Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA970207
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`Filing date:
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`04/29/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92062895
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Switch, Ltd. dba Switch
`
`BRYCE K EARL
`HOLLEY DRIGGS WALCH FINE WRAY PUZEY & THOMPSON
`400 SOUTH FOURTH STREET , SUITE 300
`LAS VEGAS, NV 89101
`UNITED STATES
`tip@nevadafirm.com, jboyle@nevadafirm.com, bearl@nevadafirm.com,
`sam@switch.com, ip@switch.com, abirk@switch.com
`702-791-0308
`
`Submission
`
`Filer's Name
`
`Filer's email
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`Signature
`
`Date
`
`Attachments
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`Motion to Suspend for Civil Action
`
`Joanna M. Myers
`
`jmyers@nevadafirm.com, rhoban@nevadafirm.com, jboyle@nevadafirm.com
`
`/Joanna M. Myers/
`
`04/29/2019
`
`Switch - MOTION TO SUSPEND FOR CIVIL ACTION - attach ex 1.pdf(187678
`bytes )
`EXHIBIT 1 - part 1 of 2.pdf(3245030 bytes )
`EXHIBIT 2 - part 2 of 2.pdf(3947444 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Uptime Institute, LLC.,
`
`Cancellation Nos. 92062895 and 92,062,912
`(consolidated)
`
`
`
`
`
`
`
`—against-
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`Switch, LTD.
`
`Petitioner,
`
`Registrant.
`
`MOTION TO SUSPEND FOR CIVIL ACTION
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`Pursuant to Section 2.117 of the Rules of Practice in Trademark Cases, Chapter 37 Code
`
`of Federal Regulations, Registrant Switch, LTD. (“Registrant”) respectfully requests suspension
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`of this proceeding because the trademark claims asserted by Petitioner Uptime Institute, LLC
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`(“Petitioner”) and the counterclaims asserted by Petitioner—including for cancellation of
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`Registrant’s marks—are essentially duplicative of the claims and affirmative defenses in the
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`pending federal litigation between these same parties regarding the same trademarks: Switch,
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`LTD. v. Uptime Institute, LLC, et al., Case No. 2:19-cv-OO631-GMN-NJK, which is currently
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`pending before the United States District Court for the District of Nevada (the “Civil Action”).
`
`To wit, Registrant has asserted facts and arguments that it has repeatedly raised with Petitioner
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`which justify cancelling Petitioner’s marks.1 However, the Civil Action contains additional
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`claims and defenses beyond the Board’s jurisdiction. Therefore, the Board should suspend this
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`proceeding because a civil action is pending which may have a bearing on this matter and may
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`be dispositive of the dispute between the parties in this matter. 37 CPR. § 2.117; TBMP § 510.
`
`///
`
`1 See Registration Nos.: 4,446,381; 4,503,966; 4,503,935; 4,670,382; 4,670,383, and 4,670,383.
`
`

`

`I.
`
`ARGUMENT
`
`Pursuant to 37 CPR. § 2.117, “[w]henever it shall come to the attention of the [Board]
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`that a party or parties to a pending case are engaged in a civil action or another Board proceeding
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`which may have a bearing on the case, proceedings before the Board may be suspended until
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`termination of the civil action or the other proceeding.” When the parties are involved in court
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`proceedings concerning the same marks and issues, the “standard procedure” of the Board is to
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`suspend its administrative proceedings pending outcome of the civil litigation. New Orleans
`
`Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (quoting 6
`
`McCarthy on Trademarks and Unfair Competition §32:47 (5th ed. updated September 2017)).
`
`The duty to suspend is clear. Suspension is warranted even when the Civil Action is not
`
`dispositive of the Board proceeding. Rather,
`
`it is sufficient that the civil action have some
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`bearing on the issues before the Board to justify a suspension. See id. Section 510.02 of the
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`TBMP further explains this rule, stating that “the decision of the federal district court is often
`
`binding upon the Board, while the decision of the Board is not binding upon the Court.”
