Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA718238
`ESTTA Tracking number:
`01/04/2016
`
`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
`Granted to Date
`of previous ex-
`tension
`Address
`
`Home Box Office, Inc.
`01/03/2016
`
`1100 Avenue of the Americas
`New York, NY 10036
`UNITED STATES
`
`Attorney informa-
`tion
`
`Melanie J. Howard
`LOEB & LOEB LLP
`10100 Santa Monica Blvd., Suite 2200
`Los Angeles, CA 90067
`UNITED STATES
`efiling@loeb.com, mhoward@loeb.com, scrisafulli@loeb.com, chdock-
`et@loeb.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86451821
`01/04/2016
`
`Publication date
`Opposition Peri-
`od Ends
`
`07/07/2015
`01/03/2016
`
`Jawline Inc.
`c/o Tribeca Business Management
`New York, NY 10170
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2014/01/14 First Use In Commerce: 2014/01/14
`All goods and services in the class are opposed, namely: Compact discs featuring music; Download-
`able music files; Musical sound recordings; Musical video recordings; Prerecorded audio tapes fea-
`turing music; Prerecorded video tapes featuring music
`Class 016. First Use: 2014/01/14 First Use In Commerce: 2014/01/14
`All goods and services in the class are opposed, namely: Posters
`Class 025. First Use: 2014/02/08 First Use In Commerce: 2014/02/08
`All goods and services in the class are opposed, namely: Hats; Hooded sweatshirts; Jackets; Shirts;
`Sports caps and hats; Sweat shirts; Woolly hats
`Class 041. First Use: 2014/01/14 First Use In Commerce: 2014/01/14
`All goods and services in the class are opposed, namely: Entertainment in the nature of live perform-
`ances by Max Schneider; Entertainment, namely, live music concerts
`
`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
`
`4111814
`
`03/13/2012
`
`Word Mark
`Design Mark
`
`5 STARMAX
`
`Application Date
`
`07/29/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2003/11/21 First Use In Commerce: 2003/11/21
`PAY OR PREMIUM TELEVISION PROGRAMMING SERVICES
`
`U.S. Registration
`No.
`Registration Date
`
`4084059
`
`01/10/2012
`
`Word Mark
`Design Mark
`
`ACTIONMAX
`
`Application Date
`
`07/29/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1998/06/01 First Use In Commerce: 1998/06/01
`PAY OR PREMIUM TELEVISION PROGRAMMING SERVICES
`
`U.S. Registration
`No.
`Registration Date
`
`4258419
`
`12/11/2012
`
`Word Mark
`
`CINEMAX
`
`Application Date
`
`04/15/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`The mark consists of "CINEMAX" in slanted block letters on a quadrilateral
`background.
`Class 009. First use: First Use: 2012/08/07 First Use In Commerce: 2012/08/07
`Pre-recorded video discs, DVDs, high definition digital discs featuring drama,
`comedy, action, adventure featuring content from or related to television pro-
`gramming or television series; motion picture films and films for television featur-
`ing drama, comedy, action, adventure; pre-recorded digital media featuring
`drama, comedy, action, adventure
`
`1887240
`
`04/04/1995
`
`CINEMAX
`
`NONE
`
`Application Date
`
`03/14/1994
`
`Foreign Priority
`Date
`
`NONE
`
`Class 025. First use: First Use: 1983/00/00 First Use In Commerce: 1983/00/00
`hats [, jackets, ] and shirts
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4191586
`
`08/14/2012
`
`CINEMAX
`
`Application Date
`
`04/15/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of "CINEMAX" in slanted block letters on a quadrilateral
`background.
