sought to be introduced).
10 We also point out that Applicant would not be able to amend the applications back to the
Principal Register in order to assert a Section 1(b) basis. It was because Applicant amended
its applications to the Supplemental Register that the Section 2(e)(1) refusals on the ground
of mere descriptiveness were deemed moot. Amending the applications back to the
Principal Register would result in a reinstatement of the refusals under Section 2(e)(1).
Serial No. 85914457, 85914469, and 85914478
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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.” Trademark Act Section 45, 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 Graystone Consulting Assocs., Serial No. 85913509, ___ USPQ2d
___ (TTAB May 12, 2015) (citing 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). “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).
We now consider the various specimens of use, starting with the original
specimen included with each of the three consolidated applications. The same
specimen, shown below, was submitted in each case.
Serial No. 85914457, 85914469, and 85914478
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As can be seen, this specimen does not show the marks as they appear on the
drawings. Specifically, the drawings of the marks depict the second term in each
mark as SHOPPER (singular) whereas in the specimen, the word is shown in the
plural form. Accordingly, the initial specimen filed with the applications (as noted,
it is the same in each case) does not exhibit the applied-for marks and is
unacceptable for this reason. The specimen is further unacceptable because it does
not identify any services, let alone the consultancy services recited in the
applications.
Serial No. 85914457, 85914469, and 85914478
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The second specimen differs in each application. For the QUALITY SHOPPER
mark, the specimen that was submitted with Applicant’s response to the first Office
Action was virtually the same specimen as shown above, with the only differences
being that the mark matched the drawing (i.e., the word “Shopper” was depicted in
singular form) and a ™ symbol was inserted following “Shopper.”11

There is still no indication of the services being provided under the mark, such
that an association could be made between the mark and “business training
consultancy services.” This specimen is also unacceptable.
The second specimen submitted in the VALUE SHOPPER application displays
the purported mark in the following manner.

11 The yellow shading highlighting “Quality Shopper” in this specimen, and the blue
shading highlighting “Value Shopper” in the next specimen, appear in the specimens as
submitted. Applicant has provided no explanation as to whether this highlighting was
somehow added by Applicant in connection with its transmission thereof to the Office or
whether the actual specimens include such highlighting.
Serial No. 85914457, 85914469, and 85914478
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We agree with the Examining Attorney that this use of the term “Value
Shopper” does not show a direct association between the mark and the services for
which registration is sought. Instead, Applicant uses the term here to describe an
entity that is sensitive to the price or cost of funeral home services. Applicant calls
such entity a “value shopper.” There is no association created between the mark and
Applicant’s identified services. The specimen is unacceptable.
The next specimen we consider was submitted in all three applications. It is the
second submitted specimen in the PRICE SENSITIVE SHOPPER application, and
it is the specimen submitted with Applicant’s first request for reconsideration in the
other two applications. As shown below, the marks are listed under the text, “There
are three types of shoppers,” and they are followed by a ™ symbol:
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Despite Applicant’s use of the ™ symbol, we agree with the Examining Attorney
that this specimen only uses the terms QUALITY SHOPPER, VALUE SHOPPER,
and PRICE SENSITIVE SHOPPER to refer to three types, or “segments,” of
shoppers who make up Applicant’s clients’ customer base. Although the specimen
tells Applicant’s clients how to provide good customer service, the manner in which
these terms are used is as a description of the customer him or herself, rather than
as identifying the source of origin of Applicant’s business training consultancy
services. Indeed, there is nothing in the specimen that associates Applicant’s recited
services with the applied-for marks or indicates that such services are being
rendered under the marks.
The next set of specimens submitted by Applicant are similar in overall look,
although the text varies somewhat between the specimen for PRICE SENSITIVE
SHOPPER and the specimen submitted in connection with the other two marks.
Serial No. 85914457, 85914469, and 85914478
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Applicant’s specimen, submitted on August 28, 2014, for PRICE SENSITIVE
SHOPPER is shown below:

