throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA432882
`ESTTA Tracking number:
`09/28/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Entity
`Address
`
`Orbitel S.A. E.S.P.
`Corporation
`Carrera 16, No 11a, Sur 100
`Medellin,
`COLOMBIA
`
`Citizenship
`
`Colombia
`
`Attorney
`information
`
`Todd A. Denys
`Porzio, Bromberg & Newman, P.C.
`29 Thanet Road, Suite 201
`Princeton, NJ 08540
`UNITED STATES
`tadenys@pbnlaw.com Phone:6099248555
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85300937
`09/28/2011
`
`Publication date
`Opposition
`Period Ends
`
`09/06/2011
`10/06/2011
`
`Optitel LLC
`Po Box 466
`Monument, CO 80132
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 038.
`All goods and services in the class are opposed, namely: Telecommunications consultation
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2944133
`
`04/26/2005
`
`Word Mark
`
`ORBITEL
`
`Application Date
`
`09/15/1999
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2003/11/18 First Use In Commerce: 2003/11/18
`Operation of telephone call centers for others
`Class 038. First use: First Use: 2003/11/18 First Use In Commerce: 2003/11/18
`Telecommunications gateway services; providing telecommunications
`connections to a global computer network; telecommunications services,
`namely, ISDN services; telecommunications services, namely, personal
`communication services; long distance services, calling card and prepaid phone
`card services; providing facilities and equipment for international video
`conferencing; audio and video international teleconferencing services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3021447
`
`11/29/2005
`
`ORBITEL
`
`Application Date
`
`08/29/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark features the word "ORBITEL" in the color blue, the background
`around the word "ORBITEL" in the color yellow, and the star and circle design
`through the letter "O" in the color blue.
`Class 016. First use: First Use: 1998/11/00 First Use In Commerce: 2003/07/00
`pre-paid telephone calling cards, not magnetically encoded
`
`U.S. Registration
`No.
`Registration Date
`
`3021448
`
`11/29/2005
`
`Word Mark
`
`ORBITEL
`
`Application Date
`
`08/29/2003
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The letters in ORBITEL are the color blue and the design of stars in a galaxy are
`the color blue.
`Class 016. First use: First Use: 1998/11/00 First Use In Commerce: 2003/07/00
`pre-paid telephone calling cards; not magnetically encoded
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3101165
`
`06/06/2006
`
`ORBITEL
`
`Application Date
`
`08/29/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1998/11/00 First Use In Commerce: 2003/07/00
`Telephone calling card services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3261709
`
`07/10/2007
`
`ORBITEL
`
`Application Date
`
`09/17/2003
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 038. First use: First Use: 1998/11/11 First Use In Commerce: 2003/10/05
`Telephone communications services; telecommunications services, namely,
`personal communication services enabling people to communication with one
`another; long distance services; telephone telecommunications services
`provided via prepaid telephone calling cards
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3275959
`
`08/07/2007
`
`ORBITEL
`
`Application Date
`
`08/29/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1998/11/00 First Use In Commerce: 2003/07/00
`pre-paid telephone calling card services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3431671
`
`05/20/2008
`
`ORBITEL
`
`Application Date
`
`08/29/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1998/02/01 First Use In Commerce: 2001/12/24
`pre-paid telephone calling cards, not magnetically encoded; and printed
`materials, namely, newsletters and brochures on telecommunications and
`related subjects
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3436521
`
`05/27/2008
`
`ORBITEL
`
`Application Date
`
`09/17/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 038. First use: First Use: 1998/02/01 First Use In Commerce: 2001/12/24
`digital transmission of voice, data, images, signals and messages, facsimile
`transmission services; telecommunication gateway services; providing
`telecommunications connection to a global computer network;
`telecommunications services, namely, ISDN services
`
`3699437
`
`Application Date
`
`06/14/2007
`
`10/20/2009
`
`Foreign Priority
`Date
`ORBITEL, TU COMPAÃ#Ã#A DONDE ESTÃ#S
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 038. First use: First Use: 1998/12/31 First Use In Commerce: 2001/12/31
`Telephone communications services; digital transmission of voice, data, images,
`signals and messages, facsimile transmission services; telecommunication
`gateway services; providing telecommunications connection to a global
`computer network; telecommunications services, namely, ISDN services;
`telecommunications services, namely, personal communication services
`enabling people to communicate with one another; long distance telephone
`communication services; telephone telecommunications services provided via
`prepaid telephone calling cards; telecommunication services, namely, television
`broadcasting services and cable television broadcasting services
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3763704
`
`03/23/2010
`
`ORBITEL
`
`Application Date
`
`06/19/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 036. First use: First Use: 1998/11/30 First Use In Commerce: 2003/07/31
`Charge card and credit card services; pre-paid purchase card services, namely,
`processing electronic payments made through prepaid cards
`
`75799540#TMSN.gif ( 1 page )( bytes )
`76540950#TMSN.gif ( 1 page )( bytes )
`76540953#TMSN.gif ( 1 page )( bytes )
`76540952#TMSN.gif ( 1 page )( bytes )
`76978362#TMSN.gif ( 1 page )( bytes )
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`76545761#TMSN.gif ( 1 page )( bytes )
`77206321#TMSN.jpeg ( 1 page )( bytes )
`77209349#TMSN.jpeg ( 1 page )( bytes )
`notice of opposition.pdf ( 10 pages )(162240 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/todd a denys/
`Todd A. Denys
`09/28/2011
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`5742-108 US
`
`In the matter of Application Serial Number 85/300,937, published for Opposition in the
`Official Gazette on September 6, 2011:
`
`............................................................ -- X
`
`Orbitel S.A. E.S.P.,
`
`vs.
`
`Optitel LLC,
`
`Opposer,
`
`.
`:
`-
`
`Opposition No.2
`
`Applicant
`______________________________________________________________ ,1
`
`NOTICE OF OPPOSITION
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Orbitel S.A. E.S.P., a corporation of Colombia, having its principal place of business at
`
`Carrera 16, No 11a, Sur 100, Medellin, Colombia, believes it will be damaged by registration of
`
`the mark shown in the above-identified application, and hereby opposes registration.
`
`As grounds for opposition, it is alleged that:
`
`

`
`1.
`
`Opposer, Orbitel S.A. E.S.P. (hereinafter “Opposer”), is presently engaged in the
`
`telecommunications industry.
`
`2.
`
`Opposer is currently using the marks “ORBITEL,” “ORBITEL” (stylized) and
`
`“ORBITEL, TU COMPANIA DONDE ESTES” (hereinafter referred to as the “ORBITEL
`
`Marks”) in United States commerce in connection with a variety of goods and services in the
`
`telecommunications industry.
`
`3.
`
`Opposer has so used the ORBITEL Marks in United States commerce in
`
`connection with goods and services in the telecommunications industry such that the public has
`
`come to associate the ORBITEL Marks with Opposer and as indicating that any good sold or
`
`service provided under the ORBITEL Marks originate with Opposer. As a result, Opposer has
`
`created and is the owner of substantial goodwill in the ORBITEL Marks.
`
`4.
`
`Opposer
`
`is
`
`the owner of United States Trademark Registration Number
`
`2,944,133, registered on April 26, 2005 for the mark “ORBITEL” (stylized) for services in
`
`International Classes 35 and 38.
`
`5.
`
`Said Trademark Registration Number 2,944,133 is valid, in full force and effect,
`
`and incontestable under United States trademark law.
`
`

`
`6.
`
`Opposer
`
`is
`
`the owner of United States Trademark Registration Number
`
`3,021,447, registered on November 29, 2005 for the mark “ORBITEL” (stylized) for goods in
`
`International Class 16.
`
`7.
`
`Said Trademark Registration Number 3,021,447 is valid and in full force and
`
`effect.
`
`8.
`
`Opposer
`
`is
`
`the owner of United States Trademark Registration Number
`
`3,021,448, registered on November 29, 2005 for the mark “ORBITEL” (stylized) for goods in
`
`International Class 16.
`
`9.
`
`Said Trademark Registration Number 3,021,448 is valid and in full force and
`
`effect.
`
`10.
`
`Opposer
`
`is
`
`the owner of United States Trademark Registration Number
`
`3,101,165, registered on June 6, 2006 for the mark “ORBITEL” (stylized) for services in
`
`International Class 36.
`
`11.
`
`Said Trademark Registration Number 3,101,165 is valid and in full force and
`
`effect.
`
`

`
`12.
`
`Opposer
`
`is
`
`the owner of United States Trademark Registration Number
`
`3,261,709, registered on July 10, 2007 for the mark “ORBITEL” for services in International
`
`Class 38.
`
`13.
`
`Said Trademark Registration Number 3,261,709 is valid and in full force and
`
`effect.
`
`14.
`
`Opposer
`
`is
`
`the owner of United States Trademark Registration Number
`
`3,275,959, registered on August 7, 2007 for the mark “ORBITEL” for services in International
`
`Class 36.
`
`15.
`
`Said Trademark Registration Number 3,275,959 is valid and in full force and
`
`effect.
`
`16.
`
`Opposer
`
`is
`
`the owner of United States Trademark Registration Number
`
`3,431,671, registered on May 20, 2008 for the mark “ORB ITEL” for goods in International Class
`
`16.
`
`effect.
`
`17.
`
`Said Trademark Registration Number 3,431,671 is valid and in full force and
`
`

`
`18.
`
`Opposer
`
`is
`
`the owner of United States Trademark Registration Number
`
`3,436,521, registered on May 27, 2008 for the mark “ORBITEL” for services in International
`
`Class 38.
`
`19.
`
`Said Trademark Registration Number 3,436,521 is valid and in full force and
`
`effect.
`
`20.
`
`Opposer
`
`is
`
`the owner of United States Trademark Registration Number
`
`3,699,437, registered on October 20, 2009 for the mark “ORBITEL, TU COMPANIA DONDE
`
`ESTES” for services in International Class 38.
`
`21.
`
`Said Trademark Registration Number 3,699,437 is valid and in full force and
`
`effect.
`
`22.
`
`Opposer
`
`is
`
`the owner of United States Trademark Registration Number
`
`3,763,704, registered on March 23, 2010 for the mark “ORBITEL” for services in International
`
`Class 36.
`
`23.
`
`Said Trademark Registration Number 3,763,704 is valid and in full force and
`
`effect.
`
`24.
`
`In view of the use and registration of the ORBITEL Marks, Opposer has built up
`
`substantial rights in its ORBITEL Marks.
`
`

`
`25.
`
`Applicant, Optitel LLC, filed Serial Number 85/300,937 for the mark “OPTITEL”
`
`& DESIGN covering services in International Class 38 on April 21, 2011, said application
`
`having been published in the Ofiicial Gazette on September 6, 2011.
`
`26.
`
`Applicant has not alleged any use of the mark “OPTITEL” & DESIGN in United
`
`States commerce.
`
`27.
`
`Applicant’s “OPTITEL” & DESIGN mark so resembles Opposer’s registered
`
`ORBITEL Marks as to be likely, when used in connection with Applicant’s services, to cause
`
`confusion, mistake, or to deceive as to the source of origin or sponsorship of Applicant’s
`
`services.
`
`28.
`
`Opposer, since prior to the filing date of Serial Number 85/300,937 or any date of
`
`first use upon which Applicant can rely, has used and not abandoned the ORBITEL Marks as
`
`trademarks and service marks in connection with a variety of goods and services in the
`
`telecommunications industry.
`
`29.
`
`Applicant’s “OPTITEL” & DESIGN mark so resembles Opposer’s previously
`
`used ORBITEL Marks as to be likely, when used in connection with Applicant’s services, to
`
`cause confusion, mistake, or to deceive as to the source of origin or sponsorship of Applicant’s
`
`services.
`
`

`
`30.
`
`Furthermore, registration of Applicant’s mark on the Principal Register of the
`
`United States Patent and Trademark Office would presumptively give Applicant prima facie
`
`exclusive ownership and rights to the same and would therefore cause confusion and uncertainty
`
`in the industry and handicap and damage the legitimate present and future activities of Opposer,
`
`by placing Applicant
`
`in a position to raise doubts as to Opposer’s right to use Opposer’s
`
`ORBITEL Marks. As a result, Opposer’s ORBITEL Marks will eventually be deprived of all
`
`distinctiveness, since Applicant’s use will blur Opposer’s ORBITEL Marks and the goods /
`
`services identified with said marks such that the association which said marks has come to
`
`convey will be tarnished.
`
`31.
`
`Upon information and belief, Applicant had no bona fide intent to use its mark in
`
`United States commerce at the time its application was filed.
`
`32.
`
`Based on the foregoing, registration of the mark depicted in Application Number
`
`85/300,937 filed on April 21, 2011 on the Principal Register of the United States Patent and
`
`Trademark Office will cause injury and damage to Opposer.
`
`

`
`WHEREFORE, Opposer requests that registration of Applicant’s mark be denied,
`
`and this Opposition sustained.
`
`Respectfully Submitted,
`
`Orbitel S.A. E.S.P.
`
`Dated:
`
`11331217“
`
`BY:
`
`__,_fi’/:'
`
`Todd A. Denys, Esq.
`Porzio Bromberg & Newman P.C.
`29 Thanet Road, Suite 201
`
`Princeton, New Jersey 08540-3674
`Tel: (609) 924-8555
`
`Fax: (609)924-3036
`tadenys @ pbn1aw.com
`Attorney for Opposer
`
`

`
`I hereby certify that this correspondence is being filed with the United States Patent and Trademark Office via
`the Trademark Trial and Appeal Board’s Electronic System for Trademark Trials and Appeals [ESTTA] on—line
`filing process.
`
`( ate of S gnature)
`
`€19-Oil
`
`te of Deposit)
`
`(
`
`CERTIFICATE OF FILING
`
`:
`
`q’3‘5i3‘“'
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and complete copy of the foregoing Notice of
`Opposition was served,
`this Agfllday of September, 2011, via First Class Mail, Postage
`Prepaid, addressed as follows:
`
`OPTITEL LLC
`
`PO BOX 466
`
`MONUMENT, CO 80132-0466
`
`Dated:
`
`Q0”
`
`BY: /\K’
`
`/1“
`
`.Denys, Esq.
`Todd
`Porzio Bromberg & Newman P.C.
`29 Thanet Road, Suite 201
`
`Princeton, New Jersey 08540-3674
`Tel: (609) 924-8555
`Fax: (609) 924-3036
`tadenys @pbnlaw.c0m
`Attorney for Opposer

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