Switch, Ltd.

Trademark Trial and Appeal Board

Sep 30, 2019

87379717 (T.T.A.B. Sep. 30, 2019)

This Opinion Is Not
a Precedent of
the TTAB
Mailed:
September 30, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Switch, Ltd.
_____

Serial Nos. 87379717 and 873797571
_____

Samuel D. Castor, Esq.
for Switch, Ltd.

Alicia Collins Edwards, Trademark Examining Attorney,
Law Office 115 (Daniel Brody, Managing Attorney).

Before Zervas, Lynch and Hudis, Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Switch, Ltd. (“Applicant”) seeks registration on the Principal Register of the
standard character mark SWITCH SHIELD for “providing telecommunication
connections to the Internet” in International Class 38 (application Serial No.
87379717) and “colocation services, namely, providing secure environmentally
controlled facilities and technical monitoring for the computers and
telecommunications equipment of others, and providing secure environmentally

1 Because the appeals involve the same issues and nearly identical records, we hereby
consolidate them and issue a single opinion for both appeals. Citations to the record are to
Serial No. 87379717, unless otherwise noted.
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controlled facilities and technical monitoring of computer and telecommunications
equipment for business continuity and disaster avoidance” in International Class 42
(application Serial No. 87379757).2
The Examining Attorney issued final Office Actions finding Applicant’s specimens
of use unacceptable under Trademark Act §§ 1 and 45, 15 U.S.C. §§ 1051 and 1127,
and 37 C.F.R. §§ 2.34(a)(1)(iv) and 2.56(a), as not showing the applied-for mark in use
in commerce in connection with the services specified in the applications. Applicant
filed notices of appeal with the Board and requests for reconsideration. The
Examining Attorney was not persuaded by Applicant’s arguments and continued the
refusals. When the appeals were resumed, Applicant and the Examining Attorney
filed briefs. We affirm the refusals to register.
The sole issue in this appeal is whether the specimens submitted by Applicant are
acceptable specimens to show use of the mark in connection with the identified
services.
Applicable Law
Section 1 of the Trademark Act establishes that the owner of a trademark used in
commerce may apply to register the trademark on the Principal Register by filing a

2 Both applications were filed on March 21, 2017, under Section 1(a) of the Trademark Act,
15 U.S.C. § 1051(a), and claim first use and first use in commerce on January 1, 2015.

“Colocation” is defined the Macmillan Dictionary at www.macmillandictionary.com as “an
arrangement in which a company keeps computers that other companies use as their Internet
servers all in one place.” We grant the Examining Attorney’s request to take judicial notice
of this definition. The Board may take judicial notice of dictionary definitions, Univ. of Notre
Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed
format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
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written application and specimens of the mark as it is used in commerce. According
to Section 45 of the Trademark Act, 15 U.S.C. § 1127, a service mark is used in
commerce “when it is used or displayed in the sale or advertising of services and the
services are rendered in commerce.” See also Trademark Rule 2.56(b)(2), 37 C.F.R. §
2.56(b)(2). “To determine whether a mark is used in connection with the services
described in the [application], a key consideration is the perception of the user.” In re
JobDiva, Inc., 843 F.3d 936, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citation
omitted). The question is whether the evidence of Applicant’s use of its mark creates
an association between the mark and Applicant’s services. Id.
“Specimens showing the mark used in rendering the identified services need not
explicitly refer to those services in order to establish the requisite direct association
between the mark and the services, but ‘there must be something which creates in
the mind of the purchaser an association between the mark and the service activity.”‘
In re Way Media, 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Johnson
Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)); accord JobDiva, 121 USPQ2d at
1126 (“the question is whether the evidence of JobDiva’s use of its marks sufficiently
creates in the minds of purchasers an association between the marks and JobDiva’s
personnel placement and recruitment services”) (internal quotation marks, brackets,
and citation omitted).
For specimens showing the mark in advertising the services, “[i]n order to create
the required ‘direct association,’ the specimen must not only contain a reference to
the service, but also the mark must be used on the specimen to identify the service
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and its source.” Way Media, 118 USPQ2d at 1698 (quoting In re Osmotica Holdings
Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)).
Showing only the mark with no reference to, or association with, the services does
not show service mark usage. In re Adair, 45 USPQ2d 1211, 1214-15 (TTAB 1997);
In re Duratech Indus. Inc., 13 USPQ2d 2052, 2054 (TTAB 1989). Thus, an acceptable
specimen must show “some direct association between the offer of services and the
mark sought to be registered therefor.” In re Universal Oil Prods. Co., 476 F.2d 653,
177 USPQ 456, 457 (CCPA 1973).
We turn to Applicant’s specimens, beginning with Applicant’s original specimens
and specimens filed with its December 11, 2017 Responses, which Applicant
identified as pages from its online brochure and an image from Applicant’s website
gallery:

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Applicant filed with its June 9, 2018 Office Action responses the following two
specimens depicted in relevant part which it characterized as “hard card handouts
provided to guests at all onsite tours, and screen shots of websites … describing the
core patents and services offered by Switch, which includes the Switch Shield, as the
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patented roof design that protects the data center and the telecommunication
connectivity”:

and
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With its February 6, 2019 Requests for Reconsideration, Applicant submitted
additional specimens which it characterized as:
[A]n advertising handout featuring Applicant[’]s
applied for mark (SWITCH SHIELD), as well as two
of Applicant[‘]s other registered trademarks … and
an additional mark …. The registered marks and
pending marks are each directly related to essential
features required to perform the applied-for
services. … The advertisement is distributed by
Applicant to potential customers seeking
telecommunication services during sales pitches and
tours. The additional images show how those
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advertising handouts are available in the conference
rooms for the tours. Screen shots of the Applicant[‘]s
Citadel Campus video found at
https://www.switch.com/videos/ … which offer
network operations, fiber and telecommunication
connections in accordance with the Switch Shield
product offered to protect the Applicant[‘]s
customers’ telecommunication connections to the
internet.3
Only the following submissions include depictions of the applied-for mark:

3 Feb. 6, 2019 Req. for Recon., TSDR 1.
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Applicant relies on In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984),
in which registration was sought for the design of a particular bird costume as a
service mark for entertainment services, namely, personal appearances, clowning,
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antics, dance routines, and charity benefits. The Board found that the applicant’s
specimen of use, a photograph of a person modeling the bird costume design, was an
acceptable specimen of use stating, “[i]n essence, the specimen portrays a form of use
of the service mark as an animate pictorial ‘sign.’ That it does not, on its face, reveal
employment of this sign in an actual sale or advertising context is in our view not
fatal just as a specimen label or garment tag would not, on its face, need to show
actual affixation or packaging use in connection with the goods on which used.” Id. at
913-14. Applicant explains:
Here, Applicant has provided a variety of specimens
indicating that SWITCH SHIELD is … the source-
identifying brand name for the patented roofing
system integral to its services for
telecommunications connections to the internet. …
Applicant’s telecommunications services are
enabled by a suite of data center technologies that
differentiate Applicant’s services from its
competitors. SWITCH SHIELD, as a patented
roofing system with additional aesthetic features
that differentiate Applicant’s colocation data center
services, acts similarly to the “costume” specimen
submitted in Red Robin Enters. Applicant’s
specimens demonstrate proper use of the mark in
commerce, established by showing the mark as used
in the sale, performance, and/or rendering of
telecommunication connections services, and by
showing the mark as used in advertising its
telecommunication connections services through
marketing and promotional materials. Because
Applicant’s performance of telecommunications
connections services are “garbed in the costume” of
SWITCH SHIELD, consistent with the applicant’s
performance and specimen submitted in Red Robin
Enters., Applicant hereby requests that the
Examining Attorney’s refusal to register Applicant’s
mark be overturned and the application for
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SWITCH SHIELD be approved for registration on
the Principal Register.4
Applicant also refers to In re Metriplex, Inc., 23 USPQ2d 1315, 1316-17 (TTAB
1992) (noting that “the requirements specific to specimens which are advertising are
not applicable” and finding the submitted specimens acceptable to show use of
applicant’s mark in connection with data transmission services because the
specimens showed “the mark as it appears on a computer terminal in the course of
applicant’s rendering of the service” and noting that “purchasers and users of the
service would recognize [applicant’s mark], as it appears on the computer screen
specimens, as a mark identifying the data transmission services which are accessed
via the computer terminal”).
We find that those specimens which qualify as advertising materials do not
reference the subject mark at all or, if they do, associate the mark only with
Applicant’s redundant data center roofing system. These are goods not services. The
proposed mark often appears with the wording “redundant data center roofing
system,” and the references to Applicant’s patents in proximity to the mark
strengthen the association of the mark with Applicant’s goods (not services). The
video screen shots which refer to, e.g., “Network Operations,” “Fire Safety” and
“Security,” cannot be construed as sufficient to create an association with Applicant’s
colocation and data center services.
For those specimens that Applicant argues are used in the sale, performance,
and/or rendering of the services, and which include the mark, Applicant provided no

4 TTABVUE 10-11, App. Ser. No. 87379757.
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evidence other than the specimens themselves to support this claim. We find them
insufficient to associate the mark with the identified services. That a patented roofing
system is used in rendering the services does not mean consumers would associate
the term as a source indicator for the services themselves. In re Produits Chimiques
Ugine Kuhlmann SA, 190 USPQ 305, 308 (TTAB 1976) (“As used, [the applicant’s
mark] does not function as a service mark to identify the services claimed. That is, on
the record presented, it is not being used as a mark in the sale or advertising of
services rendered by applicant.”).
A specimen that shows the mark with no reference to, or association with, the
services does not show service mark usage. In re DSM Pharms. Inc., 87 USPQ2d 1623,
1624 (TTAB 2008) (LIQUIDADVANTAGE referred only to software and did not
identify and distinguish custom manufacturing services); see also, e.g., In re HSB
Solomon Assocs. LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (CEI identified process
by which applicant derived a measurement rather than technical consulting service);
In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1669 (TTAB 2010) (OSMODEX
referred only to drug delivery technology, not consulting services).
The Examining Attorney’s specimen refusals are affirmed.
Decision: The refusal to register Applicant’s mark is affirmed for both
applications.