Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1030687
`01/22/2020
`
`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
`
`Home Box Office, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`01/22/2020
`
`30 HUDSON YARDS
`NEW YORK, NY 10001
`UNITED STATES
`
`TAMARA CARMICHAEL
`OLSHAN FROME WOLOSKY LLP
`1325 AVENUE OF THE AMERICAS
`NEW YORK, NY 10019
`UNITED STATES
`aprovencio@olshanlaw.com, tcarmichael@olshanlaw.com
`2124512300
`
`Applicant Information
`
`Application No
`
`88432198
`
`Publication date
`
`09/24/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`01/22/2020
`
`John Teng
`P.O. Box 11189
`Torrance, CA 90510
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`01/22/2020
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: downloadable video recordings in the fields
`of local and international news, aging, physical health and wellness, skin care and nutrition, fitness
`and exercise, mental health and wellness, travel andadventure, work and profession, relationships
`and sexuality, spirituality, family and friends, love and romance, men's and women's issues, finance
`and money, real estate and architecture, philanthropy, etiquette, consumer product reviews, network-
`ing, emergency preparedness, entrepreneurship, self-help, education, motivation and life coaching,
`fashion, life balance and lifestyle
`
`Class 041. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Providing a website featuring blogs
`andnon-downloadable publications, in the nature of articles, newsletters, interviews, tutorials, namely,
`tutorial sessionsin the form of non-downloadable videos,and non-downloadable videos in the fields of
`local and international news, aging, physical health and wellness, skin care and nutrition, fitness and
`exercise, mental health and wellness, travel and adventure, work and profession, relationships and
`sexuality, spirituality, familyand friends, love and romance, men's and women's issues, finance and
`
`

`

`money, real estate and architecture, philanthropy,etiquette, consumer product reviews, networking,
`emergency preparedness, entrepreneurship, self-help, education, motivation and life coaching, fash-
`ion, life balance and lifestyle
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`4272417
`
`Registration Date
`
`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.
`
`1288284
`
`Registration Date
`
`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.
`
`4862858
`
`Registration Date
`
`12/01/2015
`
`Application Date
`
`04/16/2015
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`MAX GO
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`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.
`
`3880651
`
`Registration Date
`
`11/23/2010
`
`Word Mark
`
`Design Mark
`
`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
`No.
`
`3887035
`
`Registration Date
`
`12/07/2010
`
`Word Mark
`
`MAX GO
`
`Application Date
`
`02/23/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`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.
`
`4862857
`
`Registration Date
`
`12/01/2015
`
`Word Mark
`
`Design Mark
`
`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.
`
`4112006
`
`Registration Date
`
`03/13/2012
`
`Word Mark
`
`MAX GO
`
`Application Date
`
`09/26/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`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.
`
`1349993
`
`Registration Date
`
`07/16/1985
`
`Application Date
`
`05/20/1980
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`CINEMAX
`
`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.
`
`4298664
`
`Registration Date
`
`03/05/2013
`
`Word Mark
`
`Design Mark
`
`CINEMAX
`
`Application Date
`
`01/11/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`
`NONE
`
`

