Time Impact Analysis

Heather,



Can’t remember which thread I suggested it, awhile back now.



The SCL Protocol is used as a standard in the UK, but only if adopted. It has no standing however such as a "British Standard" or similar. It is however recognised quite widely, both in the UK and some other countries.



Bottom line, there is no universally accepted standard (I know of anyway) for any method of delay analysis, hence my thoughts.

If you want a useful but breif overview of delay analysis have a look at the following article:



http://www.driverconsult.com/articles/article_pdf_25.pdf



You could win a case of wine too if you enter the competition!!!!!!!!!!!!!

Heather,



Capital Project Management Inc is separate from MDC Systems, but MDC have another trademarked product called Capital Project Management System. Possibly designed to confuse and mislead!!!!!!



Where ever TIA was first carried out and by whom is irrelevant. A universally recognised method or standard would clear up some of the confusion between Windows analysis and TIA.



Even Windows analysis now has three names in the UK that I know of – Windows, snapshot and watersheds. Mainly down to one well known author who seems to like introducing new terms. Apparently we now have internal and external float due to the same person.



Although this is done in an attempt to better explain things, I believe it mainly serves to confuse and complicate and give the impression that time analysis is some mysterious and complicated art – which it isn’t.



I suggested PP users write a standard for TIA some while ago but the response was non existent. I’m guessing it will never happen, too many vested interests out there wanting to keep the industries methods cloaked in a veil of darkness.

Isnt this akin to the Bismati rice affair?



When Bismati rice was grown for hundreds if not thousands of years in India. Some US company then patented that name Bismati, with some jazzy legal footwork.



Not much use to talk more on this Time Impact Analysis or TIA. That term and the concepts have been in use for years in the past by me and countless others, maybe before the company claiming it ever existed.



Just like the Indians in India growing, calling and eating Bismati rice even before USA was even conceived of.

Trevor



It’s not the lawyers that take things to court - they only do as instructed. It’s the people asking them to take it to court that obviously think there’s some commercial advantage in putting a trade mark on TIA

Heather



I think this thread has just about gone as far as it can without your input.



If you are not willing to contribute then I must conclude my original observations about the purpose of your post were correct.



As a lawyer, I thought you would be willing to defend your position... seems not though.



David

Trevor,



(ahh! taking a deep breath)...



This is Africa (TIA), this is Real Time and i got nothing to do!



May I suggest that you proceed taking up Law courses!

OK, I read some of the paper because I had some time to waste in between doing real work.

Perhaps TIA might also mean, in a construction industry context of course, "Thanks In Advance" or "This Is Absurd". Others might suggest others.

Surely this is just a gigantic leg pull, merely the obvious consequences of lawyers actually taking themselves seriously?

I suppose these things have to be tested sometime, somewhere, but isn’t it just a big waste of time to take it to court? Does the legal system have nothing useful to do? Only in America... maybe.

Please I would be most grateful if you could e mail me the PDF copy of the documents

If any one wants a more comfortable read of the documents that Andrew refers to in his postings they can be found at:



http://www.uspto.gov/web/offices/com/sol/foia/ttab/2eissues/2003/121819…



and



http://www.oblon.com/files/news/281.pdf



or if you PM me with your email address I will send you PDF copies.



David

I looked at this a couple of years ago. Looks like the opposition was bought out by MDC, so they may have now managed to register TIA.

Can’t be bothered to look it up as it’s of no real importance to anyone - just as long as people are aware of the history and the facts behind MDC’s claim, they can be there own judges.

TIA (as we know it) was probably developed by many people all over the world as computers made CPM analysis a more practical option.

Someone had to be the first though, but I’m sure it would be impossible to prove who was the very first person to impact a series of events on a CPM program to see what thier effect would be. Probably happened pre computers anyway and was done manually on a small scale somewhere.

Much more importantly, which would be of great assistance to the world, is an approach to the method could be standardized so everyone at least sang from the same hymnsheet in a dispute. A worldwide accepted standard would be a great benefit. Given the protectionism shown, unlikely to be achieved though.

So does the continued use of a registered trademark symbol against TIA constitute, as claimed by Capital Project Management at the time:-



The use of the mark TIA by Applicant on

the services specified in Application

Serial No. 75/474,121 is likely to cause

confusion, mistake or deception such that

consumers will believe that Opposer’s use

(and the use by others in the construction

management trade) of Time Impact Analysis

techniques in their daily business are

actually techniques that belong to, or

originate from, the Applicant.



Capital Project Management now appear to be part of MDC Systems now so they’ve probably changed their mind!!!



But as long as you know the real story as per the case below, I guess you can make up your own minds.

Andrew



I admire you investigative skills or should I say I salute your indefatigability!



You have answered one of the questions I put to Heather, in that where has the debate about TIA been raging – obviously in the US courts!



I think it would be an opportune moment for Heather to make a response as to her claims or do you think her interests in participation in discussions related to claims analysis, schedule techniques, and construction law for my educational and professional development purposes have suddenly evaporated?



Ho hum – can you hear the sound of tumble weed blowing across this thread from the direction of MCDS!



David

Sorry to go on but this bit really is the best:



Mr. McCue adds, “[I]t is my testimony now and forever more that we do it right and other people are imitators and they do it wrong."



Now and forever more - maybe he would like to rethink that and come down to earth as he’s plainly somewhere on Pluto (sorry, that’s lost it designation as a planet hasn’t it - a common thread maybe) when making this statement.

it makes very interesting reading:

In a letter dated March 13, 2002 from Mr. McCue to
Harold Yoh, D&Z’s president, Mr. McCue essentially
requested Mr. Yoh to confirm that rights to designations
such as “TIA” and “Time Impact Analysis” were transferred
to applicant. Mr. McCue wrote: “In fact, during the
negotiations between myself, on behalf of [applicant],
this decision.
Opposition No. 121,819
39
and Barry Beuchner [the now deceased employee of D&Z], on
behalf of the Day & Zimmerman conglomerate, it was made
clear that [applicant] purchased all of the intellectual
property of the claims unit, but so that there was no
misconceptions or misinterpretations, the D&Z marks were
specifically identified in the parties’ Asset Purchase
Agreement as not being sold to [applicant] because this
language in the agreement prepared by Day & Zimmerman
conglomerate was so broad that it could be misinterpreted
by third parties to include the D&Z marks.” Mr. McCue
goes on to request Mr. Yoh to confirm that D&Z does not
reserve any rights in “TIA” or “Time Impact Analysis.”
Upon such confirmation, Mr. McCue writes that “we will
gladly release the remaining funds and complete the
payment for these assets.”

I like this bit of the post below:



Mr. McCue, states that “Iam aware of some people using the term time impact analysis infrequently because it is associated so closely with us that it is just marketing for MDC every time they use it.” Mr. McCue adds, “[I]t is my testimony now and forever more that we do it right and other people are imitators and they do it wrong. They use the name to bastardize the technique to make their case, make their claim.”



Comments David.

David,



You couldn’t send me the paper could you.



Copyright or registered trade mark is applicable (unless they’ve appealed and won) - does the below say that!!!!! And who did they buy it off?????????



We find that the testimony and evidence establishes

that the designation TIA is, at a minimum, merely

descriptive when used in connection with applicant’s

services. Given the interchangeability of “TIA” and

“time impact analysis,” the letters immediately and

directly convey information about applicant’s services,

that is, that the services involve time impact analysis.



Decision

The opposition is sustained, and registration to

applicant is refused.

I make no comment, the results speak for themselves.

Or this:Official Journal of the International Trademark Association



b. Terms Found Generic

TIA was found to be a generic designation for “investigation of

problems experienced on construction projects using a technique

that analyzes the effect of a particular event on schedulized

activities.”144 Petitioner’s two expert witnesses were found to

qualify as experts in the construction management field,

specifically with respect to claims analysis of time delays on

construction schedules. The Board did not consider them to be

experts in trademark law and any opinions related to the question

of law were given no weight. The discovery depositions of

applicant’s president, executive vice president and the chairman of

a subsidiary company introduced by opposer by notice of reliance145

were accepted as evidence. Because of their intimate knowledge of

applicant’s business, it was appropriate to impute their knowledge

to applicant. The fact that applicant did not call those individuals

as witnesses did not undermine the probative value of their

testimony during discovery depositions. Applicant was deemed to

have waived objection to evidence upon which it relied.

