Novations Group, Inc.

Trademark Trial and Appeal Board

Jun 18, 1999

No. 75265221 (T.T.A.B. Jun. 18, 1999)

Paper No. 9
CEW
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE TTAB
JUNE 18, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Novations Group, Inc.
___________
Serial No. 75/265,221
___________
L. Craig Metcalf of Madson & Metcalf for applicant.
Jodi Lauterbach, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
____________
Before Seeherman, Walters and Wendel, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Novations Group, Inc. has filed a trademark
application to register the mark FOUR STAGES for
“educational services; namely, conducting classes,
workshops, and seminars in the area of business management
and career development.”1

1 Serial No. 75/265,221, in International Class 41, filed March 27,
1997, based on use of the mark in commerce, alleging first use as of
1975 and first use in commerce as of January 1986.
Serial No. 75/265,221
2
The Trademark Examining Attorney has finally refused
registration on the following grounds:
(1) Applicant’s mark is merely descriptive of its
services, under Section 2(e)(1) of the Trademark Act,
15 U.S.C. 1052(e)(1).
(2) The specimens do not show use of the mark as it
appears in the drawing, i.e., the mark in the drawing
is an incomplete representation, a mutilation, of the
mark as used on the specimens. The mark as it appears
on the specimen is reproduced below.
(3) The specimens, consisting of identical copies of a
document entitled “M&PD Competency Assessment,” are
unacceptable because they do not show use of the mark
in the sale or advertising of the services identified
in the application.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.

