Growth Strategies, Inc.

Trademark Trial and Appeal Board

Apr 29, 2005

No. 76362314 (T.T.A.B. Apr. 29, 2005)

Mailed: April 29, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Growth Strategies, Inc.
___________

Serial No. 76362314
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Paul W. Koda of Koda Law Firm for Growth Strategies, Inc.

Mary Boagni, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
____________

Before Hairston, Walters and Bucher, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Growth Strategies, Inc. has filed an application to
register on the Principal Register the mark HUMAN CAPITAL
CAPABILITY SCORECARD for “business management consultation
services,” in International Class 35.1
The examining attorney has issued a final refusal to
register, under Section 2(e)(1) of the Trademark Act, 15

1 Serial No. 76362314, filed January 24, 2002, based on an allegation of
a bona fide intention to use the mark in commerce.

THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76362314
2
U.S.C. 1052(e)(1), on the ground that applicant’s mark is
merely descriptive in connection with its proposed services.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The examining attorney contends that the mark is merely
descriptive because it “conveys that the applicant’s
business consultation services feature the use of and
provide to customers a scorecard to assess the human capital
capability of other businesses” (brief, pp. 2-3). The
examining attorney stated that “a scorecard … is a way in
which something can be measured and is a term used in the
business context” (brief, p. 3); that applicant’s mark is
simply a combination of merely descriptive words that, when
considered in its entirety, is also merely descriptive and
creates nothing incongruous or novel.
In support of her position, the examining attorney
submitted excerpts from applicant’s Internet web site and a
third-party Internet web site that applicant clarified is
its joint venture partner; excerpts from a third-party
Internet web site; the results of an Internet search using
the Google search engine; third-party registrations;
dictionary definitions of “human,” “capability” and
Serial No. 76362314
3
“capital”2; and excerpts of articles retrieved from the
Lexis/Nexis database.
Applicant contends that its mark is not merely
descriptive; that the phrase comprising the mark “could
suggest services in a variety of fields,” for example, a
philanthropic organization or corporate educational services
(brief, p. 3); that the examining attorney has dissected the
mark, noting in particular that “scorecard” is an
incongruous sports-related term in connection with both the
term “human capital capability” and the identified services.
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find that a mark is merely
descriptive, that the mark describe each feature of the
goods or services, only that it describe a single,

2 The American Heritage Dictionary of the English Language (3rd ed. 1992)
defines, in pertinent part, “human” as “of, relating to, or
characteristic of human beings”; “capital” as “an asset or advantage”;
and “capability” as “a talent or ability that has potential for
development or use .. the capacity to be used, treated, or developed for
a specific purpose.” Additionally, we take judicial notice of the
relevant definition in Merriam Webster’s Collegiate Dictionary (11th ed.
2003) of “scorecard” as “a report or indication of the status, condition
or success of something or someone.”
Serial No. 76362314
4
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985).
The examining attorney bears the burden of showing
that a mark is merely descriptive of the identified goods
or services. See In re Merrill, Lynch, Pierce, Fenner,
and Smith Inc., 828 F.2d 21567, 4 USPQ2d 1141, 1143 (Fed.
Cir. 1987). In this regard, we now consider the evidence
submitted in support of the refusal. First, we look at
the excerpts from applicant’s web site (www.growth-
strategies.com), which includes the following statements:
Applicant describes itself as “a leader in the
field of business, organization and personal
development. The principals of [applicant] have
been developing successful growth strategies for
profit making organizations, nonprofit
organizations and individuals for over forty
years.”

“We create measurement systems that enable our
clients to identify and focus on their human
capital capability and its link to outcomes …”

“Human capital has become the key element in
creating and sustaining value in business. … For
human resources to transform to a truly strategic
role, HR professionals must be able to measure
performance and to link HR’s contribution to the
mission of the organization. The HR Scorecard is
a management system for filling the gap between
what is usually measured in HR and what is
actually essential to the firm.”

“The ideal scorecard for an HR measurement system
will include four themes ….”