Applicant’s website, which was representative of other uses by

applicant, stated: “Time Impact Analysis . . . TIA is a courtaccepted

schedule analysis technique created by MDCSystems.”

Both parties specialized in analysis of the impact of time delays on

the schedules of construction projects. The category of services

identified in the application is clearly scheduling analysis services

144. Capital Project Management Inc. v. IMDISI Inc., 70 U.S.P.Q.2d 1172 (T.T.A.B.

2003).

145. 37 C.F.R. § 2.120(j).

Vol. 95 TMR 49

for construction projects. The relevant public is highly

sophisticated, is comparatively small in size and is involved in

some capacity with schedules and construction projects. Opposer

proved its claim of genericness by a preponderance of the evidence.

TIA is synonymous with “time impact analysis” and the relevant

public knows what TIA meant.

It did not follow from the fact that “time impact analysis” is

generic that the initial letters of the generic term are recognized as

being substantially synonymous. Whether the initials TIA should

also be deemed generic presented a separate but related issue. An

abbreviation or initialism of a generic name, that conveys to the

relevant public the original generic connotation of the abbreviated

name, is also generic. Acronyms and initialisms are often used

interchangeably with the full generic name and are recognized as

equivalents.146 There is a heavy burden on a trademark claimant

seeking to show an independent meaning of initials apart from the

descriptive words that are their source. Initials do not usually

differ significantly in their trademark role from the descriptive

words that they represent.147 There was testimony to the effect

that TIA was used interchangeably with “time impact analysis.”

The record showed an almost complete failure by applicant, in the

face of generic uses of TIA by others in the field, to police its

purported rights in the designation. The only uses of TIA in

printed materials were after the initial use of “Time Impact

Analysis,” but that did not warrant a finding that the initials

themselves were registrable. There was no doubt that the initials

TIA were perceived as the generic equivalent of “time impact

analysis.” TIA had fallen into the lexicon of the language utilized

in the field to name a particular type or kind of schedule analysis.

Different meanings of TIA in other fields were irrelevant. The

Board concluded that TIA had become so generally understood as

representing the generic term as to be accepted as substantially

synonymous.

Applicant’s counsel acknowledged that, if TIA were found to be

merely descriptive, but not generic, no registration would issue

based on the present application because there was no evidence or

claim of acquired distinctiveness under Section 2(f).148

I believe this might be of intertest!!!!!!!!!!





Hearing: Paper No. 13

March 5, 2003 TJQ

Mailed: July 30, 2003

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

______

Capital Project Management, Inc.

v.

IMDISI, Inc.

_____

Opposition No. 121,819

to application Serial No. 75/474,121

filed on April 24, 1998

_____

Nicholas Guarente and Mark A. Garzia of the Law Offices

of Mark Garzia for Capital Project Management, Inc.

Camille M. Miller and Brian J. Urban of Cozen O’Connor

for IMDISI, Inc.

______

Before Hanak, Quinn and Rogers, Administrative Trademark

Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application has been filed by IMDISI, Inc. to

register the designation TIA for “investigation of

problems experienced on construction projects using a

technique which analyzes the effect of a particular event

on schedulized activities.”1

1 Application Serial No. 75/474,121, filed April 24, 1998,

alleging first use anywhere and first use in commerce in October

THIS DECISION IS CITABLE

AS PRECEDENT OF THE

TTAB

Opposition No. 121,819

2

Registration has been opposed by Capital Project

Management, Inc. on the ground that the designation TIA,

when used in connection with applicant’s services, is

generic or merely descriptive thereof.2

Applicant, in its answer, denied the salient

allegations of the notice of opposition.

The record consists of the pleadings; the file of

the involved application; trial testimony, with related

exhibits, taken by each party; discovery depositions and

applicant’s responses to opposer’s discovery requests

1981. The application was originally filed by MDC Systems, Inc.

An assignment of the application to the above-named applicant

was recorded in the Assignment Branch records of the Office on

April 19, 2000 at reel 2069, frame 0798. In view thereof,

IMDISI, Inc. is substituted as the party defendant in this

proceeding. It should be noted, however, that references in

this decision to “applicant” mean MDC Systems, Inc.

2 To the extent that there is any confusion regarding the issues

in this case, it is clear that the issues are genericness and

mere descriptiveness under Section 2(e)(1) of the Trademark Act.

Applicant, in its brief, lists the above issues as well as a

third issue, namely likelihood of confusion under Section 2(d).

A review of the notice of opposition shows the following

allegation as paragraph 14:

The use of the mark TIA by Applicant on

the services specified in Application

Serial No. 75/474,121 is likely to cause

confusion, mistake or deception such that

consumers will believe that Opposer’s use

(and the use by others in the construction

management trade) of Time Impact Analysis

techniques in their daily business are

actually techniques that belong to, or

originate from, the Applicant.

It is clear from the trial in this case and the arguments in the

brief and at the oral hearing that opposer is not claiming any

proprietary rights in the designation TIA, and that the above

pleading is part of its claim under Section 2(e)(1).

Opposition No. 121,819

3

(interrogatories and requests for admissions), introduced

by way of opposer’s notices of reliance; and discovery

Opposition No. 121,819

4

depositions, and opposer’s responses to applicant’s

discovery requests (interrogatories and requests for

admissions) made of record by applicant’s notice of

reliance.3 The parties filed briefs, and both were

represented by counsel at an oral hearing before the

Board.

The record in this case is voluminous, with

thousands of pages of testimony and hundreds of pages of

exhibits. The deposition testimony is replete with

objections, most of them entirely unnecessary. It is

obvious, from a review of the record and the briefs, that

this litigation has been overly contentious. The clashes

between counsel contributed nothing in advancing the

merits of this case. Be that as it may, before turning

to the merits, we first direct our attention to some

evidentiary objections which applicant has maintained in

its brief.

3 Applicant also submitted with its notice of reliance documents

produced by opposer in response to applicant’s document

production requests. However, documents produced in response to

document production requests may not be made of record by way of

notice of reliance. See: Trademark Rule 2.120(j)(3)(ii). In

this instance, however, opposer essentially has treated the

documents to be of record and, accordingly, we deem them to be

stipulated into the record. (It is further noted that many of

the produced documents were also identified as exhibits during

testimony.) In sum, all of the involved documents have been

considered by the Board.

Opposition No. 121,819

5

The first objection involves applicant’s attempt to

strike the expert witness testimony of Thomas Driscoll

and Walter Cosinuke.4 According to applicant, these

witnesses

4 Messrs. Driscoll and Cosinuke also were offered as fact

witnesses by opposer.

Opposition No. 121,819

6

“were unqualified to render expert opinion as to the

issues of registrability of the TIA service mark, and

their testimony was not scientific, technical or

specialized, nor based on reliable principles and methods

to qualify as admissible expert testimony.” (brief, p.

18)

The record shows that Messrs. Driscoll and Cosinuke

have numerous professional accreditations,

accomplishments and overall experience in the

construction management field. Although neither witness

has ever testified in a trademark case, that fact hardly

diminishes their expert knowledge in the construction

management field wherein opposer claims the subject mark

to be generic or merely descriptive. Neither witness

received any compensation for his testimony.

Mr. Driscoll indicated that he has testified as an

expert in at least twenty construction claim cases at the

state and federal levels, and that he has appeared before

arbitration panels and a jury. In addition, Mr. Driscoll

is a member of the American Arbitration Association Panel

of Construction Arbitrators, and he has been an

arbitrator on 3-4 occasions. Over a period of forty

years, Mr. Driscoll has taught numerous classes and given

presentations on scheduling techniques, and has been

Opposition No. 121,819

7

involved in authoring parts of three books on the

subject. Mr. Driscoll has been involved in scheduling

analyses for numerous projects, including Denver

International Airport and the Chunnel.

Although Mr. Cosinuke is testifying in this case as

an expert for the first time, he is now retired after a

long career in the construction management field. During

his career, Mr. Cosinuke taught at almost 200 seminars

and workshops (exhibits show Mr. Cosinuke scheduled as a

speaker on the Critical Path Method5 dating back to the

early 1960’s), and was involved in construction schedule

analyses of projects such as the World Trade Center and

the Apollo moon program (Vehicle Assembly Building, and

launch complexes). A representative list shows that Mr.