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`Here, the matter should be suspended because in addition to seeking several legal claims
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`over which the Board does not have jurisdiction, the Civil Action seeks identical relief as to the
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`trademarks in dispute. Specifically, Registrant’s Complaint seeks cancellation of the service
`
`mark registrations Petitioner relies on in this proceeding pursuant to the Lanham Act (15 U.S.C.
`
`§ 1064). That is, the Civil Action seeks damages for breach of contract and tort, as well as
`
`cancellation of Petitioner’s registrations for its “TIER” marks, including, Registration numbers
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`4,446,381; 4,503,966; 4,503,935; 4,670,382; 4,670,383, and 4,670,383.
`
`Registrant has repeatedly raised these claims to Petitioner, and the legal arguments
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`supporting same. Registrant had hoped settlement conversations reflective of these realities
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`

`

`would be sufficient to resolve these matters. However, after nearly four years of litigation, and
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`several extensions,
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`it has now become apparent
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`that Petitioner was simply attempting to
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`postpone resolution of this matter. As such, the Complaint also seeks a declaration that the mark
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`Petitioner seeks to cancel in this matter is non-infringing pursuant to 28 U.S.C. § 2201, and civil
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`damages arising from Petitioner’s interference with Registrant’s contractual relationships and
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`interference with prospective economic advantage. A copy of the Complaint and civil cover
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`sheet are attached hereto as Exhibit 1.
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`Put simply, the Civil Action plainly has bearing on the issues before this Board such that
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`a stay of this matter is warranted under 37 C.F.R. § 2.117. The parties and marks in this
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`proceeding and the Civil Action are the same or sufficiently related, such that the Civil Action
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`will be dispositive of, or, at minimum, have a meaningful bearing upon, the issues before the
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`Board. Suspension of this proceeding is therefore appropriate.
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`Moreover, judicial economy is best served by immediately suspending all activity in this
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`proceeding. See Other Telephone Co. v. Connecticut National Telephone Co, 181 USPQ 125
`
`(1974). Because the Civil Action involves not only the issues currently before the Board, but also
`
`issues of trademark infringement,
`
`trademark abandonment, deceptive trade practices, and
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`interference with contractual relationships and prospective economic advantage, discovery in the
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`Civil Action will
`
`involve documents, depositions, and other information that has not been
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`gathered or produced in this proceeding. Moreover, a favorable ruling by the Board on this
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`Motion will obviate the expenditure of time and money required in the taking of testimony. See
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`The Other Tel. Co. v. Connecticut Nat’l Tel. Co, Inc., 181 U.S.P.Q. (BNA) 11 125 (TTAB Feb.
`
`11, 1974). Judicial economy is served by avoiding the time and expense of further testimony in
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`this proceeding when the pending Civil Action will impact, or even be dispositive of, the issues
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`

`

`before the Board. Therefore, Registrant also respectfully requests the Board stay all upcoming
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`trial deadlines pending the Board’s decision on this Motion. Id.
`
`II.
`
`CONCLUSION
`
`For the foregoing reasons, Registrant respectfully requests the the Board GRANT
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`Switch’s Motion to suspend this proceeding and stay all upcoming trial deadlines pending the
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`Board’s decision on this Motion.
`
`Dated April 29, 2019.
`
`Respectfully submitted,
`
`
`
`J MES D. BOYLE,
`Q.
`mail: jboyle@nevadafirm.com
`
`OANNA M. MYERS, ESQ.
`E—mail: jmyers@nevadaf1rm.com
`HOLLEY DRIGGS WALCH
`
`FINE PUZEY STEIN & THOMPSON
`
`400 South Fourth Street, Third Floor
`
`Las Vegas, Nevada 89101
`
`Attorneysfor Registrant, Switch, LTD.