`Class 038. First use: First Use: 2011/08/15 First Use In Commerce: 2011/08/15
`Broadcasting of television programs; cable television broadcasting services;
`electronic transmission, broadcasting and delivery of audio, video and multime-
`dia entertainment content including text, data, images, audio, video and audi-
`ovisualfiles by means of the Internet, wireless communication, electronic com-
`munications networks and computer networks; electronic transmission and
`
`

`
`streaming of digital media content for others via global and local computer net-
`works; electronic transmission of voice, data and images by television and video
`broadcasting
`
`1349993
`
`07/16/1985
`
`CINEMAX
`
`NONE
`
`Application Date
`
`05/20/1980
`
`Foreign Priority
`Date
`
`NONE
`
`Class 041. First use: First Use: 1980/05/16 First Use In Commerce: 1980/05/16
`PREMIUM OR PAY TELEVISION SERVICES
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4165652
`
`06/26/2012
`
`CINEMAX
`
`Application Date
`
`04/15/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of "CINEMAX" in slanted block letters on a quadrilateral
`background.
`Class 041. First use: First Use: 2011/08/15 First Use In Commerce: 2011/08/15
`Entertainment services, in the nature of providing non-downloadable entertain-
`ment programs and content, namely, films, television programs and related
`clips, graphics and information in the fields ofdrama, comedy, action, adventure,
`documentary, sports, music, variety, entertainment news, documentary and an-
`imation rendered through the media of television, cable and satellite systems,
`the Internet, electronic communications networks and wireless communication
`networks; production and distribution of television programs and motion pictures
`rendered through the media of television, cable and satellite systems, and the
`Internet; television programming services; interactive online entertainment in the
`nature of a website containing non-downloadable photographic, video and prose
`presentations,related video clips and other multimedia materials featuring con-
`tent from or relating to television programs and television films in the fields of
`drama, comedy, action, adventure, documentary, sports, music, variety, enter-
`tainment news, documentary and animation
`
`U.S. Registration
`No.
`Registration Date
`
`4298664
`
`03/05/2013
`
`Word Mark
`
`CINEMAX
`
`Application Date
`
`01/11/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2011/08/07 First Use In Commerce: 2011/08/07
`Entertainment services in the nature ofproviding entertainment programming an-
`dcontent, namely, on-going television programs, and related clips and graphics
`and information relating to television programming and content in the fields of
`comedy, drama, action, adventure via television, cable and satellite systems,
`theInternet, electronic communications networks, computer networks and wire-
`less communications networks
`
`U.S. Registration
`No.
`Registration Date
`
`3760154
`
`03/16/2010
`
`Word Mark
`Design Mark
`
`CINEMAX ON DEMAND
`
`Application Date
`
`03/24/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 038. First use: First Use: 2002/06/01 First Use In Commerce: 2002/06/01
`VIDEO-ON-DEMAND CABLE TELEVISION TRANSMISSION SERVICES
`
`U.S. Registration
`No.
`Registration Date
`
`1288284
`
`07/31/1984
`
`Application Date
`
`05/09/1983
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`MAX
`
`NONE
`
`Class 041. First use: First Use: 1980/05/16 First Use In Commerce: 1980/05/16
`Pay Television Services
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`4272417
`
`01/08/2013
`
`Word Mark
`Design Mark
`
`MAX
`
`Application Date
`
`08/03/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1980/05/16 First Use In Commerce: 1980/05/16
`Entertainment services in the nature ofproviding entertainment programming an-
`dcontent, namely, motion pictures and television programs, and related video
`clips, graphics and information in the fields of comedy, drama, action, variety,
`adventure and animation, via television, cable and satellite systems, the Inter-
`net, electronic communications networks, computer networks and wireless com-
`munications networks; entertainment services in the nature of video and audio
`programming, television and motion picture programming; premium and pay
`television programming services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3880651
`
`11/23/2010
`
`MAX GO
`
`Application Date
`
`02/23/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 038. First use: First Use: 2010/09/08 First Use In Commerce: 2010/09/08
`Mobile media services in the nature of electronic transmission, broadcasting and
`delivery of audio, video and multimedia entertainment content including text,
`data, images, audio, video and audiovisual files by means of the internet, wire-
`less communication, electronic communications networks and computer net-
`works
`
`U.S. Registration
`
`3887035
`
`Application Date
`
`02/23/2009
`
`

`
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`12/07/2010
`
`MAX GO
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2010/09/08 First Use In Commerce: 2010/09/08
`Entertainment services in the nature ofproviding entertainment programs and
`content, namely, films, television programs, and related clips, graphics and in-
`formation relating to films and television programs in the fields of comedy,
`drama,action, adventure, documentary and animation, via the Internet, electron-
`ic communications networks, computer networks and wireless communications
`networks
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4112006
`
`03/13/2012
`
`MAX GO
`
`Application Date
`
`09/26/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of "MAX GO" in slanted block letters on a quadrilateral back-
`ground.