`

`Mark
`
`Goods/Services
`
`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.
`
`4258419
`
`Registration Date
`
`12/11/2012
`
`Word Mark
`
`Design Mark
`
`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 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 fea-
`turing drama, comedy, action, adventure; ] pre-recorded digital media featuring
`drama, comedy, action, adventure
`
`U.S. Registration
`No.
`
`4191586
`
`Registration Date
`
`08/14/2012
`
`Word Mark
`
`Design Mark
`
`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
`
`U.S. Registration
`No.
`
`4165652
`
`Registration Date
`
`06/26/2012
`
`Word Mark
`
`Design Mark
`
`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.
`
`4111814
`
`Registration Date
`
`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.
`
`4084059
`
`Registration Date
`
`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.
`
`4084058
`
`Registration Date
`
`01/10/2012
`
`Word Mark
`
`Design Mark
`
`MOREMAX
`
`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.
`
`4476232
`
`Registration Date
`
`01/28/2014
`
`Word Mark
`
`MOVIEMAX
`
`Application Date
`
`03/22/2013
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`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.
`
`4111815
`
`Registration Date
`
`03/13/2012
`
`Word Mark
`
`Design Mark
`
`OUTERMAX
`
`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.
`
`4088075
`
`Registration Date
`
`01/17/2012
`
`Word Mark
`
`THRILLERMAX
`
`Application Date
`
`07/29/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`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
`
`85694671#TMSN.png( bytes )
`86599956#TMSN.png( bytes )
`77676464#TMSN.png( bytes )
`77676470#TMSN.png( bytes )
`86599951#TMSN.png( bytes )
`85431589#TMSN.png( bytes )
`85215359#TMSN.png( bytes )
`85296273#TMSN.png( bytes )
`85296277#TMSN.png( bytes )
`85296284#TMSN.png( bytes )
`85384372#TMSN.png( bytes )
`85384369#TMSN.png( bytes )
`85384214#TMSN.png( bytes )
`85884297#TMSN.png( bytes )
`85384378#TMSN.png( bytes )
`85384371#TMSN.png( bytes )
`Notice of Opposition MAXLIFE 88432198.pdf(463100 bytes )
`
`Signature
`
`/TAMARA CARMICHAEL/
`
`Name
`
`Date
`
`TAMARA CARMICHAEL
`
`01/22/2020
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 88432198: MAXLIFE
`Published in the Official Gazette of Sep. 24, 2019
`
`Home Box Office, Inc,
`Opposer,
`
`Opposition No. ________
`
`)
`)
`)
`)
`)
`)
`)
`Applicant.
`NOTICE OF OPPOSITION
`
`v.
`
`John Teng,
`
`
`
`
`
`Home Box Office, Inc. (“Opposer”), a Delaware corporation, located and doing
`
`business at 30 Hudson Yards, New York, New York 10001, believes it will be damaged
`
`by the registration of the trademark MAXLIFE for “downloadable video recordings in the
`
`fields of local and international news, aging, physical health and wellness, skin care
`
`and nutrition, fitness and exercise, mental health and wellness, travel and adventure,
`
`work and profession, relationships and sexuality, spirituality, family and friends, love
`
`and romance, men's and women's issues, finance and money, real estate and
`
`architecture, philanthropy, etiquette, consumer product
`
`reviews, networking,
`
`emergency preparedness, entrepreneurship, self-help, education, motivation and life
`
`coaching, fashion, life balance and lifestyle” in International Class 009; and “Providing a
`
`website featuring blogs and non-downloadable publications, in the nature of articles,
`
`newsletters, interviews, tutorials, namely, tutorial sessions in the form of non-
`
`downloadable videos, and non-downloadable videos in the fields of local and
`
`international news, aging, physical health and wellness, skin care and nutrition, fitness
`
`and exercise, mental health and wellness, travel and adventure, work and profession,
`
`relationships and sexuality, spirituality, family and friends, love and romance, men's
`
`5289542-1
`
`1
`
`

`

`
`
`and women's issues, finance and money, real estate and architecture, philanthropy,
`
`etiquette, consumer product
`
`reviews, networking, emergency preparedness,
`
`entrepreneurship, self-help, education, motivation and life coaching, fashion, life
`
`balance and lifestyle” in International Class 041 in Application Serial No. 88432198 (the
`
`“Application”), owned by John Teng (“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. 88432198,
`
`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, 5STARMAX, ACTIONMAX, MOREMAX, MOVIEMAX, OUTERMAX, and
`
`THRILLERMAX, all of which are part of HBO’s family of MAX marks (collectively, the
`
`“MAX Marks”).
`
`3.
`
`Opposer owns registrations and applications for its MAX Marks with the
`
`United States Patent and Trademark Office (“PTO”), including, but not limited to:
`
` Mark
`1. MAX
`
`App. No. Reg. No. Class/Goods/Services
`85694671 4272417 41 - 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
`
`5289542-1
`
`2
`
`

`

`
`
` Mark
`
`2. MAX
`3. MAX GO
`
`4. MAX GO
`
`5. MAX GO
`
`6. MAX GO & Design
`
`
`
`
`7. MAX GO & Design
`
`
`
`
`App. No. Reg. No. Class/Goods/Services
`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
`73424847 1288284 41 - Pay Television Services
`86599956 4862858 9 - 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
`77676464 3880651 38 - 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 networks
`77676470 3887035 41 - 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
`86599951 4862857 9 - 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
`85431589 4112006 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,
`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;
`
`5289542-1
`
`3
`
`