`
`

`

`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing MOTION TO SUSPEND
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`FOR CIVIL ACTION, is being served on opposing counsel by forwarding said copy on April
`
`29, 2019 via electronic mail addressed to:
`
`Fritz L Schweitzer III
`
`Tatyana Voloshchuk
`ST. ONGE STEWARD JOHNSTON & REENS LLC
`
`fschweitzer3 @ssjr.com
`tvoloshchuk@ssjr.com
`litigation@ssjr.com
`
`. , .-~
`
` An employee of Holle '
`
`Walch Puzey Stein & Thompson
`
`

`

`EXHIBIT 1
`EXHIBIT 1
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`EXHIBIT 1
`EXHIBIT 1
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`

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`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 1 of 21
`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 1 of 21
`
`JAMES D. BOYLE, ESQ.
`Nevada Bar No. 08384
`
`E-mail: jboyle@nevadaf1rm.com
`JOANNA M. MYERS, ESQ.
`Nevada Bar No. 12048
`
`E-mail: jmyers@nevadaf1rm.com
`HOLLEY DRIGGS, WALCH
`FINE PUZEY STEIN & THOMPSON
`
`400 South Fourth Street, Third Floor
`Las Vegas, Nevada 89101
`Telephone: 702/791-0308
`
`Attorneysfor PlaintiffSwitch, Ltd.
`
`UNITED STATES DISTRICT COURT
`
`DISTRICT OF NEVADA
`
`SWITCH, LTD., a Nevada corporation,
`
`CASE NO.:
`
`Plaintiff,
`
`v.
`
`COMPLAINT FOR MARK
`
`CANCELLATION, DAMAGES,
`AND DECLARATORY RELIEF
`
`UPTIME INSTITUTE, LLC, a Delaware
`limited liability company; and UPTIME
`INSTITUTE PROFESSIONAL SERVICES,
`LLC, a Delaware limited liability company,
`
` Defendants.
`
`Plaintiff Switch, Ltd. (“Switch”), by and through its undersigned counsel, and for
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`its Complaint against Defendants Uptime Institute, LLC (“Uptime”), and Uptime
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`Institute Professional Services, LLC (“Uptime IPS”), hereby alleges as follows:
`
`I.
`
`SUMMARY OF THE COMPLAINT
`
`1.
`
`This is an action for cancellation of service mark registrations under the
`
`Lanham Act (15 U.S.C. § 1064), declaratory relief pursuant to 28 U.S.C. § 2201, and
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`damages arising from interference with contractual relationships and interference with
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`prospective economic advantage. Switch’s causes of action are based upon Uptime’s
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`erroneous claims to registration of and exclusive nationwide rights to use of the term
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`“Tier” including but not limited to in trademark registrations using the word “tier”,
`
`namely, Tier Gap Analysis (Reg. No. 4900276), Uptime Institute Tier IV Certified (Reg.
`
`1 1891-05/2202279.docx
`
`
`
`\OOO\IO‘\
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`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 2 of 21
`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 2 of 21
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`No. 4446381), Accredited Tier Specialist (Reg. No. 4503935), Accredited Tier Designer
`
`(Reg. No. 4503936), ATS Accredited Tier Specialist Uptime Institute (Reg. No.
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`4670383), ATD Accredited Tier Designer Uptime Institute (Reg. No. 4670382), and
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`Tier-Ready (Serial Number 87436668) (collectively, “Uptime Marks”).
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`2.
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`Uptime has misled the United States Trademark and Patent Office
`
`(“USPTO”), and the data center industry on the whole, by claiming to offer a service it
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`does not.
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`3.
`
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`To the USPTO, Uptime falsely claims and asserts to offer services under
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`the Uptime Marks. Yet, to the world, Uptime does not offer services supporting its
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`registered trademarks. Rather, its affiliate, Uptime IPS, offers certification of data center
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`designs, facilities, and operations under the Uptime Marks.
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`4.
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`According to Uptime’s CEO, Uptime and Uptime IPS, are two separate
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`entities, with two separate tax IDs, two separate payrolls, and two separate functions.
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`5.
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`Moreover, Uptime improperly claims exclusive nationwide rights to use
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`the term “Tier,” despite not owning any trademark registrations for the term “Tier”.