Cosinuke and his company have been involved in many “mega

projects” (i.e., at least $1 billion).

Accordingly, we find that both individuals qualify

as experts in the construction management field,

specifically with respect to claims analysis of time

delays in construction schedules. In reading their

testimony, we have not, of course, considered them to be

experts in trademark law, and any opinion relating to the

ultimate question of law in this case has been given no

5 See explanation of the Critical Path Method, infra.

Opposition No. 121,819

8

weight. See, e.g., Harjo v. Pro-Football Inc., 50 USPQ2d

1705, 1718 (TTAB 1999); and Medtronic, Inc. v. Medical

Devices, Inc., 204 USPQ 317, 325 (TTAB 1979).

Applicant also has lodged numerous objections,

grounded on hearsay and lack of proper foundation, to

testimony about certain documents. Suffice it to say, in

reviewing the record, that we have accorded this

testimony whatever probative weight it merits.

Applicant further has objected to opposer’s

“imputing particular knowledge to Applicant through

discovery deposition testimony from officers and

directors of Applicant that were not produced to testify

on behalf of Applicant.” (brief, p. 21) After reviewing

the testimony of the three individuals called by

opposer’s notices of deposition, it is readily apparent

that Robert McCue (applicant’s president), James McKay

(applicant’s executive vice president) and William

Wheatley (chairman of a subsidiary of applicant),

officers and shareholders of applicant, all possess

personal knowledge of many aspects of applicant’s

business activities, including those relating to

applicant’s use of the designation TIA. Given their

intimate knowledge of applicant’s business, we find it

appropriate to impute their knowledge to applicant. That

Opposition No. 121,819

9

applicant did not call these individuals as witnesses

does not undermine the probative value of their testimony

during discovery depositions noticed and taken by

opposer. As the rules clearly allow for the introduction

at trial, by notice of reliance, of discovery depositions

a party takes of its adversary, there can be no question

that such depositions are an acceptable method for

gathering evidence for trial. See: Trademark Rule

2.120(j).

In sum, we have considered all of the testimony and

related exhibits, as well as all of the other evidence,

in reaching our decision, according each item whatever

probative value it merits. In doing so, we also note

that applicant, in some instances, has relied upon

certain evidence to which it has objected (see, for

example, applicant’s notice of reliance on the D’Onofrio

testimony with exhibits identified and introduced during

the deposition). In these instances, the objection is

deemed to have been waived.

We now turn to the merits of the opposition.

The Parties

Opposer is a consulting firm engaged in providing

claims analysis, expert witness services, construction

project management oversight services, and project

Opposition No. 121,819

10

scheduling services. In the words of Michael D’Onofrio,

opposer’s president, “[b]asically, we are consultants to

the construction industry.”

IMDISI, Inc. is a holding company for the

intellectual property rights of the original applicant,

MDC Systems, Inc. (hereinafter “MDC”). MDC, like

opposer, is engaged in the construction project and

management consulting field, offering, inter alia,

management of problem projects, preparation of contract

claims, and claims prevention, mitigation and resolution

services. In addition to the present application,

applicant filed an application to register the term TIME

IMPACT ANALYSIS, Serial No. 75/474,122. The applications

were filed on the same day and identify the services in

an identical manner, namely “investigation of problems

experienced on construction projects using a technique

which analyzes the effect of a particular event on

schedulized activities.”6

Applicant’s website (www.mdcsystems.com) shows the

following use, which is representative of other uses in

6 Application Serial No. 75/474,122 was amended to seek

registration on the Supplemental Register. In that application,

the Examining Attorney issued a final refusal grounded on

genericness and applicant filed an appeal. A check of Office

records shows that the appeal was dismissed due to applicant’s

failure to file an appeal brief, and the application was deemed

abandoned on June 10, 2003.

Opposition No. 121,819

11

applicant’s promotional materials: “Time Impact

Analysis. TIA is a court-accepted schedule analysis

technique created by MDCSystems. Coupled with the

application of legal principles, TIA provides a means for

equitably apportioning time-related construction

disputes.”7

Overview of Schedule Analysis

The parties both specialize in some of the same

areas, including analysis of the impact of time delays on

the schedules of construction projects. Construction

claim

7 The literature includes a claim that “Time Impact Analysis”

and “TIA” are service marks of applicant.

Opposition No. 121,819

12

disputes often involve allegations of impact and delay.

Time delays obviously can result in legal claims, and

there are a variety of methods to determine or evaluate

the impact of delays on a specific project. Every

construction project has a schedule:

Time is a critical element in the

construction process. Gaining and

maintaining control of the time factor

is essential if you want to achieve

the goal of completing projects on

time, within budget, and in accordance

with the plans, specifications, and

quality expected. To attain this

objective, it is necessary for all

parties involved in a project to have

a basic understanding of scheduling

and make a commitment to plan and

implement schedules effectively. Such

a commitment is vital in order to cope

with the complex factors of inflation

and escalation, lack of materials,

labor shortages, multiple prime

contracts, third-party relationships,

construction management concepts, and

frequent lack of controls.

In its practical use, a project

schedule is a warning device for

focusing attention on situations at

the stage where trouble is developing,

but still capable of being avoided

with prudent management, decisions,

and actions. In addition, the

schedule is a device for monitoring

progress, measuring progress, and,

therefore, can be used as a sword or

shield in presenting or refuting time

extensions and claims for extra cost.

Over the past three decades, the

importance of scheduling has increased

significantly...As a result, the use

of a schedule for legal purposes

Opposition No. 121,819

13

(sometimes [ex] post facto) has become

almost as important to the success of

a project as the schedule is for

planning and controlling the project

during project implementation.

Time Impact Analysis: A Key for Successful Proof of

Delay (Paper presented by Thomas J. Driscoll to the Fifth

Annual Construction Litigation Superconference, December

6, 1990).

It may become necessary to determine the cost of

time lost because of various types of delays encountered

during the life of a construction project, and that is

where schedules and their updating take on increased

importance:

A construction project by its

very nature is dynamic. Plans and

estimates, no matter how carefully

considered, are bound to change as a

result of unexpected events. Strikes,

unusually bad weather, sudden material

shortages, unforeseen subsurface

conditions, and change orders are a

few of the factors that may result in

a need to change the project schedule.

The project schedule must continually

reflect these changes or become

outdated and misleading. To be

successful, a schedule must be

accurate, and to be accurate, it must

be kept up-to-date and revised on a

regular basis. Indeed, the failure to

update the schedule can be fatal to

the contractor’s claim.

The periodic review of the

project schedule and daily progress is

termed updating. The object of

updating the schedule is to determine

Opposition No. 121,819

14

physical progress to date, identify

sequence revisions and duration

changes, and thus provide a complete

and accurate report of how well the

actual construction progress compares

with the established schedule. In

addition, its purpose is to determine

how all parties intended to continue

the work and meet the overall schedule

objective.

*****

Calculating the extent of delay

can best be accomplished through a

process called time impact analysis.

This procedure utilizes network

schedule techniques (fragnets) and an

analysis of the facts associated with

each delay to demonstrate the effect

of specific delays on the overall

project schedule.

Many project specifications

include time impact analysis

procedures...

When change orders, delays, or

problems do occur, a time impact

analysis should be prepared to

document the facts and circumstances

and to quantify the estimated delay

and/or impact on the project

schedule...

Network schedule techniques have

great utility in evaluating delay and

impact on a project. These techniques

permit simultaneous proof of both the

fact and the cause of delay.

Accordingly, a time impact analysis

can be an effective tool for

determining whether or not certain

work was delayed and if it had an

impact on the overall project.

Proving and Pricing Construction Claims (2d ed. 1996).

Opposition No. 121,819

15

Analysis of delays is directly related to a

technique called “Critical Path Method” (CPM) which is

used to keep a project schedule up to date by accurately

indicating actual performance and delays as they occur.

A continuously updated and revised CPM allows one to do

an accurate schedule analysis at any given point in the

construction project. The Critical Path Method is

basically a graphic presentation of the planned sequence

of activities which shows the interrelationships and

interdependencies of the elements comprising a

construction project. An administrative tribunal with

expertise in the field, the Corps of Engineers Board of

Contract Appeals, described in detail the Critical Path

Method as follows:

The CPM scheduling technique is one

which requires a breakdown of the

entire project into individual tasks

and an analysis of the number of days

required to perform each task. The

analysis is then programmed into a

computer, which produces a chart

showing the tasks and a line which

controls the completion of the overall

work. The line through the nodes, the

junction points for completion of

essential tasks, is known as the

critical path. In addition there are

numerous side paths for subordinate

tasks, which normally can be performed

without affecting the critical path.