`Class 041. First use: First Use: 2011/08/15 First Use In Commerce: 2011/08/15
`Entertainment services, in the nature of providing non-downloadable entertain-
`ment programs and content, namely, films, television programs and related
`clips, graphics and information in the fields ofdrama, comedy, action, adventure,
`animation, sports, music, variety, documentary and entertainment news, via the
`Internet, electronic communications networks and wireless communication net-
`works; distribution of television programs and motion pictures rendered through
`the media of television and the Internet; television programming services; inter-
`active online entertainment in the nature of a website containing non-
`downloadable photographic, video and prose presentations, related video clips
`and other multimedia materials featuring content from or relating to television
`programs and televisionfilms in the fields of drama, comedy, action, adventure,
`
`

`
`animation, sports, music, variety, documentary and entertainment news
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4862857
`
`12/01/2015
`
`MAX GO
`
`Application Date
`
`04/16/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of "MAX GO" in slanted block letters on a quadrilateral back-
`ground.
`Class 009. First use: First Use: 2010/09/08 First Use In Commerce: 2010/09/08
`Downloadable software in the nature of a mobile application for wireless content
`delivery of multimedia entertainment content including text, data, images, audio,
`video and audiovisual files
`
`U.S. Registration
`No.
`Registration Date
`
`4387007
`
`08/20/2013
`
`Word Mark
`Design Mark
`
`MAX HD
`
`Application Date
`
`10/18/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of "MAX HD" in slanted block letters on a quadrilateral back-
`ground.
`Class 041. First use: First Use: 2011/08/15 First Use In Commerce: 2011/08/15
`Entertainment services, in the nature of providing non-downloadable entertain-
`ment programs and content, namely, films, television programs and related
`clips, and graphics in the fields of drama, comedy, action, adventure rendered
`through the media of television, cable and satellite systems, the Internet, elec-
`tronic communications networks and wireless communication networks
`
`U.S. Registration
`No.
`Registration Date
`
`4084058
`
`01/10/2012
`
`Word Mark
`
`MOREMAX
`
`Application Date
`
`07/29/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1998/06/01 First Use In Commerce: 1998/06/01
`PAY OR PREMIUM TELEVISION PROGRAMMING SERVICES
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4476232
`
`01/28/2014
`
`MOVIEMAX
`
`Application Date
`
`03/22/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2013/06/01 First Use In Commerce: 2013/06/01
`Entertainment services in the nature ofproviding entertainment programming an-
`dcontent, namely, motion pictures and related video clips, graphics and informa-
`tion in the fields of comedy, drama, action, variety, adventure and animation, via
`television, cable and satellite systems; entertainment services in the nature of
`video and audio programming, motion picture programming; premium and pay
`television programming services
`
`U.S. Registration
`No.
`Registration Date
`
`4111815
`
`03/13/2012
`
`Word Mark
`
`OUTERMAX
`
`Application Date
`
`07/29/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2003/11/21 First Use In Commerce: 2003/11/21
`PAY OR PREMIUM TELEVISION PROGRAMMING SERVICES
`
`U.S. Registration
`No.