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`6.
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`After securing improper trademark registrations for service marks, rather
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`than the correct registration for certification marks, Uptime fails to maintain oversight
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`and quality control over the use of its Uptime Marks in connection with its alleged
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`“certification processes” for data-center designs, facilities and operations.
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`7.
`
`As a result of these misrepresentations and improper registrations,
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`Uptime and Uptime IPS have: (i) diluted the value of the alleged certifications issued by
`Uptime and damaged Switch and the data center marketplace when they allowed data
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`centers to falsely claim or misrepresent compliance with Uptime’s “rigorous Tier
`
`Standards and Certifications”; (ii) compromised the integrity of their standards when
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`they failed to take appropriate action to stop others when notified that other data centers
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`were misrepresenting compliance with those same standards — despite actual knowledge
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`of the improper and deceptive trade practices of others; (iii) directly, negligently, and
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`_ 2 _
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`

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`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 3 of 21
`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 3 of 21
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`
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`tortiously interfered in Switch’s potential and actual contractual relationships with
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`Switch customers by forcing Switch to unfairly compete with others who were misusing
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`Uptime’s diluted standards; and (iv) created an actual controversy within this Court’s
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`jurisdiction with regard to Switch’s use of the term “Tier”, such that declaratory relief is
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`warranted.
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`8.
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`Switch therefore seeks: cancellation of the USPTO registrations for the
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`Uptime Marks that are certification marks, rather than service marks; declaratory relief
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`finding that Uptime does not have exclusive nationwide rights to the term “Tier” and
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`that Switch’s use of tier does not infringe the Uptime Marks; recovery of actual and
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`special damages; recovery of Switch’s costs and attorneys’ fees; and such other relief as
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`more fully set forth herein.
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`II.
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`PARTIES
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`9.
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`Plaintiff Switch, Ltd. is a Nevada corporation, with its principal place of
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`business located at 7135 South Decatur Boulevard, Las Vegas, Nevada 89118.
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`10.
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`Defendant Uptime Institute, LLC is a Delaware limited liability
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`company, which, upon information and belief, has its principal place of business located
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`at 5470 Shilshole Avenue N.W., Suite 500, Seattle, Washington 98107.
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`11.
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`Defendant Uptime Institute Professional Services, LLC is a Delaware
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`limited liability company, which, upon information and belief, has its principal place of
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`business located at 5470 Shilshole Avenue N.W., Suite 500, Seattle, Washington 98107.
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`111.
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`JURISDICTION
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`12.
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`Jurisdiction in this Court over the First, Second, and Third Claims for
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`Relief is proper pursuant to 15 U.S.C. §§ 1116 and 1121 and 28 U.S.C. §§ 1331 and
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`1338, as these claims for Relief arise under the Lanham Act of 1946, as amended, 15
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`U.S.C. § 1051, et seq.
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`13.
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`Jurisdiction in this Court over the Fourth and Fifth Claims for Relief is
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`proper pursuant to supplemental jurisdiction under 28 U.S.C. § 1367(a), because the
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`l 2
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`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 4 of 21
`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 4 of 21
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`Fourth and Fifth Claims for Relief arise under Nevada law and are based upon a
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`common nucleus of operative facts with the First, Second, and Third Claims for Relief,
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`such that Switch would ordinarily be expected to try them all
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`in a single judicial
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`proceeding.
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`14.
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`Jurisdiction in this Court over the Sixth Claim for Relief is proper
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`pursuant to 28 U.S.C. § 2201 as an actual controversy exists within this Court’s
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`jurisdiction.
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`15.
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`Personal jurisdiction over Uptime is proper as Uptime has substantial,
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`continuous and systematic contacts with the state of Nevada, and/or Uptime has
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`purposefully directed its activities to residents of the state of Nevada, including Switch,
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`and with corporations doing business in Nevada, which activities have resulted in
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`injuries to Switch, as alleged herein.
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`16.