However, these subordinate tasks, if

improperly scheduled or unduly delayed

in performance, can on occasions

Opposition No. 121,819

16

become critical and thus change the

critical path for the entire project.

The critical path method of scheduling

requires the logical analysis of all

the individual tasks entering into the

complete job and the periodic review

and re-analysis of progress during the

performance period. It is essential

that any changes in the work and the

time extensions due the contractor be

incorporated into the progress

analysis concurrently with the

performance of the changes, or

immediately after the delay, and thus

integrated into the periodic computer

runs to reflect the effect on the

critical path. Otherwise, the

critical path chart produced by the

computer will not reflect the current

status of work performed or the actual

progress being attained.

Continental Consolidated Corp. v. United States, ENG BCA

Nos. 2743, 2766, 67-2 BCA, PP 6624: 68-1 BCA PP 7003.8

As shown by the record, network analysis techniques,

such as Critical Path Method, were first introduced into

the construction field in the early 1960’s. Governments

now require network analyses on most, if not all, major

construction projects. The utilization of Critical Path

Method techniques to plan and schedule work has become

8 A copy of this decision was introduced into the record by

opposer. Generally, decisions of courts or other tribunals are

relied upon for legal principles, rather than for purposes of

establishing facts. Here, however, we find that the Board of

Contract Appeals has presented a succinct summary of factual

information found in materials or testimony otherwise properly

of record.

Opposition No. 121,819

17

the accepted standard in the construction field. Boards

of contract appeals and courts have shown a willingness

to utilize such techniques to identify delays and their

causes. Jon M. Wickwire, Stephen B. Hurlbut and Lance J.

Lerman, “Use of Critical Path Method Techniques in

Contract Claims: Issues and Developments 1974 to 1988,”

Public Contract Law Journal, (March 1989).

One of the techniques which has its foundation in

Critical Path Method principles is referred to as “time

impact analysis.” According to Mr. Driscoll, the

technique has “been around for ages” dating back to the

early 1960’s; the objective of such analysis is “to

pinpoint, isolate, and quantify any time impact

associated with a specific issue and determine its time

relationship to past or other current delays.”

Genericness Analysis

A mark is a generic name if it refers to the class

or category of goods and/or services on or in connection

with which it is used. In re Dial-A-Mattress Operating

Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001),

citing H. Marvin Ginn Corp. v. International Association

of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed.

Cir. 1986). The test for determining whether a mark is

generic is its primary significance to the relevant

Opposition No. 121,819

18

public. Section 14(3) of the Act; In re American

Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed.

Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19

USPQ2d 1551 (Fed. Cir. 1991); and H. Marvin Ginn Corp. v.

International Association of Fire Chiefs, Inc., supra.

Evidence of the relevant public’s understanding of a term

may be obtained from any competent source, including

testimony, surveys, dictionaries, trade journals,

newspapers, and other publications. In re Northland

Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961

(Fed. Cir. 1985).

The Category of Services and the Relevant Public

In determining genericness, we must first identify

the category of services at issue. As noted above,

applicant’s services are identified as “investigation of

problems experienced on construction projects using a

technique which analyzes the effect of a particular event

on schedulized activities.” Applicant’s Internet website

indicates that its analysis “provides a means for

equitably apportioning time-related construction

disputes” and that analysis of scheduling documents

“allows assignment of causation and quantification of

delay.”

Opposition No. 121,819

19

In this case, the category or type of services

identified in the involved application is clear:

scheduling analysis services for construction projects.

Also clear is the relevant public for these

services. In this case, the relevant public is highly

sophisticated, and would include engineers, architects,

lawyers, construction owners, contractors and other

professionals in the construction management field who

purchase schedule analysis services. The relevant public

also would include courts, boards of contract appeals,

arbitrators and others in the field who read or are

concerned with schedule analysis reports. This relevant

public, comparatively small in size, would be involved in

some capacity with schedules in construction projects

(before, during or after). See: The Loglan Institute

Inc. v. The Logical Language Group Inc., 962 F.2d 1038,

22 USPQ2d 1531 (Fed. Cir. 1992)[limited size of relevant

group]. Oftentimes, the construction projects involve

major corporations and governmental agencies. Mr.

D’Onofrio testified that time impact analyses can cost

upwards of hundreds of thousands of dollars.

That brings us to the critical question in this

case, namely whether the designation “TIA” is understood

by the relevant public in the construction management

Opposition No. 121,819

20

field primarily to refer to the class of scheduling

analysis services involving time impact analysis.

We find that opposer, as the party making the charge

of genericness, has proved its claim by a preponderance

of the evidence. Martahus v. Video Duplication Services

Inc., 3 F.3d 417, 27 USPQ2d 1846, 1850 (Fed. Cir. 1993).

In the construction management field, “TIA” is synonymous

with “time impact analysis,” and the relevant public in

the field will know what “TIA” means.

Time Impact Analysis

We first examine the record with respect to uses of

the term “time impact analysis.” The record is replete

with such use in a generic manner to name a type or kind

of schedule analysis in construction projects.

O’Brien had been requested by the

Contracting Officer to prepare a time

impact analysis to determine how the

change proposals and extra work claims

had affected project completion...

(Appeal of NAB-Lord Associates, Postal

Service Board of Contract Appeals,

1984 PSBCA LEXIS 51, August 30, 1984)

Once construction is commenced, it may

be necessary to quantify the time

impact that may be caused by various

types of delays encountered during a

project. Calculating the extent of

delay can best be accomplished through

a process called time impact analysis.

(Manual of Standards of Practice,

Construction Management Association of

America (1986))

Opposition No. 121,819

21

“Time impact analysis” uses the

updated as-built schedule as the

baseline to evaluate any impact or

delay to the work.

(Construction Law Handbook (1999))

On March 9, 1993, Cogefar submitted a

time impact analysis to the FBOP

setting forth the events which had a

significant impact on the work to date

and a projection of how those events

would impact the contract completion

date.

(Appeal of Cogefar-Impresit U.S.A.,

Inc., U.S. Department of

Transportation Board of Contract

Appeals, 1997 DOT BCA LEXIS 8, August

27, 1997)

Once a project is started, it becomes

necessary to determine the amount of

time impact that may be caused by the

various types of delays encountered

during the life of the project. A

suggested method for calculating the

extent of delay is the use of updated

(as-built) critical path method (CPM)

schedules in conjunction with a

process called time impact

analysis...In recent decades, the

techniques of time impact analysis

have been used successfully on

projects to justify or refute time

delays.

(Jon M. Wickwire, Thomas J. Driscoll

and Stephen B. Hurlbut, Construction

Scheduling: Preparation, Liability,

and Claims, (1991))

The Time Impact Analysis technique is

most effective when required by the

contract as part of the scheduling

specification.

(Jon M. Wickwire, Stephen B. Hurlbut

and

Lance J. Lerman, “Use of Critical Path

Method Techniques in Contract Claims:

Issues and Developments 1974 to 1988”,

Opposition No. 121,819

22

Public Law Contract Journal, (March

1989))

Calculating the extent of delay can

best be accomplished through a process

called Time Impact Analysis, which is

a time estimating procedure that

utilizes networking techniques to

demonstrate the effect of specific

delays on the project schedule.