Serial No. 75/265,221
3
Descriptiveness
The Examining Attorney contends that the applied-for
mark is merely descriptive in connection with the
identified services because the term “four stages” merely
describes the nature of its program and is used in this
manner throughout the specimens of record, e.g., “[r]ead
the four stage descriptions for each competency … [e]ach of
the stages describes high performance.” The Examining
Attorney notes that the theoretical model for applicant’s
services involves four stages of competency and that
applicant uses the phrase “four stages” descriptively, and
in all lower case letters, in the text of the specimen.
In support of her position, the Examining Attorney has
made of record excerpts of articles from the LEXIS/NEXIS
database that she contends refer to applicant and others as
having adopted a four stage theoretical model in the areas
of business management and career development. In
particular, she submitted an article from the November 1986
issue of Research & Development by Paul Thompson, who
applicant acknowledges is one of its founders. In this
article about career development, Mr. Thompson states,
“[a]fter more than 10 years of research into the careers of
professional in organizations, we have found convincing
evidence that the careers of professionals develop in
Serial No. 75/265,221
4
stages” and “[t]he four-stage framework has proved to be a
useful tool in career development seminars, in one-on-one
performance appraisals, and in long-range strategic
planning sessions.” An article in Electronic Design,
November 17, 1997, attributes to the co-founders of
applicant the creation of “the four-stage career model.”
Other articles excerpted refer generally to “the four
stages of career development” or to other researchers’
models of career development involving four stages.
Applicant contends that FOUR STAGES is, at most,
suggestive of its identified services; that FOUR STAGES
does not convey anything about the content of applicant’s
classes, rather, it relates “to the four possible levels of
individual competencies assessed by applicant’s program”
and “to the theory model upon which the classes … are
based”; that the articles submitted by the Examining
Attorney refer to applicant and its originators and
demonstrate that applicant is the owner of the FOUR STAGES
mark; and that the mere discussion of its services in the
literature does not render its service mark descriptive.
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 the product
Serial No. 75/265,221
5
or service in connection with which it is used, or intended
to be used. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979); In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB
1986). It is not necessary, in order to find a mark merely
descriptive, that the mark describe each feature of the
goods, only that it describe a single, significant quality,
feature, etc. In re Venture Lending Associates, 226 USPQ
285 (TTAB 1985). Further, it is well-established that the
determination of mere descriptiveness must be made not in
the abstract or on the basis of guesswork, but in relation
to the goods or services for which registration is sought,
the context in which the mark is used, and the impact that
it is likely to make on the average purchaser of such goods
or services. In re Recovery, 196 USPQ 830 (TTAB 1977).
It is clear from the evidence that applicant and its
co-founders have developed a theory of career development
based on a four-stage model; that other researchers in the
career development field have recognized and attributed to
applicant and its co-founders the development of this four-
stage model; and that other researchers have also developed
models for career development based on stages. Applicant,
in arguing that FOUR STAGES is not merely descriptive,
concedes that FOUR STAGES relates “to the four possible
levels of individual competencies assessed by [its]
Serial No. 75/265,221
6
program” and that FOUR STAGES relates “to the theory model
upon which the classes … are based.”
Clearly, the phrase FOUR STAGES is merely descriptive
in connection with the identified services because it
immediately describes, without conjecture or speculation, a
significant feature or function of applicant’s services,
namely, that applicant’s educational services in the area
of business management and career development involve
teaching about and/or applying the above-described four-
stage model. Nothing requires the exercise of imagination,
cogitation, mental processing or gathering of further
information in order for prospective purchasers of
applicant’s services to readily perceive the merely
descriptive significance of the term FOUR STAGES as it
pertains to applicant’s services.
Conformance of Drawing to Mark on Specimens
The Examining Attorney contends that the applied-for
mark is merely part of the phrase “NOVATIONS FOUR STAGES
COMPETENCY ASSESSMENT TOOL,” which is “a nondescriptive and
distinctive” phrase appearing on the cover of the
specimens; that “the words in the phrase all appear in the
same color, the same style and the same size font and are
spaced equidistant from each other, flowing together to
create a continuous circular design”; and that the applied-
Serial No. 75/265,221
7
for mark is “an inseparable portion of a unitary mark” and
“cannot be extracted or viewed apart from the word
‘Novations’ without altering the visual and aural
commercial impression.”
Applicant contends, essentially, that the mark FOUR
STAGES is shown on the specimens preceded by the company
name and followed by descriptive matter, “Competency
Assessment Tool” and, therefore, FOUR STAGES is
distinguishable as a separate trademark.
Trademark Rule 2.51(a)(1) provides, in part, that “the
drawing of the trademark shall be a substantially exact
representation of the mark as used on or in connection with
the goods[.]” It is well settled that an applicant may
apply to register any element of a composite mark if that
element, as shown in the record, presents a separate and
distinct commercial impression which indicates the source
of applicant’s goods or services and distinguishes
applicant’s goods or services from those of others. See,
e.g., In re Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d
1828 (Fed. Cir. 1988); and Institut National des
Appellations D’Origine v. Vintners Int’l Co., Inc., supra
at 1197 (Fed. Cir. 1992), citing In re Servel, Inc., 181
F.2d 192, 85 USPQ 257 (CCPA 1950); In re Berg Electronics,
Inc., 163 USPQ 487 (TTAB 1969); In re Tekelec-Airtronic,
Serial No. 75/265,221
8
188 USPQ 694 (TTAB 1975); In re Lear Siegler, Inc., 190
USPQ 317 (TTAB 1976); and In re San Diego National League
Baseball Club, Inc., 224 USPQ 1067 (TTAB 1983). See also,
Trademark Manual of Examining Procedure, sections 807.14(a)
and 807.14(b) and cases cited therein.
We find that the applied-for mark, FOUR STAGES, does
not present a separate and distinct commercial impression
apart from the composite mark shown on the specimens of
record. The composite mark consists of wording, forming a
circle around the letter “N,” that includes, as the upper
half of the circle, the phrase “NOVATIONS FOUR STAGES” and,
as the lower half of the circle, the phrase “COMPETENCY
ASSESSMENT TOOL.” This wording appears all in the same
size and color print. The wording FOUR STAGES does not
stand out as a separable element but, at the very least,
would be viewed as part of the phrase “NOVATIONS FOUR
STAGES.” The fact that NOVATIONS forms part of applicant’s
name does not result in FOUR STAGES creating a separate
commercial impression because of the way the phrase is
presented.
Serial No. 75/265,221
9
Specimens as Evidence of Service Mark Usage2
The Examining Attorney contends that “the specimens
are surveys used to assess an employee’s performance, and
not advertisements for seminars relating to business
management and career development”; that the specimens do
not “in any way refer to the educational seminars and
workshops of applicant”; and that “at most, [the specimens]
suggest that applicant provides services in the nature of
administering services used to evaluate employment skills
and competencies [which] clearly falls outside the scope of
applicant’s [identified] services.” The Examining Attorney
argues that, unlike menus which are acceptable specimens
showing use of a mark in connection with restaurant
services, the surveys submitted as specimens in this case
“do not suggest that they are part of and/or related to
educational seminars and workshops in the area of business
management and career development.”
Applicant contends that the specimens are used in
conjunction with applicant’s services in much the same way
as a menu is used in conjunction with restaurant services;