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`Personal jurisdiction over Uptime IPS is proper as Uptime IPS has
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`substantial, continuous and systematic contacts with the state of Nevada, and/or Uptime
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`IPS has purposefully directed its activities to residents of the state of Nevada, including
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`Switch, and with corporations doing business in Nevada, which activities have resulted
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`in injuries to Switch, as alleged herein
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`17.
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`Uptime and Uptime IPS solicit and/or engage in business in the state of
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`Nevada by, at a minimum, having and soliciting multiple data center providers as
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`clients/members in Nevada,
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`including Switch and Flexential, who have engaged in
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`business with Uptime and Uptime IPS by acts that include, but are not limited to: paying
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`for Uptime and/or Uptime IPS’s alleged certifications; accessing websites accessible
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`through domain names which Uptime has registered; certifying multiple data center
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`facilities in Las Vegas (including Switch and a competitor Flexential); participating in
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`trade shows in at least Las Vegas, Nevada through which Uptime and /or Uptime IPS
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`solicit and obtain business from Nevada corporations and others.1
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`1https://www.prnewswire.com/news-releases/uptime-institute-symposium-returns-to-las-vegas-to-examine-
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`\lONUI-RUJN
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`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 5 of 21
`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 5 of 21
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`18.
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`Uptime and/or Uptime IPS’ website reflects that Uptime and/or Uptime
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`IPS have several customers in Nevada.2 Thus, by virtue of Uptime’s and/or Uptime
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`IPS’s Nevada-based customers, Uptime and/or Uptime IPS have developed and maintain
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`contractual obligations with residents of the state of Nevada, have received material
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`benefit
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`from doing business in this jurisdiction, and have purposefully availed
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`themselves of the privileges of conducting activities in the state of Nevada, which
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`activities, in part, gave rise to the instant action and establish personal jurisdiction in this
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`district.
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`19.
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`Uptime and Uptime IPS' acts and actions as set forth herein have resulted
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`in the injuries to Switch as alleged herein.
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`IV. VENUE
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`20.
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`Venue is proper
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`in this judicial district pursuant
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`to 28 U.S.C.
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`§
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`1391(b)(l) as Switch is a resident of the State of Nevada.
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`V. FACTS
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`Switch’s Use of Its Distinctive Marks
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`21.
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`Switch is a leading global technology solutions corporation whose core
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`business is the design, construction, and operation of ultra-advanced data centers
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`(the “Switch Services”). Switch is widely known as one of the world’s leading designers,
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`builders, and operators of data centers. Switch’s facilities sustainably power, cool, and
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`protect the physical infrastructure and networks necessary to run the Internet.
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`22.
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`Switch’s patent-pending and patented technologies are used by hundreds
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`and hundreds of clients. Switch’s clients range from Fortune 100 entities to governmental
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`agencies. A partial list of Switch’s clients is available online at www.switch.com/clients.
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`\OOO\IO\
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`————— (continued)
`achieving-it-infrastructure-excellence-in-the-hybrid-cloud-3 00453734.htm1
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`2hgps://uptimeinstitute.com/TierCertification/constructed-facility-
`certifications.php?page=l&ipp=All&clientId=&countryName=United%20States&tierLevel=
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`1 l891-05/2202279.docx
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`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 6 of 21
`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 6 of 21
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`23.
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`In addition to being well-known for its innovative technologies and
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`confidential approach to its services, Switch is also recognized for providing military
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`grade physical security to protect its customers. Switch’s facilities are built to the
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`highest standards and are monitored 24/7/3 65 by armed security personnel.
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`24.
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`Switch competes
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`in a fierce national and global marketplace for
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`technology clients, with a wide array of other data center providers, cloud providers,
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`hosting providers, and technology companies.
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`25.
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`Because potential customers can store their data anywhere, including in
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`their own buildings,
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`in their own data center, with a cloud provider, with a
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`telecommunications carrier, with a managed service provider, or with a data center
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`provider, Switch competes nationally, and globally, with a vast array of technology
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`companies in multiple verticals to protect its brand and attract clients.
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`26.
