Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
87219849 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 123 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/87219849/mark.png |
| LITERAL ELEMENT |
SWITCHBLADE |
| STANDARD CHARACTERS |
YES |
| USPTO-GENERATED IMAGE |
YES |
| MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) |
| The Office Action cites refusal to register the present application due to two prior-pending applications, namely, Application 86053148 and
Application 85778440. Additionally, the Office Action cites refusal to register the present application due to a likelihood of confusion in relation to US Registration 4075040 for ?protective padding
for snowboarding. Applicant will address each of these separately below. Prior Pending Applications: Applicant contacted the owner of the two prior pending applications for ?Switchblade? ? related
trademarks for helmets in IC 009. US Applications 86053148 and 85778440 were suspended because they each claimed priority to a Canadian Application that was not yet registered for failure to prove
use of the mark anywhere. In April, 2017, Application 85778440 was amended to rely on a section 1B basis for filing rather than the section 44D basis, but Application 86053148 was not and still
remains suspended. In May, 2017, Application 85778440 received a Priority Action requesting a minor amendment to the description of Goods/Services that would place the application in condition for
allowance, but three months later, nothing has been filed. After Applicant contacted the owner of the two prior pending applications indicating Applicant?s use of the mark more than a decade prior to
the owner?s application date, and Applicant?s intention to Oppose the marks in the US and Canada, the owner of the two prior pending applications let the related Canadian Trademark Registrations go
Abandoned (records last modified June 22, 2017 ? see attached Screen Shot of the Canadian Trademark Office Search Results page). Because the corresponding Canadian priority document relating to
application 86053148 is now abandoned, the related US Application will also necessarily become abandoned and will not pose a barrier to Applicant?s registration of its mark. Although the owner of the
prior pending trademark application 85778440 will not respond to Applicant?s request for express abandonment, Applicant also expects that the owner will not be filing the amendment to its trademark
description of Goods/Services due on or before November 25, 2017 and that this application will go abandoned as well, removing it as a potential barrier to Applicant?s current application.
Registration 4075040: Registration 4075040 for SWITCH BLADE is a registration for ?protective padding for snowboarding? in International Class 28. The owner of the mark, Thomas Sims is a Snowboarder
and Snowboard manufacturer, but Applicant is unable to find any examples of Snowboard padding on the Internet from any source including distributors of Sims? snowboards, or any reference to any
products other than Snowboards at the company?s website www.SIMSNOW.com. The specimens submitted by Sims during prosecution of the mark were only for Snowboards and not for padding or any other
products. Although this is not conclusive evidence that Sims does not sell padding, it is indicative that the trademark owner is not known for padding products and clearly does not sell any products
related to helmets in any sport. Comparison of the Marks: Although the Office Action asserts that the addition of a space between SWITCH and BLADE ?adds nothing to the commercial impression?, in
relation to these particular goods and the products to which they relate, the inclusion or the removal of the space does change the commercial impression because of the different nature of the two
products involved. Snowboards, like skis, are often made with sharp edges to cut through the snow as the rider changes directions. The ?BLADE? portion of this mark is suggestive of that sharp edge
with greater control. The ?SWITCH? portion of the Registered mark for snowboards is suggestive of the ability to control the turning while riding the snowboard. So, in relation to a snowboard (and
related products), the name SWITCH BLADE (as two separate words) creates a commercial impression relative to a snowboard with good control. When the two words are put together into one word as
SWITCHBLADE, they are, instead, suggestive of the mechanics of a specific type of knife that flips open across a hinge between the handle and the blade (irrespective of the edge on the blade or
change of direction). The hinge between the handle and the blade and the flipping motion of the blade as it opens is now the focus of the commercial impression. In relation to Applicant?s helmet
products, this is exactly the commercial impression desired. Applicant?s SWITCHBLADE helmet products, since its first helmets in 1997 and even its most recent helmets in 2017, have a removable and
distinctive chin/face guard that pivots at a hinge point as part of its removal from the helmet. So, the commercial impression of the mark SWITCHBLADE as it is associated with Applicant?s mark is on
the hinged nature of the attachment of the chin/face guard to the rest of the helmet. In relation to the types of products recited in Applicant?s pending application in relation to SWITCHBLADE and
the Registration for SWITCH BLADE, the commercial impression is very different and the consuming public familiar with the two respective marks and their products associate them primarily with those
very different products as well. Comparison of the Goods: Applicant?s description of goods is for ?Helmets for bicycles; Bicycle helmets; Protective helmets; Protective helmets for sports? in IC 009.
