IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

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In re Trademark Application of:

QSE Consulting, L.L.C. Trademark Law Of?ce No.: 115

Serial No.: 77/782,973

Filed: July 16, 2009 Trademark Examining Attorney:
Mark J. Leipzig
Mark: VALUES-BASED SAFETY

International Class No.: 045 Attorney Docket No.: QUALOO4

RESPONSE TO OFFICE ACTION DATED OCTOBER 23, 2009

Dear Examining Attorney Leipzig:

In response to the October 23, 2009 Of?ce Action, please consider the following

remarks and evidence submitted herewith.

1. Identi?cation of Services

The Of?ce Action alleges that the identi?cation of services is inde?nite and

suggests an alternate identi?cation of services that classi?es the services in Class 045.

Applicant thanks the Examining Attorney for the suggested identi?cation of services and

consents to the suggestion.

Therefore, Applicant hereby amends the identi?cation of services to recite

“Consultation provided to businesses, said consultation being in the ?eld of safety in the

workforce,” and amends the class from Class 035 to Class 045.
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II. Mark Appears Differently on Drawing and Specimen

The Of?ce Action alleges that the applied-for mark as shown on the specimen

previously submitted in this application differs from the mark as shown on the drawing.

Applicant submits a substitute specimen that shows use in commerce of the mark

in agreement with the mark as shown on the drawing. Applicant also submits a signed

Declaration stating that the substitute specimen was in use in commerce at least as early

as the ?ling date of the present application.

111. VALUES-BASED SAFETY Has Acguired Distinctiveness

The mark VALUES—BASED SAFETY (hereinafter “the mark”) was registered on

the Supplemental Register on July 7, 2002 under Registration No. 2590011. A Section 8

af?davit presenting a showing of 5 years of substantially exclusive and continuous use of

the mark was ?led on June 19, 2008 in connection with Registration No. 259001 1 and

was granted on July 10, 2008.

The Of?ce Action indicates that no con?icting marks that would bar registration

of the mark on the Principal Register were found during a search of the Of?ce’s database.

However, the Of?ce Action refuses registration of the mark on the Principal Register,

alleging that the mark is merely descriptive of the services in connection with which

registration of the mark is sought. In particular, the Of?ce Action alleges that “both the

individual components [of the mark] and the composite result are descriptive of

applicant’s goods and/or services and do not create a unique, incongruous or

nondescriptive meaning in relation to the goods and/or services.”

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The Of?ce Action further alleges that the mark is “highly descriptive” of the

services in connection with which registration of the mark is sought, and thus asserts that

the showing of ?ve years of substantially continuous and exclusive use of the mark is

insuf?cient and that more evidence is required to establish that the mark has acquired

distinctiveness.

The Of?ce Action provides examples of the types of evidence that may be offered

to establish that a mark has acquired distinctiveness including speci?c dollar sales under

the mark, advertising ?gures, samples of advertising, consumer or dealer statements of

recognition of the mark as a source identi?er, af?davits and/or declarations, etc.

Applicant herewith respectfully submits Exhibits A—M which together represent each of

the forms of evidence outlined above.

In evaluating the evidence submitted in support of a ?nding of acquired

distinctiveness of a mark, various factors are considered including:

(1) length and exclusivity of use of the mark in the United States by applicant,

(2) type, expense, and amount of advertising of the mark in the United States,

(3) sales success, and

(4) applicant’s efforts to associate the mark with the source of the goods and/or

services.

It is important to note that a showing of acquired distinctiveness need not consider

all of these factors, and no single factor is dispositive. Applicant respectively contends

that the evidence submitted herewith establishes (1) Applicant’s long—term and exclusive

use of the mark in connection with the services it offers, (2) signi?cant amounts

expended on advertising and promoting Applicant’s services under the mark so as to

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create a strong association, among relevant consumers, of the mark with a single source —

QSE, and (3) signi?cant growth in sales and commercial success resulting from increased

recognition of the mark and association of the mark solely with QSE. As such, Applicant

submits that the mark has acquired distinctiveness, otherwise known as secondary

meaning, in the mind of the relevant purchasers. The evidence submitted herewith

includes:

(1) A license agreement between Applicant and a third-party that includes the

bargained-for right to use the mark;

(2) Declarations (by industry experts, Applicant’s competitors, representatives of

members that form part of the relevant consuming public, and a representative of

Applicant);

(3) tax documents establishing dollar amounts spent advertising the mark;

(4) various advertising samples showing the mark being used in connection with a

description and offer of QSE’s serviCes; and

5) a listing of clients along with the corresponding sales revenue generated by

each client. Each of these forms of evidence will be addressed in greater detail

hereinafter.

