ESTTA Tracking number:
`
`ESTTA1308172
`
`Filing date:
`
`09/05/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91285716
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Comcast Corporation
`
`MITCHELL STABBE
`WILKINSON BARKER KNAUER LLP
`1800 M STREET, N.W.
`SUITE 800N
`WASHINGTON, DC 20036
`UNITED STATES
`Primary email: trademark@wbklaw.com
`Secondary email(s): mstabbe@wbklaw.com
`202-783-4141
`
`Other Motions/Submissions
`
`Mitchell H. Stabbe
`
`trademark@wbklaw.com, mstabbe@wbklaw.com
`
`/Mitchell H. Stabbe/
`
`09/05/2023
`
`Comcast- Phenixya- THOMCAST- Opp. No. 91285716 Stipuated Motion 31145
`0-8617 - signed.pdf(106493 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`COMCAST CORPORATION,
`
`Opposer,
`
`v.
`
`
`
`PHENIXYA, SAS,
`
`
`
`
`
`Applicant
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Opposition No. 91285716
`
`Mark: THOMCAST
`Serial No. 90/600,818
`
`STIPULATED MOTION TO AMEND APPLICATION AND CONTINGENT
`
`DISMISSAL OF NOTICE OF OPPOSITION
`
`Applicant Phenixya, SAS (“Applicant”) respectfully requests to amend the description of
`
`goods and services in its Trademark Application Serial No. 90/600,818 for THOMCAST, as
`
`follows:
`
`Class 9: Recording apparatus and installations, namely, those using audiovisual means;
`transmission apparatus and instruments of all kinds in particular Transmitters, namely,
`transmitters, including by Internet, radio, cable or satellite allowing interaction by radio,
`cable or satellite; apparatus for recording and reproduction of television signals on discs;
`cameras, camcorders, television cameras and cinema cameras; radios, televisions; video
`cassette recorders; satellite transmitters; wireless transmitter; video transmitters, mixing
`machines, video servers; apparatus for the recording, broadcasting, transmission,
`generation, reproduction and transformation of data, sound or images; communication
`servers and data processing apparatus for multiplexing, transmission and processing of
`audio and video flows; apparatus for the amplification, modulation, detection, remote
`transmission and remote control of video and sound; blank magnetic data carriers;
`prerecorded magnetic data caries featuring video and music; photographic apparatus,
`namely, cameras; editing appliances for cinematographic films; decoders for televisions
`and audio speakers, encoders for televisions and audio speakers; screens for photographic
`or cinematographic projection; multimedia displays, namely, screens and projectors;
`television screens; audio and video repeaters, receivers; software programs for enabling
`the encoding and decoding of audio and video data, excluding podcasts; downloadable
`software programs for allowing the broadcasting of audiovisual and television content,
`excluding podcasts; electric wires and cables, in particular coaxial cables.
`
`Class 38: Communications and telecommunications, namely, online transmission of
`information and/or data and/or sound and/or images by satellite, internet, cable or aerial,
`in particular in the fields of media entertainment, health and education; online transmission
`of information; broadcasting and transmission of sound and/or images and/or data by
`satellite, Internet, cable or aerial; communications by telegrams, by telephone or by mobile
`
`

`

`telephone; remote transmission of messages or signals; transmitting and receiving data or
`information, in particular by wireless networks and by electronic means; tTeleprinting;
`broadcasting and transmission of television programs, broadcasting and transmission of
`radio programs; rental of telecommunication equipment; rental of telematics equipment
`and instruments, i.e. message transmission equipment, modems; rental of antennas and
`satellite dishes; rental of access devices in the nature of telecommunications equipment for
`interactive audiovisual programs; provision of data access via the Internet, i.e. digitized
`data transmission; communications in the nature of data transmissions over the Internet;
`online transmission services of films and other audio and audiovisual programmes;
`programme transmission services and television channel selection services; streaming data
`transmission; transmission of live or on-demand video sequences; services providing
`connections
`to
`telecommunications services,
`Internet services and databases;
`telecommunications routing and trunking services; transmission of electronic publications
`online; streaming and non-streaming of audio, video and multimedia content, including
`computer, radio, television, cable, fiber and satellite networks; rental of access time to
`telecommunications networks; video game
`transmission services, digitized data
`transmission services; rental of decoders and encoders.
`
`Class 41: Entertainment, namely, providing ongoing television programs and films in the
`field of media, excluding podcasts; educational services, namely, developing, arranging
`and conducting educational conferences and programs and providing courses of instruction
`and workshops in the field of computers, computer software, and telecommunications and
`distribution of course and educational materials in connection therewith; seminars, courses
`and workshops in the field of computers, computer software, and telecommunications;
`training in the field of computers, computer software, and telecommunications and in
`particular in configuration, commissioning, monitoring and repairing audiovisual
`transmission sites; recording studio services, movie studios services; production and
`reproduction of films and other audio-visual media, production and editing of radio and
`television programmes, rental of audio-visual apparatus and accessories.
`
`Class 42: Server administration, namely, technical support services in the nature of
`technical administration of servers for others; quality control of goods and services for
`others; design in the nature of development of encryption, decryption, access control
`systems for television, radio, including nomadic television and radio programs and any
`information transmission system; design in the nature of development of computer systems
`and software; design in the nature of development of interactive programs; hosting of Web
`sites on the Internet; professional consultations in the creation of video programs;
`administration of user rights on computer networks, namely, providing user authentication
`services to access computer networks; consulting services in telecommunications
`technology; installation, maintenance, updating and upgrading of software; computer data
`recovery; external data backup; design and development of operating software for access
`to and use of a cloud computing network; design in the nature of development of virtual
`spaces for online data exchange; information in the field of computer science applied to
`telecommunications; computer formatting of texts and/or images, still or moving, and/or
`sounds, musical or not, ring tones, for interactive or non interactive use; conversion of data
`or documents from a physical to an electronic medium; services for the creation in the
`nature of elaboration of virtual and interactive images; creation and development of
`Internet projects in the nature of engineering work; providing online non-downloadable
`
`