Registrant?s description of goods is for ?protective padding for snowboarding; snowboard bindings; snowboards? in IC 028. Registrant, in response to a refusal to register its SWITCH BLADE mark for
snowboards based on a likelihood of confusion during prosecution of Registrant?s mark, successfully argued that it?s mark SWITCH BLADE for Snowboard related products was not likely to cause confusion
in relation to the cited mark SWITCHBLADE for Skimboard related products because Skimboarding is a warm weather sport and Snowboarding is a cold weather sport, and the commercial distinctions between
the enthusiasts of the two different sports was enough of a commercial difference that the likelihood of confusion was ?almost non-existent.? The Examiner was convinced by this argument and allowed
the trademark to Registrant because Registrant?s mark was specifically related to the cold/snow related sport of Snowboarding. The same arguments apply to the present now-registered mark and
Applicant?s mark. Enthusiasts of snow-related snowboard and even snowboard body padding products would not assume that a biking helmet would be manufactured by the same company because they shop in
different stores and are completely unrelated sports. Additionally, the Registrant?s goods are for ?protective padding for snowboarding.? This is much different from helmets and does not overlap.
Applicant notes that like Applicant, Registrant Sims? SWITCH BLADE mark is a product line mark, not a company name brand. This is true also for the evidence provided in the Office Action regarding
the Leatt, POC and Triple website examples. The POC company brand is not the product line name. POC, for example, has a product line name for each of its helmet product lines and there are no
snowboarding body armor product lines that have names that overlap with the helmet names. The same is true for Leatt and Triple Eight. Applicant is Bell Sports, Inc. Applicant?s SWITCHBLADE helmets
product line name from Applicant?s Giro brand has not changed from helmets to any other type of product, and is well recognized in the biking industry. Like Registrant Sims? SWITCH BLADE snowboards
that are still on sale in the secondary snowboard market more than two decades later, Applicant?s Giro SWITCHBLADE helmets are also on sale in the secondary helmet market more than two decades later.
Despite this extensive, co-existive use of these two marks in the different industries for more than twenty years, Applicant has not been aware of any confusion by any consumers and has not received
any complaints from Sims that there is any confusion. Certainly if there were to be a likelihood of consumer confusion, some evidence of confusion would have appeared in the last twenty years and
Sims would have approached Applicant to raise the issue. As further evidence that there is no likelihood of confusion for the marks, Registrant, at least on its website, no longer sells SWITCH BLADE
snowboards and has instead changed the name of the product line simply to BLADE. (See http://www.simsnow.com/snowboards/) . Registrant?s SWITCHBLADE mark is now a mark for vintage snowboard products
being sold in secondary market locations (eBay has listings for SWITCH BLADE snowboards from the late 1980s). Sophisticated Purchasers of Expensive Equipment: Purchasers of safety sporting equipment
of these brands are spending hundreds to thousands of dollars for these products and are not making their decisions lightly. The aftermarket for Sims SWITCH BLADE snowboards ranges from $150 -
$1,500. The primary market ranges $300 - $4,000. Applicant?s Giro SWITCHBLADE helmets in the primary market range from $130 - $250. In their respective markets, these are not on the cheap end of
products and purchasers, purchasing safety equipment, are careful to know what they are buying and who they are buying it from. Due to the different commercial impressions created for the different
marks used in different industries for different goods that are priced in the expensive equipment range to be purchased by sophisticated purchasers of safety equipment, there is no significant
likelihood of consumer confusion and the mark should be allowed over the Registered mark for padding for snowboarding. |
| EVIDENCE SECTION |
| EVIDENCE FILE NAME(S) |
| ORIGINAL PDF FILE |
evi_2425514233-20170810222336172319_._Switchblade_Screen_Shot_Canada.pdf |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\872\198\87219849\xml5\ROA0002.JPG |
| DESCRIPTION OF EVIDENCE FILE |
Screenshot of Canadian Trademark Office showing abandoned S SWITCHBLADE... applications |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/Kenneth C. Booth/ |
| SIGNATORY'S NAME |
Kenneth C. Booth |
| SIGNATORY'S POSITION |
Attorney of Record, Arizona bar member |
| SIGNATORY'S PHONE NUMBER |
4808302700 |
| DATE SIGNED |
08/10/2017 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Thu Aug 10 22:30:00 EDT 2017 |
| TEAS STAMP |
USPTO/ROA-XX.XXX.XX.XXX-2
0170810223000798076-87219
849-5103511ed15a64a6bf25a
c3bc584bc363cc4948bd8f73b
9edaa8b5a08118998485-N/A-
N/A-20170810222336172319 |
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
87219849 SWITCHBLADE(Standard Characters, see http://uspto.report/TM/87219849/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
The Office Action cites refusal to register the present application due to two prior-pending applications, namely, Application 86053148 and Application 85778440. Additionally, the Office Action cites
refusal to register the present application due to a likelihood of confusion in relation to US Registration 4075040 for ?protective padding for snowboarding. Applicant will address each of these
separately below. Prior Pending Applications: Applicant contacted the owner of the two prior pending applications for ?Switchblade? ? related trademarks for helmets in IC 009. US Applications
86053148 and 85778440 were suspended because they each claimed priority to a Canadian Application that was not yet registered for failure to prove use of the mark anywhere. In April, 2017,