`

`
`
` Mark
`
`8. CINEMAX
`9. CINEMAX
`
`10. CINEMAX & Design
`
`
`
`11. CINEMAX & Design
`
`
`
`12. CINEMAX & Design
`
`
`
`App. No. Reg. No. Class/Goods/Services
`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
`73262998 1349993 41 - premium or pay television services
`85215359 4298664 41 - 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
`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
`85296277 4191586 38 - 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
`85296284 4165652 41 - Entertainment services, in the nature of
`providing non-downloadable entertainment
`programs and content, namely, films,
`television programs and related clips,
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`5289542-1
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`4
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`
`
` Mark
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`13. 5 STARMAX
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`14. ACTIONMAX
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`15. MOREMAX
`
`16. MOVIEMAX
`
`17. OUTERMAX
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`18. THRILLERMAX
`
`
`
`App. No. Reg. No. Class/Goods/Services
`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
`85384372 4111814 41 - pay or premium television programming
`services
`85384369 4084059 41 - pay or premium television programming
`services
`85384214 4084058 41 - pay or premium television programming
`services
`85884297 4476232 41 - 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
`85384378 4111815 41 - pay or premium television programming
`services
`85384371 4088075 41 - pay or premium television programming
`services
`
`The foregoing registrations and applications are valid, subsisting, and owned by
`
`Opposer. Opposer’s Registration Nos. 1288284, 1349993, 3880651, 3887035,
`
`5289542-1
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`5
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`

`
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`4084058, 4084059, 4088075, 4111814, 4111815, 4112006, 4165652, 4191586,
`
`4258419, 4272417, 4298664 and 4476232 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, Opposer has built up and now owns an extremely
`
`valuable goodwill which is symbolized by its MAX Marks.
`
`5.
`
`Applicant’s application for, proposed use, and/or actual use of MAXLIFE
`
`for “downloadable video recordings in the fields of local and international news, aging,
`
`physical health and wellness, skin care and nutrition, fitness and exercise, mental health
`
`and wellness, travel and adventure, work and profession, relationships and sexuality,
`
`spirituality, family and friends, love and romance, men's and women's issues, finance
`
`and money, real estate and architecture, philanthropy, etiquette, consumer product
`
`reviews, networking, emergency preparedness, entrepreneurship, self-help, education,
`
`motivation and life coaching, fashion, life balance and lifestyle” in International Class
`
`009; and “Providing a website featuring blogs and non-downloadable publications, in the
`
`nature of articles, newsletters, interviews, tutorials, namely, tutorial sessions in the form
`
`of non-downloadable videos, and non-downloadable videos in the fields of local and
`
`international news, aging, physical health and wellness, skin care and nutrition, fitness
`
`and exercise, mental health and wellness, travel and adventure, work and profession,
`
`relationships and sexuality, spirituality, family and friends, love and romance, men's and
`
`women's issues, finance and money, real estate and architecture, philanthropy,
`
`etiquette, consumer product
`
`reviews, networking, emergency preparedness,
`
`entrepreneurship, self-help, education, motivation and life coaching, fashion, life balance
`
`5289542-1
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`6
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`
`
`and lifestyle” in International Class 041 (“Applicant’s Goods/Services”) is without
`
`Opposer’s consent or permission.
`
`COUNT I – LIKELIHOOD OF CONFUSION
`
`Opposer realleges the allegations in Paragraphs 1 through 5.
`
`Applicant’s use of MAXLIFE in connection with Applicant’s Goods/Services
`
`6.
`
`7.
`
`is likely to cause confusion, mistake, or deception in that consumers are likely to believe
`
`that Applicant’s Goods/Services are Opposer’s goods/services, or the goods/services of
`
`a person or company that is sponsored, authorized or licensed by, or in some other way
`
`legitimately connected with, Opposer.
`
`COUNT II – DILUTION
`
`8.
`
`9.
`
`Opposer realleges the allegations of Paragraphs 1 through 7.
`
`Prior to Applicant’s filing date that is subject of the Application, Opposer’s
`
`MAX Marks became distinctive and famous in accordance with 15 U.S.C. § 1125(c).
`
`10.
`
`Applicant’s use of MAXLIFE in connection with Applicants’ Goods/Services
`
`is likely to cause dilution of Opposer’s famous MAX Marks.
`
`WHEREFORE, Opposer respectfully requests that this opposition be sustained
`
`and that Application Serial No. 88432198 be denied registration.
`
`Please debit our Deposit Account No. 504261 for the filing fee and for any
`
`additional necessary fees.
`
`Please address all correspondence to Tamara F. Carmichael, Esq., OLSHAN
`
`FROME WOLOSKY LLP, 1325 Avenue of the Americas, New York, New York, 10019.
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`5289542-1
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`Date: January 22, 2020
`
`
`
`
`
`
`
`OLSHAN FROME WOLOSKY LLP
`
` /s/ Tamara Carmichael
`Tamara F. Carmichael
`1325 Avenue of the Americas
`New York, New York 10019
`Tel: 212-451-2300
`Email: tcarmichael@olshanlaw.com,
`aprovencio@olshanlaw.com
`
`Attorneys for Opposer, Home Box Office, Inc.
`
`
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`5289542-1
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`