(Thomas J. Driscoll, The Project

Schedule as a Tool, Sword and Shield,

paper prepared for The Corps Of

Engineers Network Analysis for

Executives Seminar, May 1984)

As to such third-party uses of the term as shown

above, applicant’s president, Mr. McCue, states that “I

am aware of some people using the term time impact

analysis infrequently because it is associated so closely

with us that it is just marketing for MDC every time they

use it.” Mr. McCue adds, “[I]t is my testimony now and

forever more that we do it right and other people are

imitators and they do it wrong. They use the name to

bastardize the technique to make their case, make their

claim.” When asked to respond to other uses of “time

impact analysis” in the industry, applicant’s executive

vice president, Mr. McKay, said that “when a competitor

says he has performed a time impact analysis, he means

analysis of the time effect of some condition or activity

or event, and that is different and separate from its

Opposition No. 121,819

23

cost impact or some other impact. It doesn’t mean that

he has used the same methodology that we would use and

given it the same name.” While maintaining that the term

is a source identifier of services emanating from

applicant, Mr. McKay added that “[o]ther businesses in

our line of work do time impact analysis in the sense of

the effect upon project completion of an event or set of

circumstances. They characterize that as a time impact

but it is not Time Impact Analysis...I have seen other

types of analysis than what I just described submitted or

incorporated into reports prepared by other experts and

identified as time impact analysis but they used a

different methodology. They used the same name, they use

the same identify term [sic], but it is not Time Impact

Analysis as we developed the procedure and as we apply

it.”9

The term “Time Impact Analysis” clearly is generic

for the category of services listed in applicant’s

recitation. It names a type or kind of service, and the

9 The comments of Messrs. McCue and McKay are not persuasive.

Although applicant asserts that it “is not looking to obtain a

trademark registration for any methodologies used...but rather

for the name of [applicant’s] specialized services,” one cannot

avoid genericness because there are minor differences in the way

that one’s product or service differs from the norm, or from

those of others. That is to say, while applicant’s

“specialized” services may be slightly different from the

Opposition No. 121,819

24

relevant public, including sophisticated attorneys,

contractors and engineers in the construction field,

would perceive the term as generic. The fact that the

term often appears in print in initial capital letters,

that is, “Time Impact Analysis,” does not compel a

different result.

TIA

The fact that the term “time impact analysis” is

generic does not, however, end the inquiry in this case.

That is to say, it does not necessarily follow that the

initial letters of the generic term are recognized as

being substantially synonymous with “time impact

analysis.” Whether the initials for this generic term

should also be deemed generic presents a separate, yet

related issue. In determining this issue, we must

examine whether the letters “TIA” are generally

recognized and used in the construction field as an

accepted abbreviation for “time impact analysis.”

An abbreviation or initialism of a generic name

which still conveys to the relevant public the original

generic connotation of the abbreviated name is still

generic. Acronyms and initialisms are often used

interchangeably with the full generic name and recognized

services of competitors, the name of the category of applicant’s

Opposition No. 121,819

25

as equivalent. The predecessor to our primary reviewing

court had occasion to deal with this issue in the case of

Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110

USPQ 293 (CCPA 1956). In that case, involving the

registration of the letters CV as a trademark for

ophthalmic lens blanks, the Court stated:

The letters “CV” are, of course, the

initial letters of the words

“continuous vision,” and it is

possible for initial letters to become

so associated with descriptive words

as to become descriptive themselves.

[citations omitted] It does not

follow, however, that all initials or

combinations of descriptive words are

ipso facto unregistrable. While each

case must be determined on the basis

of the particular facts involved, it

would seem that, as a general rule,

initials cannot be considered

descriptive unless they have become so

generally understood as representing

descriptive words as to be accepted as

substantially synonymous therewith.

Id. at 295. See also, e.g., Southwire Co. v. Kaiser

Aluminum 7 Chemical Corp., 196 USPQ 566 (TTAB 1977); and

Intel Corp. v. Radiation Inc., 184 USPQ 54 (TTAB 1974).

See generally: J.T. McCarthy, McCarthy on Trademarks and

Unfair Competition, §12:37 (4th ed. 2001).

services is still “time impact analysis.”

Opposition No. 121,819

26

We thus turn to examine the uses of “TIA” revealed

by the record. Numerous examples of such uses have been

introduced, and a representative sample appears below.

WHI’s current Time Impact Analysis

(TIA) concludes that cell partitions

are causing critical path delays to

Substantial Completion of the Project.

(Time Impact Analysis (TIA) re Cell

Partitions and Security Windows on

Federal Detention Center Brooklyn, New

York for Morganti/Trataros, Joint

Venture, November 6, 1996)

To assess the delays that caused and

otherwise contributed to the untimely

completion of the PAX, [opposer]

undertook a series of Time Impact

Analyses (TIA). The TIA is a schedule

analysis technique that allows the

assessment of delay in a manner that

closely proximates the actual progress

of the work...As of TIA #1, 6 May

1996, Angelini had lost 52 days along

the critical path of the

plan...Angelini’s contemporaneous

schedule update with data date 30 June

1996 is most current with the status

date of TIA #2...despite a one and a

half month delay to the critical path

of the project during the period of

TIA #3...

(Schedule Analysis re Mobility

Passenger Processing Center, Dover Air

Force Base (December 1999))

The schedule analysis for a particular

time period is referred to in this REA

as a Time Impact Analysis (TIA). The

TIAs were performed in chronological

order, at significant dates during

contract performance. Each TIA

includes an as-built schedule from the

status date forward based on AEL’s

contemporaneous planned schedule.

Each TIA schedule was compared with

Opposition No. 121,819

27

the summary as–planned schedule, and

with the previous TIA, in order to

determine controlling and

noncontrolling delays, and concurrency

among these delays.

(ECM Aircraft Electronic Combat

Trainer, AEL Industries, Inc.’s

Request for Equitable Adjustment, May

9, 1995)

Time Impact Analysis (TIA) is a

schedule analysis technique designed

to identify and quantify schedule

impacts contemporaneously through an

analysis of the status of the project

at certain critical points during the

course of construction.

(Schedule and Damages Analysis in

Construction Contract Disputes, CLE

International, (The Holloway

Consulting Group, LLC, September 1997)

at www.hollowayllc.com)

Project Management, CPM Schedule

Analysis, Cost Evaluation, TIA Time

Impact Analysis Claims & Negotiation

Preparation

(Jacobs Consultant Services website

accessed at www.firms.findlaw.com)

Time Impact Analysis shall be used by

the Contracting Officer in determining

if a time extension or reduction to

the contract milestone date(s) is

justified...Each TIA shall include...

(Department of the Navy, General

Requirements, Network Analysis

Schedules September 30, 2000))

Contractors shall be required to

provide an accurate Time Impact

Analysis (TIA) using the CPM schedule

to justify any time adjustment. It is

imperative that the CPM provision is

enforced for any contractor request by

requiring a TIA...the TIA shall be

contractor-submitted and engineeraccepted.

Opposition No. 121,819

28

(Construction Program Procedure

Bulletin, State of California

Department of Transportation (January

2001))

The Revised Quantum claim was based on

a Time Impact Analysis (“TIA”)...it

submitted its TIA on October 9, 1998,

to the CO, and “[t]hat TIA qualified

and revised the number of impacted

days the Brero was claiming against

the Respondent.”

(Brero Construction, Inc., U.S.

Department of Labor Board of Contract

Appeals (March 29, 2000))

The time impact analysis (TIA) was

developed to enable the parties to

assess a contractor’s right to receive

a time extension in a real-time manner

and to provide the ability for the

parties to resolve disputes prior to

an exhaustive after-the-fact analysis

reconstructed upon completion of the

project...The TIA is a chronological

and cumulative method to analyze

delay...The TIA has been widely

accepted and has significant merit.

(Jon M. Wickwire and Stuart Ockman,

Use of Critical Path Method on

Contract Claims--2000, The

Construction Lawyer, (October 1999))

Time Impact Analysis (TIA)—Approach—

Advantages—Disadvantages—Case Studies

CPM Scheduling: Changes and Dispute

Resolution

(www.fedpubseminars.com)

Each request for a time extension

based on claimed delays or changed

work was to be accompanied by a time

impact analysis (TIA), based upon the

date or dates when changes were issued

or delays began...With respect to the

TIAs, the contract explicitly

requires...

Opposition No. 121,819

29

(Board of Contract Appeals, General

Services Administration, SAE/Americon-

-Mid Atlantic, Inc. v. General

Services Administration, (October 23,

1998))

The record also includes excerpts from a manual and

a print-out version of a Power Point presentation for the

“Student’s Training Manual” in Advanced Schedule Training

prepared for the Naval Facilities Engineering Command in

July 2001. The manual includes the following statements:

“The Contractor shall submit a Time Impact Analysis (TIA)

illustrating the influence of each change or delay on the

Contract Completion Date or milestones...Each TIA shall

include a Fragmentary Network (fragnet) demonstrating how

the Contractor proposes to incorporate the impact into

the Project Schedule.” The Power Point presentation

indicates that “Time Impact Analysis” is a widely

recognized and accepted technique to demonstrate the

effects of a specific delay on a project schedule.