`Registration Date
`
`4088075
`
`01/17/2012
`
`Word Mark
`Design Mark
`
`THRILLERMAX
`
`Application Date
`
`07/29/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 041. First use: First Use: 1998/06/01 First Use In Commerce: 1998/06/01
`PAY OR PREMIUM TELEVISION PROGRAMMING SERVICES
`
`85384372#TMSN.png( bytes )
`85384369#TMSN.png( bytes )
`85296273#TMSN.png( bytes )
`85296277#TMSN.png( bytes )
`85296284#TMSN.png( bytes )
`85215359#TMSN.png( bytes )
`77697962#TMSN.png( bytes )
`85694671#TMSN.png( bytes )
`77676464#TMSN.png( bytes )
`77676470#TMSN.png( bytes )
`85431589#TMSN.png( bytes )
`86599951#TMSN.png( bytes )
`85757517#TMSN.png( bytes )
`85384214#TMSN.png( bytes )
`85884297#TMSN.png( bytes )
`85384378#TMSN.png( bytes )
`
`

`
`85384371#TMSN.png( bytes )
`MAX (Jawline) Notice of Opposition.pdf(60573 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
`
`/Melanie J. Howard/
`Melanie J. Howard
`01/04/2016
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 86/451,821 for the Mark MAX
`Published in the Official Gazette on July 7, 2015
`
`
`HOME BOX OFFICE, INC.,
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`JAWLINE INC.,
`
`
`
`
`
`
`Applicant.
`
`Opposition No. _______________
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`NOTICE OF OPPOSITION
`
`
`
`
`
`Home Box Office, Inc. (“Opposer”), a Delaware corporation located and doing business
`
`at 1100 Avenue of the Americas, New York, New York 10036, believes it will be damaged by
`
`the registration of the trademark MAX for “Compact discs featuring music; Downloadable music
`
`files; Musical sound recordings; Musical video recordings; Prerecorded audio tapes featuring
`
`music; Prerecorded video tapes featuring music” in International Class 9; “Posters” in
`
`International Class 16; “Hats; Hooded sweatshirts; Jackets; Shirts; Sports caps and hats; Sweat
`
`shirts; Woolly hats” in International Class 25; and “Entertainment in the nature of live
`
`performances by Max Schneider; Entertainment, namely, live music concerts” in International
`
`Class 41, in Application Serial No. 86/451,821 (the “Application”), filed by Jawline Inc.
`
`(“Applicant”), and hereby opposes the same.
`
`As grounds for this opposition, Opposer alleges:
`
`1.
`
`Opposer is a well-known operator of premium pay television channels which are
`
`delivered through television, the Internet and electronic communication networks, including
`
`wireless networks and mobile media services.
`
`
`
`

`
`2. Since long prior to the filing of Applicant’s Application Serial No. 86/451,821,
`
`Opposer has marketed, distributed and sold its premium and pay television services under the
`
`trademarks CINEMAX and MAX, and uses a variety of other MAX-formative marks in
`
`connection with related goods and services, including but not limited to, MAX GO, MAX HD,
`
`MOREMAX, ACTIONMAX, THRILLERMAX,
`
`5STARMAX, MOVIEMAX,
`
`and
`
`OUTERMAX, all of which are part of HBO’s family of MAX marks (collectively, the “MAX
`
`Marks”).
`
`3.
`
`Opposer owns applications and registrations for its MAX Marks for entertainment
`
`and media services, including entertainment programs and content, television programs, movies
`
`and other entertainment content distributed by means of the internet, wireless communication,
`
`and electronic communication networks including mobile communication networks and other
`
`related goods and services with the United States Patent and Trademark Office (“PTO”).
`
`Opposer’s registrations include, but are not limited to:
`
`Mark
`
`5 STARMAX
`1.
`2. ACTIONMAX
`3.
`
`
`
`4. CINEMAX
`5.