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`Switch’s provision of
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`the Switch Services
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`and its
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`technology
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`collaboration ecosystem, gives its clients access to diversified and wide-ranging options
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`for
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`innovation,
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`economies of
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`scale,
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`risk mitigation,
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`sustainability, operational
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`excellence, and investment protection. Switch provides the Switch Services to a global-
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`reach of customers through its state-of—the-art facilities and data-centers throughout the
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`United States and in various international locations.
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`27.
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`On or about February 28, 2012, Switch obtained registration of the mark
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`TIER “ELITE” on the USPTO Principal Register as Registration No. 4,104,346. Switch
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`has used this mark continuously in commerce since at least as early as January 1, 2011.
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`Further, Switch is using this mark in commerce in association with the Switch Services,
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`including, but not limited to, the provision of computer services, telecommunications
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`access services, and telecommunications communication networks.
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`28.
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`On or about December 8, 2015, Switch obtained registration of the mark
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`TIER 5 on the USPTO’s Principal Register as Registration No. 4,867,486. Switch has
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`used this mark continuously in commerce since at least as early as January 1, 2015.
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`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 7 of 21
`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 7 of 21
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`Further, Switch is using this mark in commerce in association with the Switch Services,
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`including, but not limited to, the provision of computer services, telecommunications
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`access services, and telecommunications communication networks.
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`29.
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`Based on its pioneering innovation and patent—pending design and
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`operations of world-renowned data centers, telecommunications and cloud ecosystems,
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`Switch created the independent TIER “ELITE” and TIER 5 identifiers to distinguish
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`Switch’s industry-leading Switch Services from those offered by Switch’s competitors.
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`30.
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`Switch also owns various pending trademark applications currently
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`pending before the USPTO including, but not limited to:
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`a. TIER 5 PLATINUM HYBRID CLOUD — filed on May 4, 2018, Serial.
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`No. 87908042;
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`b. TIER 5 PLATINUM HYBRID CLOUD — filed on May 4, 2018, Serial.
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`No. 87908024
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`(collectively, “Switch Pending Applications”).3
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`31.
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`Switch’s multistate and global operations,
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`rapid corporate growth,
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`considerable market and commercial successes, extensive marketing and advertising,
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`and the variant channels of trade in which the Switch Marks are utilized and the Switch
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`Services are delivered, have collectively contributed to the Switch Marks having
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`acquired fame and distinctiveness.
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`32.
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`Switch has continuously used the Switch Marks in commerce in
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`association with the Switch Services, and to identify, publicize and market the Switch
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`Services.
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`27
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`Uptime’s Marks
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`33.
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`Uptime touts itself as an unbiased advisory organization focused on
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`improving the performance, efficiency, and reliability of business critical infrastructure
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`3 The marks identified in Paragraphs 26,—27,_2§ and 29—flabove are hereinafter referred to collectively as
`the “Switch Marks”.
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`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 8 of 21
`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 8 of 21
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`through innovation, collaboration, and independent certifications. However, Uptime
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`does not offer unbiased or independent certifications.
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`34.
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`For a costly fee, Uptime’s affiliate, Uptime IPS offers customers an
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`opportunity to obtain “Certifications” for the design, facility, and operation of its client’s
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`data centers.
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`35.
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`After undergoing a “rigorous Tier Standards and Certifications” audit by
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`an “independent” Uptime IPS professional, Uptime IPS awards customers a certification
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`seal, validating the integrity and quality of either a data center engineer’s training, or the
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`design, constructed facility, or operational integrity of a data center.
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`36.
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`37.
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`Uptime IPS (not Uptime) also certifies others to provide certifications.
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`Despite the Uptime Marks’ use as certification marks, not to offer any
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`services, Uptime acquired the following service mark registrations with the USPTO,
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`attached hereto as Exhibits 1-6:
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`TIER?"
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`Q L!“
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`
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`IIFTlI'IIE INSTITUTE CERTIFIED
` — filed on October 24, 2012 as Serial No. 85762454,
`and registered on December 10, 2013 as Registration No. 4,446,381, and
`claiming a first date of use and first date of use in commerce of August
`25, 2009;
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`b. ACCREDITED TIER DESIGNER — filed on July 23, 2012 as Serial No.
`85684245, and registered on April 1, 2014 as Registration No. 4,503,936,
`and claiming a date of first use and date of first use in commerce of
`September 30, 2009;
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`c. ACCREDITED TIER SPECIALIST — filed on July 23, 2012 as Serial
`No. 85684221, and registered on April 1, 2014 as Registration No.
`4,503,935, and claiming a date of first use and date of first use in
`commerce July 21, 2010;
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`11891-05/2202279.docx
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`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 9 of 21
`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 9 of 21
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` Accredited Tier Designer
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`— filed on April 30, 2014 as Serial No. 86267713,
`UPT'ME'NST'IUTE
`and registered on January 13, 2015 as Registration No. 4,670,382, and
`claiming a first date of use and first date of use in commerce of
`September 30, 2009; and
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`Manama Tier Sputum!
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`— filed on April 30, 2014 as Serial No. 86267721, and
`”PT'ME'NST'TUTE
`registered on January 13, 2015 as Registration No. 4,670,383, and
`claiming a date of first use and a date of first use in commerce of July 31,
`2010.
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`(1.
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`e.
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`f. TIER GAP ANALYSIS — filed on November 4, 2014 as Serial No.
`86444262, and registered on February 16, 2016 as Registration No.
`4,900,276, and claiming a date of first use and a date of first use in
`commerce of March 31, 2014;
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`38.
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`Notably, the filing date of Switch’s application for its registered mark
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`TIER “ELITE” predates the filing dates of a_11 the applications for the Uptime Marks.
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`39.
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`Uptime does not offer the services it claims it offers under these Uptime
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`Marks. In fact, Uptime does not offer any of these services to customers. Rather,
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`according to Uptime, Uptime IPS uses these marks to offer and award its alleged
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`“certifications” and does not itself offer services in association with these marks.
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`40.
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`Uptime also owns a pending intent-to-use trademark application before
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`the USPTO for the mark TIER-READY, which was filed on May 4, 2017 and assigned
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`Serial No. 87436668.
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`41.
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`Even though Uptime admits that Uptime IPS offers “certification”
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`services, neither Uptime nor Uptime IPS has registered any certification mark
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`registrations with the USPTO. Nevertheless, Uptime and/or Uptime IPS claims to have
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`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 10 of 21
`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 10 of 21
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`“certified over 1000 leading data center facilities worldwide for design, construction,
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`management, and operations.”
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`42.
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`Recipients of Uptime’s and/or Uptime IPS’s “Tier Certification” are
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`awarded a letter, a foil (incorporating the Uptime Marks), and/or website listing bearing
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`one or more of the Uptime Marks, for use by the recipient to convey to the public the
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`recipient is certified by Uptime.
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`43.
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`44.
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`The foils use the phrase “certified.”
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`The public perception of the Uptime Marks is that they are certification
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`marks, not service marks.
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`45.
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`At no time does Uptime offer any service in connection with the Uptime
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`Marks. Rather, Uptime IPS performs the certification of a data center,
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`its design,
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`construction, and/or operations.
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`46.
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`Uptime IPS does not own or hold any trademarks registrations for the
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`Uptime Marks.
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`47.
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`Upon information and belief, Uptime IPS does not have a license from
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`Uptime for the trademark registrations.
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`48.
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`As such,
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`the public has been, and continues to be deceived, and the
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`USPTO has been misled, as to Uptime’s use of the Uptime Marks.
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`49.
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`This public perception is further evidenced by the manner and context of
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`Uptime’s use of the Uptime Marks on the specimens Uptime submitted to the USPTO in
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`support of registration for the Uptime Marks.
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`50.
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`The Uptime Marks serve as certification marks as defined in Section 45
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`of the Lanham Act.
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`51.