A. Length and Exclusivity of Use of the Mark

The ?rst use of the mark was in 1992 in connection with a book authored by

Terry McSween, founder and Chief Executive Officer of Applicant, entitled “The

Values-Based Safety Process: Improving Your Safety Culture with Behavior—Based

Safety.” The first edition of the book was submitted for publication to Van Nostrand

Reinhold Publishers in 1993 and was published in 1995. See Exhibit M, paragraph 6.

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The book is widely known throughout the occupational safety industry, and leading

experts in the ?eld associate the mark solely with Terry McSween and QSE in relation to

at least behavior-based safety in the occupational context. See Exhibit J, paragraphs 7, 8;

Exhibit K, paragraph 7.

The mark was ?rst used in connection with services rendered by QSE in 1994

when QSE provided safety consultation services to Citgo Petroleum Corporation under

the mark. See Exhibit M, paragraph 7. QSE has used the mark in connection with the

rendering of safety consultation services in the occupational context substantially

continuously and exclusively since 1994. See Exhibit M, paragraph 8. QSE began

providing services to El Paso Corporation under the mark in 1995. See Exhibit 1,

paragraph 7. A listing of clients along with associated sales revenue generated from each

client from 2005-2009 is provided as Exhibit G. Exhibit G clearly shows a substantial

growth in: (1) the number of clients obtained by QSE, and (2) the amount of sales

revenus generated from these clients.

QSE entered into a consulting services agreement with Archer Daniels Midland

(ADM) in 2009 whereby QSE provided ADM with use of QSE’s safety training materials

and access to QSE’s expert consultation services in the ?eld of behavior—based safety in

the occupational context. See Exhibit A. The consulting services agreement also

provided ADM with the bargained-for right to use the mark (VALUES-BASED

SAFETY) in reference to its behavior-based safety implementation as long as use of the

mark was accompanied by an explanation that QSE is the owner of the mark and the

mark is being used with QSE’s permission. See Exhibit B; Exhibit H, paragraph 7.

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ADM views the mark as being distinctive of and as identifying services provided by a

single source — QSE. See Exhibit H, paragraph 9.

ADM’s right to use to the mark was part of the consideration that was bargained

for by ADM in entering into the consulting services agreement. In fact, safety

consultation services provided by QSE to ADM in 2009 generated more sales revenue

than all other QSE’s clients combined. See Exhibit G, 2009 Client List. Thus, ADM

paid QSE a substantial sum of money to purchase QSE’s safety consultation services and

expertise as well as the right to use the mark because ADM views the mark as a strong

source identi?er and as being distinctive of and as identifying services provided by a

single source — QSE. See Exhibit H, paragraph 9.

In addition to the evidence discussed above, the various declarations submitted

herewith by industry experts and representatives of QSE’s clients serve to establish

QSE’s long—term, substantially exclusive and continuous use of the mark in connection

its safety consultation services. For example, a representative from ADM (a major client

of QSE) has provided a declaration attesting that ADM views the mark as being

distinctive of and as identifying services provided by a single source — QSE. See Exhibit

H, paragraph 9. A representative from El Paso Corporation has provided a Declaration

attesting that he, as a representative of El Paso Corporation, views the mark in relation to

consultation services concerning safety in the workplace as being distinctive of and as

identifying QSE as the sole source of services provided under the mark and as

distinguishing those services from the services of others. See Exhibit 1, paragraph 10.

Dr. Dominic Copper, a well-recognized expert in the ?eld of occupational safety and co—

founder of a competitor of Applicant’s, has provided a declaration attesting that he views

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the mark as being distinctive of and as identifying services emanating solely from QSE

and as distinguishing those services from the services of others. See Exhibit J, paragraph

11. Dr. Cooper also attests that based upon his information and belief (which is based on

extensive experience teaching, researching, lecturing, and providing services in relation

to behavior-based safety concepts), the relevant consuming public views the mark as

being distinctive of and as identifying services emanating solely from QSE. See Exhibit

J, Paragraph 10.

Therefore, Applicant respectfully submits that the evidence submitted herewith

and discussed above serves to establish QSE’s long—term, substantially exclusive and

continuous use of the mark in connection its safety consultation services.

B. Type, Expense, and Amount of Advertising of the Mark in the US.

QSE has expended substantial amounts of money on advertising and promoting

its services under the mark in order to associate the mark, in the minds of the relevant

consuming public, with the services QSE provides.

QSE has advertised the services it provides under the mark substantially

continuously and exclusively from 1993 until the present through various advertising

media including, but not limited to, its website (http://www.qualitysafetyedge.com),

telemarketing channels, booth exhibits, brochures, and documentation relating to safety

training workshops conducted by representatives from QSE. See Exhibit M, paragraph 9.