Beginning with the seventh slide of the presentation

until the conclusion, just the initialism “TIA” is used,

as for example, “TIAs work most effectively if regular

schedule updates are performed.”

Also of record is a purported expert report and

cover letter (D’Onofrio dep., Ex. No. 25). The report

was prepared in connection with other litigation, by an

Opposition No. 121,819

30

individual not associated with either of the two parties

herein. Jay Pandya asserts, in the cover letter to

opposer dated January 23, 2001, that he has been using

the terminology “Time Impact Analysis” and “TIA” since

1980. The September 27, 1995 report, prepared in

connection with claims submitted on a Lake Michigan

filtration plant, is replete with references to both

“Time Impact Analysis” and “TIA.”

The above uses are consistent: in many printed

publications, papers and the like, the first use of this

specific type of scheduling technique is identified by

the designation “Time Impact Analysis (TIA).” Subsequent

uses within the same article or paper are of “TIA.” Mr.

D’Onofrio testified that “[a]s I do with many technical

terms, the first time I write it, such as time impact

analysis, in order to not keep repeating time impact

analysis throughout the paper or report, I would put an

acronym for that, and the common acronym associated with

time impact analysis is TIA. So I would use it by

putting TIA in parenthesis after the first time I used

time impact analysis and throughout the rest of the

report I would use TIA in place of time impact analysis.

I also think that is how it is commonly used in the

industry...” Mr. D’Onofrio also stated the obvious, that

Opposition No. 121,819

31

it is just easier to write out “TIA” and say “TIA” in

oral presentations. He also indicated that he has

provided expert testimony in court cases and that the

reports “that I have written and others in our firm have

written, contain the term time impact analysis and

generally in those reports we have put the acronym TIA in

parentheses behind it and used that throughout the report

and also on the graphics.” Mr. Wheatley seconded this

view when he stated: “It is common practice in writing

articles to use acronyms or abbreviations for terms in

such a way that the term is just introduced with the

acronym in parenthesis after it and then the acronym is

used thereafter.” Further, Mr. D’Onofrio stated that “we

don’t distinguish between the long and the short

version.” See: In re Abcor Development Corp., 588 F.2d

811, 200 USPQ 215, 219 (CCPA 1978)[Rich, J., concurring,

noting that “the users of language have a universal habit

of shortening full names--from haste or laziness or just

economy of words.”].

The Seventh Circuit, in finding that “L.A.” was a

descriptive abbreviation for the descriptive words “low

alcohol,” made the following observation:

It is possible, although not likely,

that the public might become

acquainted with initials used in

connection with a product without ever

Opposition No. 121,819

32

being aware that the initials were

derived from, and stood for, a

descriptive phrase or generic name.

This is conceivable, though rather

improbable, because the connection

between the initials and the

descriptive words is in normal course

very likely to become known. The

process of identifying initials with

the set of descriptive words from

which they are derived is, after all,

usually fairly simple. Ordinarily, no

flight of imagination or keen logical

insight is required. There is a

natural assumption that initials do

generally stand for something. All

that needs to be done is to convert

the next-to-obvious to the obvious by

answering the inevitable question:

What do the initials stand for?

[citations omitted] As a rule, no

very extensive or complicated process

of education or indoctrination is

required to convey that initials stand

for descriptive words...[T]here is a

heavy burden of a trademark claimant

seeking to show an independent meaning

of initials apart from the descriptive

words which are their source...[A]s a

practical matter, initials do not

usually differ significantly in their

trademark role from the descriptive

words that they represent.

G. Heileman Brewing Co. v. Anheuser-Busch, Inc., 873 F.2d

985, 10 USPQ2d 1801, 1808-09 (7th Cir. 1989).

As noted above, we have accepted Mr. Driscoll as an

expert in schedule analysis in the construction

management field. When he was asked who coined the term

“Time Impact Analysis,” he responded “You’re probably

looking at him, but I’m not going to claim it.”

Opposition No. 121,819

33

Throughout his testimony, Mr. Driscoll reiterated his

view that “Time Impact Analysis” and “TIA” are widely

used industry terms--“[i]t is just so routine in the

industry.” Although Mr. Driscoll indicated that he uses

the full term “Time Impact Analysis” in his writings,

“[t]o me, TIA is Time Impact Analysis. I refer to it all

the time. If you were in my classes, you would know what

it is real quick.” At one point, Mr. Driscoll stated:

“To me TIA is Time Impact Analysis; they are

interchangeable as far as I am concerned.” Mr. Cosinuke,

with long-time experience in the field, weighed in with

the same view, and indicated that the letters “TIA”

connote “Time Impact Analysis.”

Mr. McCue, while maintaining that both designations

are proprietary to applicant, also responded “[p]ossibly”

to the question whether he considered “Time Impact

Analysis” and “TIA” to be interchangeable. When asked if

“TIA” ever meant “Time Impact Analysis,” he responded

“[i]t may.” He went on to indicate that “sometimes on

our schedule graphics we would use shorthand notations

when we are doing a series of analyses and when we may

put TIA in those cases rather than using the words Time

Impact Analysis #1 or #2.” Mr. McKay, another of

applicant’s officers, indicated that “TIA” stands for

Opposition No. 121,819

34

“Time Impact Analysis” when used “in the context of

schedule analysis” and when asked if the terms were

interchangeable, Mr. McKay answered “[I]n the same

context I would say so.” Mr. McKay also noted that “the

term TIA in the context of construction schedule analysis

frequently refers to Time Impact Analysis, but I would

not say that is exclusive.” When asked what other

meanings TIA might have in the field, Mr. McKay responded

“I have no idea.”

The record also shows an almost complete failure on

applicant’s part, in the face of generic uses of “TIA” by

others in the field, to police its purported rights in

the designation “TIA.” See, e.g., King-Seeley Thermos

Co. v. Aladdin Industries, Inc., 321 F.2d 577, 138 USPQ

349, 350-51 (2d Cir. 1963).

Based on the extensive record in this case, we

conclude that the initialism “TIA” has become so

generally understood as representing the generic term

“time impact analysis” as to be accepted as substantially

synonymous therewith.

In so finding, we recognize that the only uses of

“TIA” per se in printed materials are after an initial

use of “Time Impact Analysis (TIA),” but we do not

believe that this fact warrants a finding that the

Opposition No. 121,819

35

initials themselves are registrable. The size of the

relevant public herein is relatively small, owing to the

highly sophisticated nature of the services. Purchasers

of such services, for example, attorneys, contractors,

engineers and the like, already are quite knowledgeable

in what they are seeking. We have no doubt that “no

flight or imagination or keen logical insight is

required” of them in perceiving that the initials “TIA”

are the generic equivalent of the term “time impact

analysis.” See: G. Heileman Brewing Co. v. Anheuser-

Busch, Inc., supra at 1808. Likewise, boards of contract

appeals and others presented with “TIA” reports would

immediately understand the nature of the report. Given

the interchangeability of the letters and the term, the

initialism “TIA” will be perceived as the equivalent of

the generic term “time impact analysis.”

We conclude that “TIA” has been used by opposer and

others in or associated with the construction industry as

the generic initialism for the scheduling technique known

as “time impact analysis.” As such, it has fallen into

the lexicon of the language utilized in this field

serving to name a particular type or kind of schedule

analysis rather than a service emanating from a single

source of such services.

Opposition No. 121,819

36

Asset Purchase Agreement

In support of its argument against the claim of

genericness, applicant has relied upon an asset purchase

agreement wherein, according to applicant, it purchased

proprietary rights in the involved mark from a third

party. Applicant contends that competitors and customers

“attribute TIA to applicant, and no one else” and that

“MDC, through its lineage of companies both under the MDC

name and others, but through the same core of people and

corporate assets, is closely associated in the minds of

others within this specialty field by its TIA mark.”

Applicant claims to have obtained the trademark

rights to “TIA” from a predecessor in interest, namely

Day & Zimmerman International, Inc. (D&Z). According to

applicant, it purchased from D&Z all intellectual

property rights relating to D&Z’s construction claims

business with the exception of certain D&Z marks

identified in the asset purchase agreement between

applicant and D&Z. Mr. McCue, applicant’s president,

maintains that he and a deceased employee of D&Z are the

only persons who would be aware of the intentions of the

parties to the agreement. Applicant argues: “While D&Z

did not file any applications to federally register TIA

or other marks, the fact that D&Z did not object to any

Opposition No. 121,819

37

trademark applications filed by Applicant after Applicant

purchased the assets of MDC from D&Z, tells us that the

marks were indeed transferred as part of the intangible

intellectual property acquired by Applicant.” (brief, p.