Application 85778440 was amended to rely on a section 1B basis for filing rather than the section 44D basis, but Application 86053148 was not and still remains suspended. In May, 2017, Application
85778440 received a Priority Action requesting a minor amendment to the description of Goods/Services that would place the application in condition for allowance, but three months later, nothing has
been filed. After Applicant contacted the owner of the two prior pending applications indicating Applicant?s use of the mark more than a decade prior to the owner?s application date, and Applicant?s
intention to Oppose the marks in the US and Canada, the owner of the two prior pending applications let the related Canadian Trademark Registrations go Abandoned (records last modified June 22, 2017
? see attached Screen Shot of the Canadian Trademark Office Search Results page). Because the corresponding Canadian priority document relating to application 86053148 is now abandoned, the related
US Application will also necessarily become abandoned and will not pose a barrier to Applicant?s registration of its mark. Although the owner of the prior pending trademark application 85778440 will
not respond to Applicant?s request for express abandonment, Applicant also expects that the owner will not be filing the amendment to its trademark description of Goods/Services due on or before
November 25, 2017 and that this application will go abandoned as well, removing it as a potential barrier to Applicant?s current application. Registration 4075040: Registration 4075040 for SWITCH
BLADE is a registration for ?protective padding for snowboarding? in International Class 28. The owner of the mark, Thomas Sims is a Snowboarder and Snowboard manufacturer, but Applicant is unable to
find any examples of Snowboard padding on the Internet from any source including distributors of Sims? snowboards, or any reference to any products other than Snowboards at the company?s website
www.SIMSNOW.com. The specimens submitted by Sims during prosecution of the mark were only for Snowboards and not for padding or any other products. Although this is not conclusive evidence that Sims
does not sell padding, it is indicative that the trademark owner is not known for padding products and clearly does not sell any products related to helmets in any sport. Comparison of the Marks:
Although the Office Action asserts that the addition of a space between SWITCH and BLADE ?adds nothing to the commercial impression?, in relation to these particular goods and the products to which
they relate, the inclusion or the removal of the space does change the commercial impression because of the different nature of the two products involved. Snowboards, like skis, are often made with
sharp edges to cut through the snow as the rider changes directions. The ?BLADE? portion of this mark is suggestive of that sharp edge with greater control. The ?SWITCH? portion of the Registered
mark for snowboards is suggestive of the ability to control the turning while riding the snowboard. So, in relation to a snowboard (and related products), the name SWITCH BLADE (as two separate
words) creates a commercial impression relative to a snowboard with good control. When the two words are put together into one word as SWITCHBLADE, they are, instead, suggestive of the mechanics of a
specific type of knife that flips open across a hinge between the handle and the blade (irrespective of the edge on the blade or change of direction). The hinge between the handle and the blade and
the flipping motion of the blade as it opens is now the focus of the commercial impression. In relation to Applicant?s helmet products, this is exactly the commercial impression desired. Applicant?s
SWITCHBLADE helmet products, since its first helmets in 1997 and even its most recent helmets in 2017, have a removable and distinctive chin/face guard that pivots at a hinge point as part of its
removal from the helmet. So, the commercial impression of the mark SWITCHBLADE as it is associated with Applicant?s mark is on the hinged nature of the attachment of the chin/face guard to the rest
of the helmet. In relation to the types of products recited in Applicant?s pending application in relation to SWITCHBLADE and the Registration for SWITCH BLADE, the commercial impression is very
different and the consuming public familiar with the two respective marks and their products associate them primarily with those very different products as well. Comparison of the Goods: Applicant?s
description of goods is for ?Helmets for bicycles; Bicycle helmets; Protective helmets; Protective helmets for sports? in IC 009. Registrant?s description of goods is for ?protective padding for
snowboarding; snowboard bindings; snowboards? in IC 028. Registrant, in response to a refusal to register its SWITCH BLADE mark for snowboards based on a likelihood of confusion during prosecution of
Registrant?s mark, successfully argued that it?s mark SWITCH BLADE for Snowboard related products was not likely to cause confusion in relation to the cited mark SWITCHBLADE for Skimboard related
products because Skimboarding is a warm weather sport and Snowboarding is a cold weather sport, and the commercial distinctions between the enthusiasts of the two different sports was enough of a
commercial difference that the likelihood of confusion was ?almost non-existent.? The Examiner was convinced by this argument and allowed the trademark to Registrant because Registrant?s mark was
specifically related to the cold/snow related sport of Snowboarding. The same arguments apply to the present now-registered mark and Applicant?s mark. Enthusiasts of snow-related snowboard and even
snowboard body padding products would not assume that a biking helmet would be manufactured by the same company because they shop in different stores and are completely unrelated sports.