QSE has purchased booth space and has exhibited a booth at the Behavioral

Safety Now annual conference each year from 1993 through 2009. See Exhibit M,

paragraph 10. QSE’s booth displays the mark in connection with a description of the

services offered by QSE. A sample photograph of the booth exhibit is attached as Exhibit

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C. The booth exhibit displays the phrase “CUTTING EDGE RESULTS THROUGH

VALUES-BASED SAFETY.” See Exhibit C. QSE has also exhibited the booth exhibit

depicted in Exhibit 1 at various other conferences including, but not limited to, local,

regional, and national conferences conducted by the American Society of Safety

Engineers and National Petroleum Re?ners Association. See Exhibit M, paragraph 1 1.

QSE has also advertised its services under the mark through other means

including: in various brochures since 1993 (see Exhibit D) and in pamphlets describing

services provided as part of safety training workshop (see Exhibit E).

QSE’s advertising expenditures have focused primarily on (1) website design,

maintenance, updates, and promotion, and (2) telemarketing. QSE’s expenditures on

website—related advertising and telemarketing are classi?ed as either advertising expenses

or professional services expenses on QSE’s federal income tax returns. See Exhibit M,

paragraph 15. QSE has expended substantial amounts of money on advertising the mark

through its website and through telemarketing channels as evidenced by the advertising

data provided for the years 2005—2007 and the advertising expenditures listed on QSE’s

federal income tax returns for the years 2005-2008. See Exhibit M, paragraphs 16, 17,

and 20.

QSE’s advertising expenditures related to its website have focused on search

engine optimization and website content in order to identify the mark, in the minds of the

relevant consuming public, as a source identi?er for the services provided by QSE. See

Exhibit M, paragraph 18. That QSE’s advertising efforts have been successful in

identifying the mark, in the minds of the relevant consuming public, as a source identi?er

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for the services provided by QSE is evidenced by data showing a substantial number of

weekly hits to its website. See Exhibit L.

In addition to the various examples of QSE’s advertising and promotion of the

mark discussed above, in 2008, QSE spent approximately $20,000 to create a television

advertisement that described the services provided by QSE. The television advertisement

prominently displays the mark in connection with a description of QSE’s services. The

television advertisement is currently under production. See Exhibit M, paragraph 21.

Therefore, the evidence submitted relating to QSE’s efforts to advertise and

promote the mark and the evidence showing that those efforts have been successful in

causing the relevant consuming public to identify the mark as a source identi?er for the

services provided under the mark shows that the mark has acquired distinctiveness.

C. Significant growth in sales and commercial success resulting from

increased recognition of the mark and Applicant’s efforts to associate

the mark with Applicant

The evidence submitted herewith also establishes a significant growth in sales

revenue from when QSE ?rst rendered services under the mark to the present day.

Applicant’s substantial expenditures in marketing and advertising its services in

connection with the mark have resulted in signi?cant increases in the number of clients

obtained by QSE as well as the amount of sales revenue generated from those clients.

First, Applicant’s efforts in advertising and promoting the mark through its

website have resulted in an increasingly larger percentage of its sales revenue being

generated from client projects obtained through its website. See Exhibit M, paragraphs

22-26. As QSE’s website has become an increasingly more important source of revenue

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for QSE, the mark has been strengthened as a source identi?er for the services provided

by QSE. See Exhibit M, paragraph 26.

Further, in the time period during which QSE has rendered services under the

mark, QSE’s market share and sales revenues have grown substantially. The market size

of the behavior-based safety market in the United States is approximately $60 million.

See Exhibit M, paragraph 27. QSE currently holds approximately 10% of the market.

See Exhibit M, paragraph 28. QSE’s sales revenues have grown from less than $125,000

in 1993 to approximately $4,860,204 in 2009. See Exhibit M, paragraph 28. The almost

40—fold increase in QSE’S sales revenue from 1993 to 2009 can be attributed to increasing

recognition of the mark among the relevant consuming public and an increased

association of the mark solely with QSE and the services provided by QSE. See Exhibit

M, paragraph 30.

In addition, that the relevant consuming public associates the mark with a single

source is further evidence by ADM’s consulting services agreement with QSE in which

ADM paid a substantial amount of money to obtain not only QSE’s consulting services

but also the right to use the mark in connection with ADM’s safety implementation. See

Exhibits B, H.

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IV. Conclusion

In summary, Applicant respectfully submits that the foregoing discussion and the

evidence submitted herewith this Response conclusively establishes that Applicant’s

applied—for mark (VALUES-BASED SAFETY) has acquired distinctiveness and is

viewed by the relevant consumer as being distinctive of and as identifying QSE as the

single source of services rendered in connection with the mark. Further, Applicant

respectfully submits that all other formal requirements have been satisi?ed.

Accordingly, Applicant respectfully requests that the mark VALUES-BASED

SAFETY be permitted to register on the Principal Register.

Respectfully submitted,

/)x/K/jl
/

Jo atherine D’Ambrosio
Attorney, Texas Bar Member
D’Ambrosio & Menon, L.L.P.
10260 Westheimer, Suite 465
Houston, Texas 77042
Telephone (713) 975-0800
Facsimile (713) 975—0995
Email: [email protected]

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