15). Of record is a copy of the February 24, 1997 Asset

Purchase Agreement.10 The agreement refers to transfer of

the trade names “MDC” and “MDC Systems,” but the

agreement makes no mention of the designations “TIA” or

“Time Impact Analysis.” Paragraph 15.0 of the agreement

provides as follows:

ENTIRE AGREEMENT. This Agreement sets

forth the entire understanding of the

parties hereto with respect to the

transactions contemplated hereby. It

shall not be amended or modified

except by written instrument duly

executed by each of the parties

hereto. Any and all previous

agreements and understandings between

or among the parties regarding the

subject matter thereof, whether

written or oral, are superseded by

this Agreement.

Annex 1 to the agreement is captioned “Definitions,” and

one of the listed definitions is “Assigned Tradename.”

The term is defined as follows: “‘MDC’, ‘MDC Systems’,

logos including these names, and variants thereof. The

tradenames ‘Day’, ‘Day & Zimmerman’, ‘D&Z’, ‘Yoh’, logos

10 Although the agreement has been filed under seal, we see no

harm in disclosing the provisions specifically referred to in

Opposition No. 121,819

38

including these names and variants thereof are expressly

excluded from any assignment of tradenames, trademarks or

other intellectual property made under the Agreement.”

Also of record is the testimony of James Goodman,

president and general counsel of D&Z, who appeared

pursuant to subpoena. Although Mr. Goodman indicated

that he had no personal involvement in or knowledge of

the negotiations leading to the agreement, he reiterated

that the agreement made no mention of either “TIA” or

“Time Impact Analysis.” In an e-mail exchange with

applicant, introduced as an exhibit to his testimony, he

again stated that the subject designation “TIA” was not

included in the agreement. Mr. Goodman also testified

that his view was based on a review of the agreement and

other documents in a file relating to the agreement, and

a “discussion I had with the attorney in my department

who was directly involved in the transaction.”

In a letter dated March 13, 2002 from Mr. McCue to

Harold Yoh, D&Z’s president, Mr. McCue essentially

requested Mr. Yoh to confirm that rights to designations

such as “TIA” and “Time Impact Analysis” were transferred

to applicant. Mr. McCue wrote: “In fact, during the

negotiations between myself, on behalf of [applicant],

this decision.

Opposition No. 121,819

39

and Barry Beuchner [the now deceased employee of D&Z], on

behalf of the Day & Zimmerman conglomerate, it was made

clear that [applicant] purchased all of the intellectual

property of the claims unit, but so that there was no

misconceptions or misinterpretations, the D&Z marks were

specifically identified in the parties’ Asset Purchase

Agreement as not being sold to [applicant] because this

language in the agreement prepared by Day & Zimmerman

conglomerate was so broad that it could be misinterpreted

by third parties to include the D&Z marks.” Mr. McCue

goes on to request Mr. Yoh to confirm that D&Z does not

reserve any rights in “TIA” or “Time Impact Analysis.”

Upon such confirmation, Mr. McCue writes that “we will

gladly release the remaining funds and complete the

payment for these assets.”

What is somewhat unusual about Mr. McCue’s request

is that applicant’s payments pursuant to the agreement

already were past due (see D&Z’s letter dated February

15, 2002). Mr. Goodman responded in a letter dated March

28, 2003 which reads, in part, as follows:

The approach you have taken in your

letter constitutes extreme bad faith

on your part. You are in possession

of funds owed in connection with the

MDC asset purchase that are more than

one year overdue, and you are now

holding them hostage for a document

that you apparently intend to use to

Opposition No. 121,819

40

support your position in litigation

before the U.S. Patent and Trademark

Office’s Trademark Trial and Appeal

Board--litigation in which Day &

Zimmerman is not a party.

The Asset Purchase Agreement dated February 24, 1997

speaks for itself: it did not cover transfer of rights,

if any, to the designations “TIA” or “time impact

analysis.” The fact that any such rights were not

conveyed comes as no surprise inasmuch as it is apparent

that D&Z never claimed proprietary rights in either

designation. Employees (both former and current) of D&Z

who testified in this case indicate that D&Z never

claimed exclusive rights in the term. Even James McKay,

applicant’s executive vice president (and a former

employee of D&Z), when asked if D&Z ever claimed that

“time impact analysis” or “TIA” were proprietary terms,

replied “not to my knowledge.” There is neither

testimony nor a single exhibit which suggests that D&Z

ever claimed exclusive rights in “TIA” or “time impact

analysis,” and, thus, that D&Z was conveying any

proprietary rights in the designations.

We would point out that, in any event, even if D&Z

had claimed proprietary rights in “TIA,” and even if the

agreement had conveyed such purported rights to

applicant, this would not be dispositive or even

Opposition No. 121,819

41

particularly probative evidence on the genericness issue.

Whatever the intention of applicant and the assignee may

have been regarding whether “TIA” is a trademark, that

fact simply does control our analysis. We must assess

the meaning of “TIA” to the relevant public, regardless

of how D&Z and applicant may have treated “TIA” in their

dealings with each other.

Additional Arguments

Applicant’s recent registration of the mark TIME IN

ACTION for “consulting services in the field of

construction management; arbitration, alternative dispute

resolution and litigation support services; consulting

services in the field of arbitration, alternative dispute

resolution and litigation support services; consulting

services in the field of construction project problem

solutions which analyzes the effect of a particular event

on scheduled activities”11 is not persuasive of a

different result. Applicant essentially argues that the

designation “TIA” may also be an initialism for this

mark.

A few comments are in order. First, the underlying

application was not filed until seven months after

11 Application Serial No. 76/295,830, filed August 6, 2001,

alleging a bona fide intention to use the mark in commerce. The

Opposition No. 121,819

42

commencement of this proceeding. When Mr. McKay was

asked in October 2001 “What is Time in Action?”, he

responded: “It sounds to me like some sort of procedure

or process; I don’t know, I’m not familiar with the

term.” Simply put, it is not likely that prospective

purchasers would perceive “TIA” as an initialism for TIME

IN ACTION rather than “time impact analysis.” Given the

particular circumstances and timing of the filing, it is

disingenuous to suggest otherwise.

Applicant argues that the letters “TIA” have other

meanings in other fields, as for example, “transient

ischemic attack” in the medical field. Suffice it to

say, the issue must be determined in the context of the

specific field in which applicant’s services are

rendered. These other meanings are irrelevant when

determining the genericness of the letters when used in

connection with applicant’s specific services. When Mr.

Wheatley was asked

whether TIA ever gets used in connection with any phrase

other than “Time Impact Analysis” in the construction

application matured into Registration No. 2,676,834 on January

21, 2003, setting forth dates of first use of October 30, 2000.

Opposition No. 121,819

43

industry, he answered “not that I can recall.”

Mere Descriptiveness Analysis

In the event that the designation TIA ultimately is

found to be not generic, we turn to address the question

of mere descriptiveness. No claim of acquired

distinctiveness under Section 2(f) has been raised in

this case by applicant and, in response to the Board’s

questioning at the oral hearing, applicant acknowledged

this point. Specifically, counsel acknowledged that if

the matter sought to be registered were found to be

merely descriptive, then no registration would issue

based on the involved application.

A mark is merely descriptive if, as used in

connection with the goods and/or services, it describes,

i.e., immediately conveys information about, an

ingredient, quality, characteristic, feature, etc.

thereof, or if it directly conveys information regarding

the nature, function, purpose, or use of the goods and/or

services. See: In re Abcor Development Corp., supra; In

re Eden Foods Inc., 24 USPQ2d 1757 (TTAB 1992); and In re

American Screen Process Equipment Co., 175 USPQ 561 (TTAB

1972). The issue is not determined in a vacuum, but

rather the mere descriptiveness of the mark is analyzed

as the mark is used in connection with the goods and/or

Opposition No. 121,819

44

services. An abbreviation of a descriptive term which

still conveys to the buyer the descriptive connotation of

the original term will still be held to be descriptive.