`
`
`
`Ser. No. Reg. No. Class Goods/Services
`85384372 4111814 41
`pay or premium television programming services
`85384369 4084059 41
`pay or premium television programming services
`85296273 4258419 9
`pre-recorded video discs, dvds, high definition digital
`discs featuring drama, comedy, action, adventure
`featuring content from or related to television
`programming or television series; motion picture films
`and films for television featuring drama, comedy, action,
`adventure; pre-recorded digital media featuring drama,
`comedy, action, adventure
`hats, jackets, and shirts
`broadcasting of television programs; cable television
`broadcasting services; electronic transmission,
`broadcasting and delivery of audio, video and
`multimedia entertainment content including text, data,
`images, audio, video and audiovisual files by means of
`the internet, wireless communication, electronic
`communications networks and computer networks;
`electronic transmission and streaming of digital media
`content for others via global and local computer
`networks; electronic transmission of voice, data and
`images by television and video broadcasting
`
`74499590 1887240 25
`85296277 4191586 38
`
` 2
`
`

`
`Ser. No. Reg. No. Class Goods/Services
`73262998 1349993 41
`premium or pay television services
`85296284 4165652 41
`entertainment services, in the nature of providing non-
`downloadable entertainment programs and content,
`namely, films, television programs and related clips,
`graphics and information in the fields of drama, comedy,
`action, adventure, documentary, sports, music, variety,
`entertainment news, documentary and animation
`rendered through the media of television, cable and
`satellite systems, the internet, electronic
`communications networks and wireless communication
`networks; production and distribution of television
`programs and motion pictures rendered through the
`media of television, cable and satellite systems, and the
`internet; television programming services; interactive
`online entertainment in the nature of a website
`containing non-downloadable photographic, video and
`prose presentations, related video clips and other
`multimedia materials featuring content from or relating
`to television programs and television films in the fields
`of drama, comedy, action, adventure, documentary,
`sports, music, variety, entertainment news,
`documentary and animation
`entertainment services in the nature of providing
`entertainment programming and content, namely, on-
`going television programs, and related clips and
`graphics and information relating to television
`programming and content in the fields of comedy,
`drama, action, adventure via television, cable and
`satellite systems, the internet, electronic
`communications networks, computer networks and
`wireless communications networks
`video-on-demand cable television transmission services
`
`77697962 3760154 38
`
`85215359 4298664 41
`
`Mark
`
`6. CINEMAX
`7.
`
`
`
`8. CINEMAX
`
`9. CINEMAX ON
`DEMAND
`10. MAX
`11. MAX
`
`73424847 1288284 41
`85694671 4272417 41
`
`12. MAX GO
`
`77676464 3880651 38
`
`pay television services
`entertainment services in the nature of providing
`entertainment programming and content, namely,
`motion pictures and television programs, and related
`video clips, graphics and information in the fields of
`comedy, drama, action, variety, adventure and
`animation, via television, cable and satellite systems,
`the internet, electronic communications networks,
`computer networks and wireless communications
`networks; entertainment services in the nature of video
`and audio programming, television and motion picture
`programming; premium and pay television programming
`services
`mobile media services in the nature of electronic
`transmission, broadcasting and delivery of audio, video
`and multimedia entertainment content including text,
`data, images, audio, video and audiovisual files by
`means of the internet, wireless communication,
`electronic communications networks and computer
`
` 3
`
`

`
`
`
`Mark
`
`13. MAX GO
`
`14.
`
`15.
`
`16.
`
`
`
`
`
`
`
`17. MOREMAX
`18. MOVIEMAX
`
`77676470 3887035 41
`
`85431589 4112006 41
`
`86599951 4862857 9
`
`85757517 4387007 41
`
`85384214 4084058 41
`85884297 4476232 41
`
`Ser. No. Reg. No. Class Goods/Services
`networks
`entertainment services in the nature of providing
`entertainment programs and content, namely, films,
`television programs, and related clips, graphics and
`information relating to films and television programs in
`the fields of comedy, drama, action, adventure,
`documentary and animation, via the internet, electronic
`communications networks, computer networks and
`wireless communications networks
`entertainment services, in the nature of providing non-
`downloadable entertainment programs and content,
`namely, films, television programs and related clips,
`graphics and information in the fields of drama, comedy,
`action, adventure, animation, sports, music, variety,
`documentary and entertainment news, via the internet,
`electronic communications networks and wireless
`communication networks; distribution of television
`programs and motion pictures rendered through the
`media of television and the internet; television
`programming services; interactive online entertainment
`in the nature of a website containing non-downloadable
`photographic, video and prose presentations, related
`video clips and other multimedia materials featuring
`content from or relating to television programs and
`television films in the fields of drama, comedy, action,
`adventure, animation, sports, music, variety,
`documentary and entertainment news
`Downloadable mobile software applications for use in
`the delivery and distribution of audio, video and
`multimedia entertainment content including text, data,
`images, audio, video and audiovisual files
`entertainment services, in the nature of providing non-
`downloadable entertainment programs and content,
`namely, films, television programs and related clips, and
`graphics in the fields of drama, comedy, action,
`adventure rendered through the media of television,
`cable and satellite systems, the internet, electronic
`communications networks and wireless communication
`networks
`pay or premium television programming services
`entertainment services in the nature of providing
`entertainment programming and content, namely,
`motion pictures and related video clips, graphics and
`information in the fields of comedy, drama, action,
`variety, adventure and animation, via television, cable
`and satellite systems; entertainment services in the
`nature of video and audio programming, motion picture
`programming; premium and pay television programming
`services
`pay or premium television programming services
`pay or premium television programming services
`
`85384378 4111815 41
`19. OUTERMAX
`20. THRILLERMAX 85384371 4088075 41
`
` 4
`
`

`
`These registrations are valid, subsisting, and owned by Opposer. Opposer’s Registration Nos.
