To: | Nicoventures Holdings Limited (tmadmin@kilpatricktownsend.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88094048 - ISWITCH - 1102954 |
Sent: | 6/10/2019 11:50:39 AM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88094048
MARK: ISWITCH
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CORRESPONDENT ADDRESS: KILPATRICK TOWNSEND & STOCKTON LLP |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Nicoventures Holdings Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 6/10/2019
This suspension action is in response to the applicant’s communication of May 13, 2019. The applicant amended the identification of goods and provided an argument in support of approving the mark for publication.
The following prior-filed trademark application advisories have also been withdrawn: Advisory of a Prior-Filed application for the marks in Application Nos. 87837286 and 87849874. See TMEP §§713.02, 714.04.
The trademark examining attorney is suspending action on the application for the reason(s) stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The applicant should note Application Serial No. 86956933 has matured to U.S. Registration No. 5628248; however, a refusal will not be issued until all prior-filed application either abandon or mature to registration.
The applicant’s arguments in support of registration are noted, but ultimately were found unpersuasive. The applicant’s mark and the prior-filed applications, SWITCHBOX and SWITCH CENTRAL are for identical and highly related goods and the marks all share the wording “SWITCH” being used prominently. The addition of the prefix “i” merely describes an electronic feature of the goods and does not change the commercial impression of the mark as filed. As such, the marks are related for the purposes of comparing the marks.
If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04.
No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.
/Seth Willig Chadab/
Seth Willig Chadab
Trademark Examining Attorney
Law Office 104
(571) 270-1875
seth.chadab@uspto.gov
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.