“An HR Scorecard measurement system identifies in
quantitative terms the gap between current and
ideal HR architecture, and it provides data for
either an operational or strategic cost-benefit
analysis.”
Serial No. 76362314
5

“Most organizations don’t measure their human
capital capability – the overall capacity of their
people to affect the ‘bottom line.’”

The following statements from the web site of applicant
and/or its joint venture partner, are used in connection
with promotion of the HUMAN CAPITAL CAPABILITY SCORECARD
services:
“The most significant source of wealth creation
inside businesses today is human capital – the
collective skills and knowledge of employees.”

“The application of our HCCS tools (including a
streamlined series of interviews and surveys)
allows us to develop – simultaneously – an
accurate view of a client’s overall human capital
capability as well as a detailed view of
capabilities for each specific factor area that
directly affects human capital capability.
(Italics in original.)”

“After all data gathering is complete, this
information is presented to the client in the form
of a customized HCCS report that includes a
capability score for the three major tiers as well
as specific factor areas, a comparison of these
scores to benchmarked norms, identification of key
linkages to intermediate and financial outcomes,
and specific recommendations for improvement.”

The examining attorney also submitted an excerpt from
a University of Missouri Internet web site
(www.outreach.missouri.edu/boone/B&I/businessprog).3 A
section titled “Programs of the Missouri Small Business
Development Center,” includes the following entry:

3 The results of a Google search for “human capital capability
scorecard,” submitted by the examining attorney, refer primarily to
applicant or its joint venture partner and, thus, this evidence does
not support the examining attorney’s position.

Serial No. 76362314
6
Balanced Scorecards

Large corporations have used balanced scorecards
for years to improve their performance and achieve
their strategic goals. The MO SBDC’s nine-step
process helps smaller companies create a scorecard
and enjoy the benefits of improving communication,
aligning work throughout the company, executing
their strategic plan and measuring performance
with a balanced set of metrics.

The examining attorney’s search of “business
scorecard” in the Lexis/Nexis database includes the
following relevant excerpts4:
“… the fact of the matter is Gaston scored higher
on Associated Industries of Florida’s business
score card than Allan Bense and J.D. in 2000.”
[The Ledger (Lakeland FL), June 10, 2002.]

“SMALL-BUSINESS SCORECARD – 9 A.M. – Members of
Congress host a news conference to release a
report, ‘Scorecard II: How Federal Agencies
Continue to Fail America’s Small Businesses.”
Location: Capitol, House Triangle. [The
Washington Times, September 6, 2001.]

“As for a business scorecard, on the failure side
was right-to-work legislation, a small employer
health insurance reform act, franchise tax relief
and other tax incentives.” [The Daily Oklahoman,
June 1, 2000.]

Of the third-party registrations submitted by the
examining attorney, seven registrations are for marks that
include the term HUMAN CAPITAL in connection with business
management services, and each registration is either on
the Supplemental Register or contains a disclaimer of

4 While the examining attorney’s search strategy showed that 109 items
were retrieved, the ones printed and made of record are mostly from wire
services and, thus, are of minimal probative value in determining the
public’s exposure to the use of the term at issue. The only remaining
and relevant excerpts are shown herein.
Serial No. 76362314
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HUMAN CAPITAL; four registrations are for marks that
include the term SCORECARD for business-related goods and
services, and each registration is either on the
Supplemental Register or contains a disclaimer of
SCORECARD; and one registration is for a mark that
includes the phrase INNOVATIVE CAPABILITIES ENHANCEMENT
for industrial management assistance services, and the
phrase is disclaimed.
As applicant correctly states, when the mark involves
more than a single term, we must consider whether the mark
as a whole is merely descriptive and not just the
individual elements. In re Oppedahl & Larson LLP, 373
F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004). As the
Court stated in that case:
The PTO may properly consider the meaning of
‘patents’ and the meaning of ‘.com’ with respect
to the goods identified in the application.
However, if those two portions individually are
merely descriptive of an aspect of appellant’s
goods, the PTO must also determine whether the
mark as a whole, i.e., the combination of the
individual parts, conveys any distinctive source-
identifying impression contrary to the
descriptiveness of the individual parts.

