NOTE TO THE FILE
SERIAL NUMBER: 88212794 88212794
DATE: 08/22/2019
NAME: jsolite
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:Thank you! Confirmed.
Sent from my phone - please excuse brevity and typos.
On Aug 20, 2019, at 6:54 AM, Solite, Joshua <Joshua.Solite@uspto.gov> wrote:Good Morning Mr. Castor:
I am an attorney with the United States Patent and Trademark Office, and I have been assigned to review your trademark applications (referenced above). I have reviewed your latest response to Office Action, dated 7/18/19, and determined that there is still a pending issue in each application. I gave you a call this morning and sent a voicemail, but I am sending this email as a follow up. I thought we might resolve this via email rather than a formal office action. Pending issues shown below.
1. Serial No. 88212794 – SWITCH&DATA
OWNERSHIP CLAIM – In our office action, dated 3-7-19, we issued a 2(d) refusal for likelihood of confusion with U.S. Registration Nos. 5567930, 5567927, 5583157, and 3229168, and a potentially conflicting prior pending application for serial number 87337359. In your response to Office Action, dated 7/18/19, you claimed ownership over all of the marks except 3229168, which appears may also be owned by the applicant.
Please confirm whether the applicant claims ownership of active prior U.S. Registration Number 3229168.
1. Serial No. 88212808 – SWITCH&DATA
OWNERSHIP CLAIM – In our office action, dated 3-6-19, we issued a 2(d) refusal for likelihood of confusion with U.S. Registration Nos. 5459898, 5358341, 5567928, 5583157, and 3229168, and potentially conflicting prior pending applications for serial numbers 87624989, 87 612609, and 87337378. In your response to Office Action, dated 7/18/19, you claimed ownership over all of the marks except 3229168 and 5583157, which appears may also be owned by the applicant.
Please confirm whether the applicant claims ownership of active prior U.S. Registration Numbers 3229168 and 5583157.
Thanks in advance for your prompt response.
Joshua
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From: Solite, Joshua
Sent: Thursday, March 7, 2019 1:53 PM
To: Halmen, Katy <Katy.Halmen@USPTO.GOV>
Subject: RE: 88212794 SWITCHDATA -- revised 3-5-19
Done!
From: Halmen, Katy
Sent: Thursday, March 07, 2019 1:24 PM
To: Solite, Joshua <Joshua.Solite@USPTO.GOV>
Cc: Halmen, Katy <Katy.Halmen@USPTO.GOV>
Subject: RE: 88212794 SWITCHDATA -- revised 3-5-19
Hi Josh,
Looks good.
Just be sure that you have attached (1) all the cited regs and pending applications and (2) the web evidence you refer to.
Ready to send.
Katy
From: Solite, Joshua
Sent: Thursday, March 07, 2019 1:14 PM
To: Halmen, Katy <Katy.Halmen@USPTO.GOV>
Subject: RE: 88212794 SWITCHDATA -- revised 3-5-19
Hey Katy,
I have revised the office action for SWITCH&DATA per your instructions. Please see attached office action for your review.
Thanks,
Josh
From: Halmen, Katy
Sent: Thursday, March 07, 2019 8:37 AM
To: Solite, Joshua <Joshua.Solite@USPTO.GOV>
Cc: Halmen, Katy <Katy.Halmen@USPTO.GOV>
Subject: RE: 88212794 SWITCHDATA -- revised 3-5-19
Hi Josh,
To get evidence showing services are related, I look at it like this:
APPLICANT = Providing telecommunications connections to a global computer network (more or less internet provider)
REGISTRANT (I will focus on services that are NOT identical or overlapping – and particularly focus on IDs that do not include any overlapping services like reg no 5567929 and 3229168)
1. 5567930 - “Providing telecommunications connections to the Internet; providing telecommunications services, namely, electronic, digital and wireless transmission of video, voice and data; local and long distance telephone services”
2. 5567927 - “Telecommunication access services; Telecommunications consultation”
3. 5583157 - “Providing telecommunications connections to the Internet; providing telecommunications services, namely, electronic, digital and wireless transmission of video, voice and data; local and long distance telephone services”
4. 3229168 - “Colocation services, namely the provision of secure environmentally-controlled facilities and technical monitoring for the computers and telecommunications equipment of others; providing colocation of computer and telecommunications equipment for business continuity and disaster avoidance”
You do not have to show that every service is related, so do not spend a ton of time trying to link everything. Here, when I search our ID manual language “telecommunications connections” I get very few results; however, when I search for something like “internet provider”, I do find relevant info.
For example – I want to show that the applicant’s services are related to “telecommunication consultation” in reg -927. So I search “internet provider” and “consultation” in google, which gives us multiple companies that provide both.
These are examples:
http://reddogwifi.com/solutions-internet-service-provider-consultation/
http://www.citynet.net/page.cfm?mypage=FreeITConsultation
I have attached a screenshot of my search.
3 or 4 websites is sufficient for a 1st action.
Katy
From: Solite, Joshua
Sent: Wednesday, March 06, 2019 4:18 PM
To: Halmen, Katy <Katy.Halmen@USPTO.GOV>
Subject: RE: 88212794 SWITCHDATA -- revised 3-5-19
Hey Katy,
So I found this topic particularly confusing, as I know nothing about telecommunications connections and the sort. That being said, it was very difficult for me to find concrete evidence that in fact establishes that the same entity commonly manufactures/produces/provides the relevant goods and or services, which is why I originally drafted the language in my OA so vaguely and figured you would likely see that and provide guidance. It became more clear after you inserted paragraph Q29-20-0 that more specificity was needed and that’s not really something I could concretely find at the moment so a little guidance would be helpful on what kinds of evidence would be best here.
Below are the links that I found which once again were not very concrete. I did not draft the Q29-20-0 paragraph because of the need for guidance on this.
Links:
Data Centers - http://en.wikipedia.org/wiki/Data_center
Testimonials from Clients of Switch (all of which I can assume would be clients of Switch&Data) - http://www.switch.com/testimonials/
Thanks,
Josh
From: Halmen, Katy
Sent: Wednesday, March 06, 2019 1:49 PM
To: Solite, Joshua <Joshua.Solite@USPTO.GOV>
Cc: Halmen, Katy <Katy.Halmen@USPTO.GOV>
Subject: 88212794 SWITCHDATA -- revised 3-5-19
A few more comments in the attached action.
· SEARCH – add a new search showing docs viewed as we discussed
· When you send this back to me, send me weblinks to the evidence you are attaching