2 Since we have found the applied-for mark to be a mutilation of the
mark appearing on the specimens, we consider this refusal in the
alternative, i.e., assuming, arguendo, that the applied-for mark
appears on the specimens as a separately registrable mark, the question
is whether the specimens are acceptable evidence of the use of the mark
in connection with the identified services.
Serial No. 75/265,221
10
and that FOUR STAGES is clearly used on the specimens in an
advertising context.
The term “service mark” is defined, in pertinent part,
in Section 45 of the Trademark Act, 15 U.S.C. 1127, as “any
word, name, symbol, or device, or any combination thereof
(1) used by a person . . . to identify and distinguish the
services of one person, including a unique service, from
the services of others and to indicate the source of the
services, even if that source is unknown.” As the Board
stated in In re Moody’s Investor’s Services, Inc., 13
USPQ2d 2043, 2047 (TTAB 1989),
Implicit in this statutory definition is a
requirement that there be a direct association
between the mark sought to be registered and the
services specified in the application, i.e., that
it be used in such a manner that it would be
readily perceived as identifying such services.
(citations omitted.)
The question before us is whether the specimens of
record are acceptable as evidence of service mark use in
connection with the identified services. There is no
requirement that the specimens must, in all cases, contain
a statement as to the nature of the services. See, In re
Metriplex, Inc., 23 USPQ2d 1315 (TTAB 1992); In re Eagle
Fence Rentals, Inc., 231 USPQ 228 (TTAB 1986). However,
while the nature of the services does not need to be
specified in the specimens, there must be something that
Serial No. 75/265,221
11
creates in the mind of the purchaser an association between
the mark and the services provided. In re Johnson Controls
Inc., 33 USPQ2d 1318, 1320 (TTAB 1994).
In this case, assuming, arguendo, that the applied-for
mark is not a mutilation of the composite mark shown on the
specimens, we agree with applicant that the brochure
submitted as a specimen calls for the recipient to assess
either his or her own career “competencies” or those of a
colleague. Certainly, such an exercise could reasonably be
used by applicant as part of its rendering of its
identified educational services. While the mark on this
brochure may not be advertising, as noted above, there is
no requirement that a service mark must be used in the
advertising of the identified services. We find that the
mark on this brochure is acceptable evidence of use of the
mark in the rendering of applicant’s services, and that it
is sufficient to create in the minds of purchasers an
association between the mark and the services provided.
Serial No. 75/265,221
12
Decision: The refusal to register is affirmed on the
grounds that the applied-for mark is merely descriptive,
under Section 2(e)(1) of the Act, and that the applied-for
mark is an incomplete representation, i.e., a mutilation,
of the mark as used on the specimens of record. However,
the refusal to register on the ground that the specimens
are unacceptable because they do not show service mark use
is reversed.
E. J. Seeherman
C. E. Walters
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board