Here, the specimen discusses “business strategies and tools” offered by
Graystone Associates, and therefore at least refers to the “business training
consultancy services” recited in the application. However, in order to create a “direct
association” between the applied-for mark and the services, “[i]t is not enough that
the mark and a reference to the services both appear in the same specimen.” In re
Osmotica Holdings Corp., 95 USPQ2d at 1668 (citing In re Aerospace Optics Inc., 78
USPQ2d 1861, 1862 (TTAB 2006)). The specimen must not only contain a reference
to the services somewhere in the specimen, but the mark must be used in such a
manner that it would be understood as the source of the service.
The designation “Price Sensitive Shopper” would not be viewed as a source
indicator for business training consultancy services. Instead, as used in the
specimen, the wording refers only to “a type of shopper” labeled as a “Price
Serial No. 85914457, 85914469, and 85914478
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Sensitive Shopper.” We agree with the Examining Attorney that as used in the
specimen the term is not being used as a source indicator for the recited services.
On August 29, 2014, Applicant submitted the following specimen for the marks
VALUE SHOPPER and QUALITY SHOPPER:

The first half of this specimen is the same as the one for PRICE SENSITIVE
SHOPPER and, as with that specimen, it discusses “business strategies and tools”
offered by Graystone Associates. However, the marks at issue, VALUE SHOPPER
and QUALITY SHOPPER, do not identify Applicant as the provider of such
services. Instead, as used in the specimen, the wording refers only to “a type of
Serial No. 85914457, 85914469, and 85914478
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shopper” labeled as a “Value Shopper or “Quality Shopper.” We agree with the
Examining Attorney that as used in the specimen neither term is being used as a
source indicator for business training consultancy services. The specimen is
unacceptable.
The last set of specimens were submitted by Applicant with its November 14,
2014 requests for remand, and are shown below.
I. QUALITY SHOPPER:

Serial No. 85914457, 85914469, and 85914478
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II. VALUE SHOPPER:

III. PRICE SENSITIVE SHOPPER:

These specimens suffer from the same infirmities as the previous specimens;
Applicant is using the terms “QUALITY SHOPPER,” “VALUE SHOPPER,” and
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“PRICE SENSITIVE SHOPPER” to describe the type of shoppers Applicant’s clients
will encounter, namely, one who “values the quality of services provided over price,”
one who “wants the best value for the price paid,” or one who values “the price paid
over the value or quality of services provided.” Because of this usage, there is no
direct association between the applied-for marks and Applicant’s identified business
training consultancy services. Potential consumers will not view the marks as
indicating the source of the identified services, but merely as labels for different
categories of potential customers. The Examining Attorney is correct that the
specimens merely show the terms being used in the discussion of the topic of
“shopper types,” and not as marks for business training consultancy services. The
specimens are unacceptable.
We are not persuaded by Applicant’s argument that the marks are “each
components of the training method the Applicant sells to interested individuals.”
When an interested individual purchases services from
the Applicant, the individual is also purchasing training
in the skill of identifying how best to relate to various
types of customers. Training in this skill, the
identification of a customer’s needs, and the companion
skill of responding appropriately, is a key component of
the service offered by the Applicant. As such, there is a
direct link between the terms appearing in the
advertisement and the services advertised, making the
specimens sufficient for the purpose of demonstrating the
use of the mark in commerce.12

12 11 TTABVUE 11.

Serial No. 85914457, 85914469, and 85914478
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Applicant’s statement that it provides training in the “skill of identifying how
best to relate to various types of customers,” and that this skill is just one of several
“key component[s] of the service” offered under the marks, does not support a
conclusion that the marks identify the source of such training service. Although the
specimens indicate that Applicant provides training in the “skill of identifying how
best to relate to various types of customers,” they do not show that the terms “Value
Shopper,” “Quality Shopper,” and “Price Sensitive Shopper” are marks that identify
the source of the business training consultancy services, as opposed to merely labels
given to distinguish among categories of customers. Accordingly, the specimens do
not show the requisite direct association between the designations and Applicant’s
“business training consultancy services.”
Decision: The refusals to register Applicant’s marks “QUALITY SHOPPER,”
“VALUE SHOPPER,” and “PRICE SENSITIVE SHOPPER” because the specimens
do not show use of the applied-for marks in connection with the services specified in
the applications are affirmed.