`

`software programs for allowing the broadcasting of audiovisual and television content,
`excluding podcasts.
`
`After these amendments are made, the description of goods and services for this application
`
`will be:
`
`Class 9: Transmitters, namely, transmitters, allowing interaction by cable; apparatus for
`recording and reproduction of television signals on discs; cameras, camcorders, television
`cameras and cinema cameras; radios, satellite transmitters; apparatus for the recording,
`generation, reproduction and transformation of data, sound or images; communication
`servers and data processing apparatus for multiplexing, transmission and processing of
`audio and video flows; apparatus for the amplification, modulation, detection, and remote
`control of video and sound; blank magnetic data carriers; prerecorded magnetic data caries
`featuring video and music; photographic apparatus, namely, cameras; editing appliances
`for cinematographic films; decoders for televisions and audio speakers, encoders for
`televisions and audio speakers; screens for photographic or cinematographic projection;
`multimedia displays, namely, screens and projectors; television screens; audio and video
`repeaters, receivers; software programs for enabling the encoding and decoding of audio
`and video data, excluding podcasts; electric wires and cables, in particular coaxial cables.
`
`Class 38: Teleprinting; broadcasting and transmission of radio programs; rental of message
`transmission equipment, antennas and satellite dishes; telecommunications routing and
`trunking services; transmission of electronic publications online; streaming and non-
`streaming of audio, video and multimedia content, including computer, radio, television,
`cable, fiber and satellite networks; rental of access time to telecommunications networks.
`
`Class 41: Educational services, namely, developing, arranging and conducting educational
`conferences and programs and providing courses of instruction and workshops in the field
`of computers, computer software, and telecommunications and distribution of course and
`educational materials in connection therewith; seminars, courses and workshops in the field
`of computers, computer software, and telecommunications; training in the field of
`computers, computer software, and telecommunications and in particular in configuration,
`commissioning, monitoring and repairing audiovisual transmission sites; recording studio
`services, movie studios services; production and reproduction of films and other audio-
`visual media, production and editing of radio and television programmes, rental of audio-
`visual apparatus and accessories.
`
`Class 42: Server administration, namely, technical support services in the nature of
`technical administration of servers for others; quality control of goods and services for
`others; design in the nature of development of encryption, decryption, access control
`systems for television, radio, including nomadic television and radio programs and any
`information transmission system; design in the nature of development of computer systems
`and software; design in the nature of development of interactive programs; professional
`consultations in the creation of video programs; administration of user rights on computer
`networks, namely, providing user authentication services to access computer networks;
`consulting services in telecommunications technology; installation, maintenance, updating
`and upgrading of software; computer data recovery; external data backup; design and
`
`

`

`development of operating software for access to and use of a cloud computing network;
`design in the nature of development of virtual spaces for online data exchange; information
`in the field of computer science applied to telecommunications; computer formatting of
`texts and/or images, still or moving, and/or sounds, musical or not, ring tones, for
`interactive or non interactive use; conversion of data or documents from a physical to an
`electronic medium; services for the creation in the nature of elaboration of virtual and
`interactive images; creation and development of Internet projects in the nature of
`engineering work.
`
`Opposer Comcast Corporation (“Opposer”) consents to these amendments. Contingent
`
`upon the Board’s acceptance and entry of the above amendments to the application, the parties
`
`stipulate to and hereby move the Board to dismiss Opposer’s Notice of Opposition in the
`
`proceeding with prejudice.
`
`The Parties also respectfully request that the Board suspend this proceeding until it has
`
`considered and decided this motion.
`
`Respectfully submitted,
`
`/s/Mitchell H. Stabbe______________
`Mitchell H Stabbe
`Radhika P. Raju
`Wilkinson Barker Knauer, LLP
`1800 M Street, NW, Suite 800N
`Washington, D.C. 20036
`trademark@wbklaw.com
`mstabbe@wbklaw.com
`rraju@wbklaw.com
`
`Attorneys for Opposer Comcast Corporation
`
`Dated: September 5, 2023
`
`
`_/S/ Victoria G. Sedinger_
`Amy Wright
`Kristin H. Hardy
`Victoria G. Sedinger
`Taft Stettinius & Hollister LLP
`One Indiana Square, Suite 3500
`Indianapolis, IN 46204
`efstrademarks@taftlaw.com
`awright@taftlaw.com
`khardy@taftlaw.com
`vsedinger@taftlaw.com
`
`Attorneys for Applicant Phenixya, SAS
`
`Dated: September 1, 2023
`
`
`
`