Spin Physics, Inc. v. Matsushita Electric Industrial Co.,

168 USPQ 605 (TTAB 1970).

We find that the testimony and evidence establishes

that the designation TIA is, at a minimum, merely

descriptive when used in connection with applicant’s

services. Given the interchangeability of “TIA” and

“time impact analysis,” the letters immediately and

directly convey information about applicant’s services,

that is, that the services involve time impact analysis.

Decision

The opposition is sustained, and registration to

applicant is refused.

hello heather can i have a copy at deb.icd@tajnet.com

regards

deb

Heather,



would you mind sending me one also? my e-mail is pedropogi@yahoo.com



thanks

Can you send me the TIA document? olyke@yahoo.com

Thanks.

Heather…



I keep saying to myself “stop reading PlanningPlanet, don’t get involved, life is too short”. Unfortunately I am to vain to resist when I see something that I mistakenly think I might be able to contribute to.



Thank-you for sending me the MDCS paper. I have quickly read it and pheww… it is not what we call Time Impact Analysis in the UK. For those who have debated methods in the forum my quick overview is that it is an elaborate “as-planned –v- as-built” analysis.



It is the first time I have seen, in a posting here © and ®. And you do seem to emphasise what you believe is the misuse of the terms if used when associated with a delay analysis. Just think what it would be like if some commercial entity decided to trade mark the terms ‘As-Planned Schedule’ or ‘As-Built Schedule’ In my very humble option, and I stand to be corrected, the spirit of this forum is one of friendly debate and exchange of ideas and knowledge. We try not to go on about how fantastic the companies who we work for. Most people who are active in the forums, I guess, belong to businesses that have experience on a wide variety of project types and execution methods and so on.



A good starting point here would be to get hold of the Society of Construction Law’s Delay and Disruption Protocol. You can download it for free (I think) at www.eotprotocol.com. The Protocol has stimulated at lot of interest in the UK and beyond and describes four methods of analysis; including ‘as-built v as-planned’ and ‘time impact analysis’. The methods, names and descriptions have become accepted in the analysis fraternity so we tend to use them as a basis for understanding and discussion. Again, I might be mistaken, but don’t think many here would recognise your description of time impact analysis (maybe we should all learn to refer to it as Time Impact Analysis (TIA)®!



To go back to your original post you started by saying “Over the past few years there has been a debate as to where, when and by who Time Impact Analysis was developed”. I asked if you could shed some light on that debate as it seems to have passed me by.



Apologies if I sound like a miserable git – it is probably because I am!



Best regards



David



ps. When I suggested you should have declared an interest, I did not mean ‘tell us what your interests are’, I mean it would have been polite for you to tell us you have a vested interest in promoting or protecting Time Impact Analysis (TIA)®. I was taken in initially that you were just a Joe Soap with an interest in Time Impact Analysis.



pps. If anyone else wants the paper please PM me – I trust it is not © and I am allowed to do that (I am sure Heather will oblige too).

Heather



That’s pretty impressive for a first post – it sounds a bit like a positioning statement to me but hey ho - may I ask a few questions as I have a vested interest….



I try to keep my eye on current debate about delay analysis and I haven’t seen anything of the debate you say has ensued over the past few years – can you direct me please.



I have also missed the MDC Systems paper – I would be very grateful if you could let me have a copy or direct me where I could find one (david.bordoli@driverconsult).



Here in UK (or maybe it is just me) I don’t think we have TIA services. We use TIA as a method to analyse project delays – I think the opinion of the UK delay analyst business is that the method used to analyse delays depends on the records, the nature of the delays, the contract and so on and just offering a TIA service would be like offering a one size suits all garment to a population of different sized people.



Maybe what we in the UK call Time Impact Analysis, as generally defined in the SCL Protocol, is not what you call Time Impact Analysis. I have just been doing some research into some aspects of the Mirant –v- Ove Arup case (http://www.bailii.org/ew/cases/EWHC/TCC/2007/918.html). The judgement says that Mr Lechner, the principal of Price Waterhouse Cooper in San Franscisco was the programming expert on behalf of the claimants. I tracked down on the PWC site a case study for the project (http://www.pwc.com/images/gx/eng/about/ind/ip/power_station_case_study…). You will see that there is a box entitled ‘Windows Analysis’ – the first strength listed there is ‘Preferred methodology (EOT Protocol)’. I am assuming, maybe wrongly, that ‘EOT Protocol’ refers to the Society of Construction Law Delay and Disruption Protocol. If that is the case it is wrong on two counts; Time Impact Analysis is the Protocol’s preferred methodology and Windows Analysis does not feature in the Protocol at all. So I am wondering maybe there is a terminology thing going on here.



I returned to college 1992-1994 to research methods of analysing construction project delays. My dissertation was The Simulation of Construction Project Delays Using Network Techniques, I like to think it was well researched but I must have missed the MDCS paper – although I had an assistant in the US I still found no references to Time Impact Analysis. Subsequently, the method of analysis I developed was published in Construction Management and Economics (A methodology for assessing construction project delays. Bordoli D. W. & Baldwin A. N. Construction Management & Economics, Volume 16, Number 3, 1 May 1998, pp. 327-337). CME is a peer reviewed publication that only publishes original work. During the lengthy refereeing process (I think we originally submitted the paper in 1995) one of the referees suggested that we formulate a name for the method – we rejected that suggestion!



Between completing my research and publication of our paper, Keith Pickavance published Delay and Disruption in Construction Contracts . In the first and second editions one of the techniques described was the “snapshot” or “time impact” analysis . Note, it is not decribed as “time impact analysis”. There is no mention in the footnotes of the MDSC paper - usually KP’s references are meticulous. However, as sections of the text and the description of the method of analysis were virtually identical to that in my research and paper I assumed the method being described was mine.



The method then seems to have been adopted by the SCL Protocol (published in 200) and has now been name ‘Time Impact Analysis’. I do not have KP’s third edition to hand, I can’t be sure but I believe he also refers to the method of Time Impact Analysis now, I don’t know if the MDCS paper is cited, mine is not.



Having just looked on the MDCS website (http://www.mdcsystems.com/mdc/mdc.nsf/Services_TimeImpact) I have found a description of your TIA:



Time Impact Analysis (TIA)® is a court-accepted schedule anlaysis technique created by DCCSystems®. Coupled with the application of legal principles, Time Impact Analysis (TIA)® provides a means for equitably resolving time-related construction disputes. The Time Impact analysis technique can be characterized as a comparative analysis utilizing three basic scheduling documents.

(1) The As-Planned Schedule is utilized as a benchmark for measuring performance on a project.

(2) The As-Built Schedule depicts the actual sequence of events occurring over the life of a project.

(3) The Adjusted Schedule (Controlling Time Impact is a series of adjusted schedules utilized to explain major schedule variances over the life of a project.



I don’t think this is what we (in the UK) recognise as Time Impact Analysis.



Being a scientist I can quite understand parallel development of techniques or isolated independent development in more than one place at different times – after all that’s what seems to have been the case with the Critical Path Method. Anyway, it would be intersting to see the MDCS paper to see if the UK TIA is the same as the “Time Impact Analysis (TIA)® is Registered Trademark of IMDISI, Inc. and licensed to MDCSystems in the European Union and a Registered Service Mark in the United States” method.



Best regards



David



ps As a matter of courtesy I would have thought you would have declared your interest at the head of your post. As a Paralegal with MDCSystems I think your post reads now more as an advertisement or a threat not to step on your trademarks and intellectual property?



Ms. Spong has a number of years of professional experience and brings a unique perspective and set of skills to the area of construction claims consulting. Utilizing her strong analytical and business/legal background, her consulting responsibilities include document indexing, document management, document review, and data analysis, report preparation and review, formatting and preparation of graphics, timelines and PowerPoint presentations. She has worked on a variety of construction consulting projects including refineries, schools, commercial and residential projects and resort developments. Ms. Spong is proficient in Excel, Word, Adobe, Timemap, Canvas, Power Point, Summation and other specialized programs. Ms. Spong also performs case and legal research with Lexus-Nexus and other web based programs.

In addition to this info, we’ve had an extensive posts regarding TIA in PP on the following link:

http://www.planningplanet.com/forum/forum_post.asp?fid=1&Cat=7&Top=23309