`
`1,288,284; 1,349,993; and 1,887,240 are also incontestable pursuant to 15 U.S.C. §§ 1064 and
`
`1115(b).
`
`4.
`
`By virtue of the popularity of Opposer’s services offered or sold in connection
`
`with the MAX Marks, and Opposer’s advertising and promotion of the MAX Marks, Opposer
`
`has built up and now owns an extremely valuable goodwill which is symbolized by its MAX
`
`Marks.
`
`5.
`
`Applicant’s use and/or proposed use of MAX for “Compact discs featuring music;
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`Downloadable music files; Musical sound recordings; Musical video recordings; Prerecorded
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`audio tapes featuring music; Prerecorded video tapes featuring music” in International Class 9;
`
`“Posters” in International Class 16; “Hats; Hooded sweatshirts; Jackets; Shirts; Sports caps and
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`hats; Sweat shirts; Woolly hats” in International Class 25; and “Entertainment in the nature of
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`live performances by Max Schneider; Entertainment, namely, live music concerts” in
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`International Class 41 (“Applicant’s Goods and Services”) in the Application is without
`
`Opposer’s consent or permission.
`
`6.
`
`Opposer believes that Applicant’s use and/or proposed use of MAX for
`
`Applicant’s Goods and Services is likely to cause confusion, mistake, or deception in that
`
`consumers may be likely to believe that Applicant’s Goods and Services are Opposer’s goods
`
`and services or the goods and services of a person or company that is sponsored, authorized or
`
`licensed by, or in some other way legitimately connected with, Opposer.
`
`7.
`
`Registration by Applicant of MAX as a mark for Applicant’s Goods and Services
`
`is likely to cause injury to Opposer and to injure Opposer’s rights in its MAX Marks.
`
` 5
`
`

`
`WHEREFORE, Opposer respectfully requests that this opposition be sustained and that
`
`Application Serial No. 86/451,821 be denied registration.
`
`Please debit our Deposit Account No. 502547 for the filing fee and for any additional
`
`necessary fees.
`
`Please address all correspondence to Melanie J. Howard, Esq., Loeb & Loeb LLP, 10100
`
`Santa Monica Blvd., Suite 2200, Los Angeles, California 90067.
`
`Date: January 4, 2016
`
`
`
`
`
`
`
`LOEB & LOEB LLP
`
`By:
`
`/s/ Melanie J. Howard
`Melanie J. Howard
`10100 Santa Monica Blvd., Suite 2200
`Los Angeles, CA 90067
`Telephone: 310.282.2000
`Facsimile: 310.282.2200
`Email: efiling@loeb.com,
`mhoward@loeb.com, scrisafulli@loeb.com
`
`Attorneys for Opposer
`Home Box Office, Inc.
`
` 6
`
`

`
`CERTIFICATE OF SERVICE
`
`I, Sara J. Crisafulli, hereby certify that a copy of this NOTICE OF OPPOSITION has
`
`been served upon:
`
`DONNA L. MIRMAN
`GOTTLIEB, RACKMAN & REISMAN, P.C.
`270 MADISON AVE
`NEW YORK, NEW YORK 10016-0601
`
`via first class mail, postage prepaid, on January 4, 2016.
`
`/s/Sara J. Crisafulli
`
`
`
`
`
`NY1386141.1
`
` 7