Additionally, the Registrant?s goods are for ?protective padding for snowboarding.? This is much different from helmets and does not overlap. Applicant notes that like Applicant, Registrant Sims?
SWITCH BLADE mark is a product line mark, not a company name brand. This is true also for the evidence provided in the Office Action regarding the Leatt, POC and Triple website examples. The POC
company brand is not the product line name. POC, for example, has a product line name for each of its helmet product lines and there are no snowboarding body armor product lines that have names that
overlap with the helmet names. The same is true for Leatt and Triple Eight. Applicant is Bell Sports, Inc. Applicant?s SWITCHBLADE helmets product line name from Applicant?s Giro brand has not
changed from helmets to any other type of product, and is well recognized in the biking industry. Like Registrant Sims? SWITCH BLADE snowboards that are still on sale in the secondary snowboard
market more than two decades later, Applicant?s Giro SWITCHBLADE helmets are also on sale in the secondary helmet market more than two decades later. Despite this extensive, co-existive use of these
two marks in the different industries for more than twenty years, Applicant has not been aware of any confusion by any consumers and has not received any complaints from Sims that there is any
confusion. Certainly if there were to be a likelihood of consumer confusion, some evidence of confusion would have appeared in the last twenty years and Sims would have approached Applicant to raise
the issue. As further evidence that there is no likelihood of confusion for the marks, Registrant, at least on its website, no longer sells SWITCH BLADE snowboards and has instead changed the name of
the product line simply to BLADE. (See http://www.simsnow.com/snowboards/) . Registrant?s SWITCHBLADE mark is now a mark for vintage snowboard products being sold in secondary market locations (eBay
has listings for SWITCH BLADE snowboards from the late 1980s). Sophisticated Purchasers of Expensive Equipment: Purchasers of safety sporting equipment of these brands are spending hundreds to
thousands of dollars for these products and are not making their decisions lightly. The aftermarket for Sims SWITCH BLADE snowboards ranges from $150 - $1,500. The primary market ranges $300 -
$4,000. Applicant?s Giro SWITCHBLADE helmets in the primary market range from $130 - $250. In their respective markets, these are not on the cheap end of products and purchasers, purchasing safety
equipment, are careful to know what they are buying and who they are buying it from. Due to the different commercial impressions created for the different marks used in different industries for
different goods that are priced in the expensive equipment range to be purchased by sophisticated purchasers of safety equipment, there is no significant likelihood of consumer confusion and the mark
should be allowed over the Registered mark for padding for snowboarding.
EVIDENCE
Evidence in the nature of Screenshot of Canadian Trademark Office showing abandoned S SWITCHBLADE... applications has been attached.
Original PDF file:
evi_2425514233-20170810222336172319_._Switchblade_Screen_Shot_Canada.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
SIGNATURE(S)
Response Signature
Signature: /Kenneth C. Booth/ Date: 08/10/2017
Signatory's Name: Kenneth C. Booth
Signatory's Position: Attorney of Record, Arizona bar member
Signatory's Phone Number: 4808302700
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and
other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another
U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently
filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of
attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in
this matter.
Serial Number: 87219849
Internet Transmission Date: Thu Aug 10 22:30:00 EDT 2017
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2017081022300079
8076-87219849-5103511ed15a64a6bf25ac3bc5
84bc363cc4948bd8f73b9edaa8b5a08118998485
-N/A-N/A-20170810222336172319