When two or more descriptive terms are combined, the
determination of whether the composite mark also has a
descriptive significance turns on the question of whether
the combination of terms evokes a new and unique commercial
impression. If each component retains its descriptive
significance in relation to the goods or services, the
Serial No. 76362314
8
combination results in a composite that is itself
descriptive. See, e.g., In re Tower Tech, Inc., 64 USPQ2d
1314 (TTAB 2002) [SMARTTOWER merely descriptive of
commercial and industrial cooling towers]; In re Sun
Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) [AGENTBEANS
merely descriptive of computer programs for use in
development and deployment of application programs]; In re
Putnam Publishing Co., 39 USPQ2d 2021 (TTAB 1996) [FOOD &
BEVERAGE ONLINE merely descriptive of news information
services for the food processing industry]; and In re
Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) [SCREEN FAX PHONE
merely descriptive of facsimile terminals employing
electrophoretic displays].
In the case before us, as quoted above, applicant
itself defines the term “human capital” as “the collective
skills and knowledge of employees”; and defines the term
“human capital capability” as “the overall capacity of
[applicant’s clients’] people to affect the ‘bottom line.’”
As such, the terms “human,” “capital” and “capability” are
used for their ordinary meanings as defined herein and are
merely descriptive in connection with the identified
services. Further, and also in the context of applicant’s
identified services, both the terms “human capital” and
“human capital capability,” as applicant uses them, are
merely descriptive.
Serial No. 76362314
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Applicant further describes its services as “creat[ing]
measurement systems that enable our clients to identify and
focus on their human capital capability and its link to
outcomes….” As the term “scorecard” is defined, its
applicability is broader than mere applicability to sports.
The use of “scorecard” to refer to the results of
applicant’s analysis of the “capability” of a client’s
“human capital” is merely descriptive of applicant’s report
regarding the condition of the client’s organization. Our
findings are reinforced by the evidence of business-related
descriptive use of the term “scorecard” in the Lexis/Nexis
excerpts and in the third-party registrations, as well as
the apparently descriptive use of “human capital” in the
third-party registrations.5
Moreover, we find the mark as a whole, HUMAN CAPITAL
CAPABILITY SCORECARD, to be as descriptive of applicant’s
services as the individual words. Applicant does not
suggest with any particularity that the combination of the
individual terms evokes a new and unique commercial
impression, nor do we find that it does. We find that the
mark in its entirety is merely the sum of its merely
descriptive components and is equally merely descriptive in
connection with applicant’s identified services.

5 It is immaterial that some of the uses of “scorecard” in the evidence
show it as two words, i.e., “score card.”

Serial No. 76362314
10
Contrary to applicant’s contention that the connotation
of its mark is ambiguous when considered in the abstract, it
is settled that “[t]he question is not whether someone
presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who
knows what the goods or services are will understand the
mark to convey information about them.” In re Tower Tech
Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002); see also In re
Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB
1998); In re Home Builders Association of Greenville, 18
USPQ2d 1313 (TTAB 1990); In re American Greetings
Corporation, 226 USPQ 365 (TTAB 1985); and In re Recovery,
196 USPQ 830 (TTAB 1977).
In conclusion, when considered in connection with
applicant’s services, the term HUMAN CAPITAL CAPABILITY
SCORECARD immediately describes, without conjecture or
speculation, a significant feature or function of
applicant’s services, namely that a significant aspect of
applicant’s business management consultation services
involves an analysis and report in the form of a “scorecard”
of the “capability” of a client’s “human capital.” Nothing
requires the exercise of imagination, cogitation, mental
processing or gathering of further information in order for
purchasers of and prospective customers for applicant’s
services to readily perceive the merely descriptive
Serial No. 76362314
11
significance of the term HUMAN CAPITAL CAPABILITY SCORECARD
as it pertains to applicant’s services.
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed.