Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1122020
`03/22/2021
`
`ESTTA Tracking number:
`
`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
`
`Frontier Communications
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`03/21/2021
`
`401 MERRITT 7
`NORWALK, CT 06851
`UNITED STATES
`
`JEANNETTE MAURER CARMADELLA
`LUTZKER & LUTZKER LLP
`1233 20TH ST NW
`SUITE 703
`WASHINGTON, DC 20036
`UNITED STATES
`Primary Email: jeannette@lutzker.com
`Secondary Email(s): trademark@lutzker.com
`202-408-7600
`
`Docket Number
`
`119.731
`
`Applicant Information
`
`Application No.
`
`88906720
`
`Publication date
`
`09/22/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`03/22/2021
`
`Opposition Peri-
`od Ends
`
`03/21/2021
`
`Unlimited Office Solutions, LLC
`5 ROUTE 45
`SUITE 201
`MANNINGTON, NJ 08079
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 038. First Use: 2020/04/30 First Use In Commerce: 2020/04/30
`All goods and services in the class are opposed, namely: Voice over internet protocol (voip) services;
`internet protocol (ip) communication services, namely, voice over internet protocol (voip) peer-to-peer
`communications and instant messaging services over a global computer network
`
`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.
`
`5466894
`
`Registration Date
`
`05/15/2018
`
`Application Date
`
`03/30/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANTAGE
`
`NONE
`
`Class 038. First use: First Use: 2016/02/03 First Use In Commerce: 2016/02/03
`Electronic transmission, broadcasting and streaming of audio, video and digital-
`media content for others via global andlocal computer networks; streaming of
`audio, video and digital media content onthe Internet in the fields of news, enter-
`tainment, sports, comedy, drama, music, and music videos; video-on demand
`transmission services; audio and video broadcasting services over the Internet;
`telecommunication services, namely, electronic transmission of voice, image,
`audio, video, text, and data information by means of telecommunications net-
`works, wireless communication networks, the Internet, telephones, televisions,
`handheld computers, tablets and mobile phones; providing multiple user access
`to a global computer information network; Internet broadcasting services; cable
`television broadcasting services; providing high speed access to the Internet
`and other electronic communications networks; electronic,local transmission of
`voice, data and graphics by means of cable, telephone, and ISDN technologies;
`providing voice communication services via the Internet andother electronic
`communications networks; leasing or rental of telecommunications equipment
`
`U.S. Registration
`No.
`
`5362335
`
`Registration Date
`
`12/26/2017
`
`Application Date
`
`03/30/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANTAGE
`
`NONE
`
`Class 009. First use: First Use: 2016/02/03 First Use In Commerce: 2016/02/03
`Digital media streaming devices; computer software for streaming audio, video
`and digital media content via the Internet and to computers and mobile devices;
`software for use in electronic transmission and streaming of digital media con-
`tent for others via computers, tablets, mobile phones, television, wireless com-
`munication devices, and optical communications networks; cable television set-
`top boxes and modems; digital video recorders (DVRs); remote controls for tele-
`visions
`
`U.S. Registration
`No.
`
`5263460
`
`Registration Date
`
`08/15/2017
`
`Application Date
`
`03/30/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANTAGE
`
`NONE
`
`Class 042. First use: First Use: 2016/02/03 First Use In Commerce: 2016/02/03
`Providing temporary use of non-downloadable software for use in electronic
`transmission and streaming of audio, visual and digital media content for others
`
`

`

`viacomputers, tablets, mobile phones, television, wireless communication
`devices, and optical communications networks; providing temporary use of non-
`downloadablesoftware for use in streaming of audio,visual and digital media
`content in thefields of news, entertainment, sports, comedy, drama, music, and
`music videos via computers, tablets, mobile phones, television, wireless commu-
`nication devices, and optical communications networks
`
`U.S. Registration
`No.
`
`5253791
`
`Registration Date
`
`08/01/2017
`
`Application Date
`
`03/30/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANTAGE
`
`NONE
`
`Class 041. First use: First Use: 2016/02/03 First Use In Commerce: 2016/02/03
`Entertainment services, namely, providing continuing television programs, mo-
`tion pictures, non-downloadable videos, andpreviews relating to each of the
`foregoing, all delivered online by means of the Internet and featuring current
`events news and information, entertainment information, sports, comedy, drama,
`music, music videos, science fiction, documentary, talk and interview, food and
`leisure,health, horror, technology, travel, learning, home and garden, reality-
`based television programs, and game shows; providing an interactive website
`featuring audio-visual content in the fields of current events news and informa-
`tion, entertainment information, sports, comedy, drama, music, music videos,
`science fiction,documentary, talk and interview, food and leisure, health, horror,
`technology, travel, learning, home and garden, reality-based television pro-
`grams, and game shows; providing entertainment information by means of the
`Internet, namely, information about motion picture, television, cable, and satellite
`media programmingin the nature of listings and schedules; providing online en-
`tertainment information, namely, information about when andwhere consumers
`may view motion pictures and television, cable, and satellite media programs;
`providing an online interactive resource guide featuring information, news, and
`commentary on the subjectof motion pictures, television programs, and videos;
`on-line library services, namely, providing electronic library services which fea-
`ture television programs,motion pictures, videos, and audio-visual media content
`of others in the fieldsof news and information, business, entertainment, sports,
`comedy, drama, music,music videos, science fiction, documentary, talk and in-
`terview, food and leisure, health, horror and thriller, technology, travel, learning,
`home and garden, reality-based programming, and game showsvia an on-line
`computer network
`
`Attachments
`
`Notice of Opposition.pdf(90987 bytes )
`
`Signature
`
`/jeannettemaurercarmadella/
`
`Name
`
`Date
`
`JEANNETTE MAURER CARMADELLA
`
`03/22/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
` )
`Frontier Communications Corporation
`
`
`)
`
`
`
`
`
`
`Opposition No.________
`
`)
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`
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`Opposer,
`
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`
`)
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`
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`Serial No. 88906720
`
`)
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`v.
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`)
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`Unlimited Office Solutions, LLC )
`
`
`
` )
` Applicant.
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`)
` )
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`
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`NOTICE OF OPPOSITION TO APPLICATION SERIAL NO. 88/906,720
`
`
`TO THE COMMISSIONER OF PATENTS AND TRADEMARKS:
`
`Applicant, Unlimited Office Solutions, LLC, DBA Green Technology Services
`
`(“Applicant”), is seeking to obtain registration of VOIPVANTAGE as a service mark for use in
`
`connection with “Voice over internet protocol (voip) services; internet protocol (ip)
`
`communication services, namely, voice over internet protocol (voip) peer-to-peer
`
`communications and instant messaging services over a global computer network” in
`
`International Class 38. Application Serial No. 88/906,720 (the “Application”) was published in
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`the Official Gazette on September 22, 2020. Appropriate extensions of time to submit this Notice
`
`of Opposition were timely filed with the Board. Opposer, Frontier Communications Corporation
`
`(“Opposer” or “Frontier”) believes it would be damaged by the registration that Applicant seeks
`
`and, through its authorized attorneys, hereby opposes registration.
`
`
`
`
`
`The grounds for this opposition are as follows:
`
`1.
`
`Opposer, Frontier Communications Corporation, is a full-service
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`telecommunications provider and the sixth largest local exchange telephone company in the
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`
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`1
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`

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`country. Under the mark VANTAGE, the company offers a wide array of telecommunications
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`goods and services, including internet, voice, and television products and services to both
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`business and residential customers, in both wholesale and retail markets.
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`
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`2.
`
`Opposer’s VANTAGE mark is the subject of numerous U.S. trademark
`
`registrations in International Classes 9, 38, 41 and 42. Specifically, Opposer owns the following
`
`registrations:
`
`Reg. No. 5362335 (VANTAGE for “Digital media streaming devices; computer software
`for streaming audio, video and digital media content via the Internet and to computers
`and mobile devices; software for use in electronic transmission and streaming of digital
`media content for others via computers, tablets, mobile phones, television, wireless
`communication devices, and optical communications networks; cable television set-top
`boxes and modems; digital video recorders (DVRs) remote controls for televisions”);
`filed March 30, 2016; registered December 26, 2017; date of first use at least as early as
`February 3, 2016;
`
`Reg. No. 5253791 (VANTAGE for “Entertainment services, namely, providing
`continuing television programs, motion pictures, non-downloadable videos, and previews
`relating to each of the foregoing, all delivered online by means of the Internet and
`featuring current events news and information, entertainment information, sports,
`comedy, drama, music, music videos, science fiction, documentary, talk and interview,
`food and leisure, health, horror, technology, travel, learning, home and garden, reality-
`based television programs, and game shows; providing an interactive website featuring
`audio-visual content in the fields of current events news and information, entertainment
`information, sports, comedy, drama, music, music videos, science fiction, documentary,
`talk and interview, food and leisure, health, horror, technology, travel, learning, home
`and garden, reality-based television programs, and game shows; providing entertainment
`information by means of the Internet, namely, information about motion picture,
`television, cable, and satellite media programming in the nature of listings and schedules;
`providing online entertainment information, namely, information about when and where
`consumers may view motion pictures and television, cable, and satellite media programs;
`providing an online interactive resource guide featuring information, news, and
`commentary on the subject of motion pictures, television programs, and videos; on-line
`library services, namely, providing electronic library services which feature television
`programs, motion pictures, videos, and audio-visual media content of others in the fields
`of news and information, business, entertainment, sports, comedy, drama, music, music
`videos, science fiction, documentary, talk and interview, food and leisure, health, horror
`and thriller, technology, travel, learning, home and garden, reality-based programming,
`and game shows via an on-line computer network”); filed March 30, 2016; registered
`August 1, 2017; date of first use at least as early as February 3, 2016;
`
`
`
`
`2
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`

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`Reg. No. 5263460 (VANTAGE for “Providing temporary use of non-downloadable
`software for use in electronic transmission and streaming of audio, visual and digital
`media content for others via computers, tablets, mobile phones, television, wireless
`communication devices, and optical communications networks; providing temporary use
`of non-downloadable software for use in streaming of audio, visual and digital media
`content in the fields of news, entertainment, sports, comedy, drama, music, and music
`videos via computers, tablets, mobile phones, television, wireless communication
`devices, and optical communications networks”); filed March 30, 2016; registered
`August 15, 2017; date of first use at least as early as February 3, 2016;
`
`Reg. No. 5466894 (VANTAGE for “Electronic transmission, broadcasting and streaming
`of audio, video and digital media content for others via global and local computer
`networks; streaming of audio, video and digital media content on the Internet in the fields
`of news, entertainment, sports, comedy, drama, music, and music videos; video-on
`demand transmission services; audio and video broadcasting services over the Internet;
`telecommunication services, namely, electronic transmission of voice, image, audio,
`video, text, and data information by means of telecommunications networks, wireless
`communication networks, the Internet, telephones, televisions, handheld computers,
`tablets and mobile phones; providing multiple user access to a global computer
`information network; Internet broadcasting services; cable television broadcasting
`services; providing high speed access to the Internet and other electronic communications
`networks; electronic, local transmission of voice, data and graphics by means of cable,
`telephone, and ISDN technologies; providing voice communication services via the
`Internet and other electronic communications networks; leasing or rental of
`telecommunications equipment”); filed March 30, 2016; registered May 15, 2018; date of
`first use at least as early as February 3, 2016.
`
`3.
`
` Opposer’s VANTAGE mark has been in continuous use in interstate commerce
`
`
`
`since at least as early as February 3, 2016 and is known and widely used in the
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`telecommunications and business industries and widely recognized by the general public.
`
`
`
`4.
`
`Opposer’s VANTAGE mark is symbolic of the extensive goodwill and consumer
`
`recognition built up through years of substantial amounts of advertising and promotional
`
`expenditures and other corporate resources. Opposer has so used its VANTAGE mark in
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`connection with its business that the public has come to associate the mark exclusively with
`
`Opposer, and as indicating that the goods and services offered under the mark originate with
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`Opposer.
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`
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`3
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`

`

`
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`5.
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`Opposer has used its VANTAGE mark in U.S. commerce, in connection with
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`goods and services that are closely related to and offered in connection with the goods and
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`services identified in Applicant’s VOIPVANTAGE Application and otherwise, since well prior
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`to May 8, 2020, the filing date of the Application. Opposer has also used its VANTAGE marks
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`in U.S. commerce, in connection with goods and services that are closely related to and offered
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`in connection with the goods and services identified in the VOIPVANTAGE Application and
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`otherwise, since well prior to any actual use or use in commerce by Applicant or others of the
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`mark shown in the Application.
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`6.
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`The mark shown in the Application is visually, aurally, and connotatively similar
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`to Opposer’s VANTAGE mark. The mark shown in the Application is so visually, aurally, and
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`connotatively similar to Opposer’s VANTAGE mark as to be likely to cause confusion, or to
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`cause mistake, or to deceive consumers into believing that Frontier is the origin, source or
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`sponsor of Applicant’s goods and services within the meaning of Section 2(d) of the Lanham
`
`Act, or alternatively, that Applicant is the origin, source or sponsor of Frontier’s goods and
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`services within the meaning of Section 2(d) of the Lanham Act.
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`7.
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`The goods and services listed in the Application are so closely related to the
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`goods and services offered by Frontier under its VANTAGE mark as to be likely to cause
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`confusion, or to cause mistake, or to deceive consumers into believing that Frontier is the origin,
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`source or sponsor of Applicant’s goods and services within the meaning of Section 2(d) of the
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`Lanham Act, or alternatively, that Applicant is the origin, source or sponsor of Frontier’s goods
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`and services within the meaning of Section 2(d) of the Lanham Act.
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`8.
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`On information and belief, the consumers who are likely to buy, use, and be
`
`familiar with Frontier’s goods and services are substantially the same as, or overlap significantly
`
`
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`4
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`

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`with, the consumers who are likely to buy, use, and become familiar with the goods and services
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`offered under the Application. Accordingly, use of the mark shown in the Application is likely to
`
`cause confusion, or to cause mistake, or to deceive consumers into believing that Frontier is the
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`origin, source or sponsor of the goods and services listed in the Application within the meaning
`
`of Section 2(d) of the Lanham Act, or alternatively, that Applicant is the origin, source or
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`sponsor of Frontier’s goods and services within the meaning of Section 2(d) of the Lanham Act.
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`9.
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`On information and belief, the channels of trade for Frontier’s goods and services
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`are substantially the same as, or overlap significantly with, the channels of trade for Applicant’s
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`goods and services, such that use of the mark shown in the Application is likely to cause
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`confusion, or to cause mistake, or to deceive consumers into believing that Frontier is the origin,
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`source or sponsor of Applicant’s goods and services within the meaning of Section 2(d) of the
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`Lanham Act, or alternatively, that Applicant is the origin, source or sponsor of Frontier’s goods
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`and services within the meaning of Section 2(d) of the Lanham Act.
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`10.
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`Applicant is not related to, associated with, or endorsed by Frontier, and is not
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`authorized or licensed by Frontier to use VANTAGE or any other mark incorporating or similar
`
`to the VANTAGE mark or to otherwise suggest a relationship, association, endorsement,
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`authorization, or license by, from or with Frontier.
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`11.
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`Applicant’s use of VOIPVANTAGE in connection with the goods and services
`
`set forth in the Application is likely to cause confusion or mistake or to deceive or create the
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`false impression that Applicant’s goods and services are related to, associated with, or endorsed
`
`by Frontier, or that Applicant’s use of its mark is authorized by Frontier, all to the injury of
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`Frontier’s rights in its VANTAGE marks, its reputation, and its identity. Alternatively,
`
`Applicant’s use of VOIPVANTAGE in connection with the goods and services set forth in the
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`5
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`

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`Application is likely to cause confusion or mistake or to deceive or create the false impression
`
`that Frontier’s goods and services are endorsed by Applicant, or that Frontier’s use of its marks
`
`is authorized by Applicant, all to the injury of Frontier’s rights in its VANTAGE marks, its
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`reputation, and its identity.
`
`12.
`
`For all of the foregoing reasons, registration of the mark shown in the Application
`
`would damage Opposer.
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`
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`WHEREFORE, Frontier respectfully requests that registration of the mark shown in the
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`Application be refused and that this opposition be sustained.
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`Dated: March 22, 2021
`
`
`Respectfully submitted,
`
`FRONTIER COMMUNICATIONS CORPORATION
`
`_/jeannettemaurercarmadella/_______________
`Jeannette Maurer Carmadella
`Lutzker & Lutzker LLP
`1233 20th St. NW, Suite 703
`Washington, D.C. 20036
`Phone (202) 408-7600; Fax (202) 408-7677
`jeannette@lutzker.com
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`Attorney For Opposer
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`6
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