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`The specimens Uptime submitted to the USPTO, the manner in which
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`Uptime IPS uses the Uptime Marks, and Uptime’s own assertions, namely, that Uptime
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`IPS is the only organization permitted to My data centers under the Uptime Marks,
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`indicates that Uptime’s pursuit of, and the USPTO’s issuance of, service mark
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`KOOO\]O\
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`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 11 of 21
`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 11 of 21
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`registrations was inappropriate, fraudulently obtained, and ultimately led to the creation
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`of public confusion regarding the certification procedures proffered by Uptime.
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`52.
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`Registrations issued by the USPTO for a service mark, when the marks
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`are in fact certification marks, are invalid and should be cancelled.
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`53.
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`Because Uptime IPS is not using the Uptime Marks as service marks to
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`identify the source or origin of Uptime IPS services, nor to certify goods or services
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`which purportedly meet certain standards in relation to quality, materials, or mode of
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`manufacture, the Uptime Mark registrations are invalid and must be cancelled.
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`54.
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`Moreover, because neither Uptime nor Uptime IPS have registered the
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`mark “Tier” (i.e., the Disputed Mark), neither Uptime nor Uptime IPS are entitled to any
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`level of exclusive nationwide rights to use of the word “Tier”.
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`U time’s Lack of uali Control Over the U time Marks
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`55.
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`Uptime has put little or no effort into exercising quality control over the
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`use of its Uptime Marks, and/or defending its alleged marks.
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`56.
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`Switch paid Uptime hundreds of thousands of dollars for Uptime IPS to
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`certify its facilities. After undergoing extensive and rigorous audits to demonstrate
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`Switch meets the Tier IV Gold standard for two of its data center facilities, Switch and
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`others in the data center discovered that other data center facilities were falsely claiming
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`Uptime’s Tier certifications, without having undergone the rigorous certification.
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`57.
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`Although Switch and other entities brought their concerns to Uptime
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`regarding the weakness of a standard that is not enforced, Uptime failed to correct the
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`misuse of the marks.
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`58.
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`Upon questioning from Switch, Uptime has conceded that they have
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`never filed a lawsuit to protect their alleged marks or taken any significant steps to stop
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`the abuse of the Uptime Marks.
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`59.
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`Uptime and/or Uptime IPS’ failure to exercise quality control over or
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`defend against the misuse of the Uptime Marks constitutes abandonment and loss of all
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`11891-05/2202279.docx
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`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 12 of 21
`Case 2:19-cv-00631 Document 1 Filed 04/11/19 Page 12 of 21
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`rights, if any, Uptime and/or Uptime IPS can claim in the Uptime Marks
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`60.
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`Moreover, Uptime and/or Uptime IPS’ failure to exercise quality control
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`over or defend against the misuse of the Uptime Marks has led to the devaluing of the
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`certifications that Switch has properly paid for and earned.
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`61.
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`Additionally, Uptime and/or Uptime IPS’ reluctance and unwillingness to
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`prevent other data center competitors from misusing the Uptime Marks to describe their
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`facilities, has resulted in consumer confusion and material loss of business for Switch.
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`Uptime’s Intentional Interference with Switch’s Contractual Relations and
`Prospective Economic Advantage
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`62.
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`As a result of Uptime and/or Uptime IPS’ failure to properly control and
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`police the Uptime Marks, several potential customers elected to go to competitors of
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`Switch.
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`63. When choosing a data center provider, companies will frequently check
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`to see whether a company has been certified as a certification allegedly guarantees a
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`certain level of service, protection, and stability.
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`64.
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`In 2014, Switch became the first and only carrier-neutral multi-
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`tenant/colocation facility to be certified Tier IV Gold by Uptime IPS. In 2016, Switch
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`became the only entity to do so, twice.
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`65.
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`For each facility, Switch obtained certification in both Design and
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`Facility categories. Switch was also awarded Gold certifications for Operational
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`Excellence.
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`66.
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`Switch went through this extensive, exhaustive, and taxing auditing and
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`certification exercise, each time, to further reinforce Switch’s technology leadership and
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`ad