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Notice of Opposition Opposer Information Applicant Information Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1015362 Filing date: 11/13/2019 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 IMAX Corporation Entity Corporation Citizenship Canada Address 2525 Speakman Drive Mississauga, ON L5K1B1 CANADA Attorney informa- Christopher P. Bussert tion Kilpatrick Townsend & Stockton LLP 1100 Peachtree Street, Suite 2800 Atlanta, GA 30309 UNITED STATES [email protected], [email protected], [email protected] 4048156500 Applicant Information Application No 88487829 Publication date 10/29/2019 Opposition Filing 11/13/2019 Opposition Peri- 11/28/2019 Date od Ends Applicant DRG 3 LLC 620 Bear Run Ln Lewis Center, OH 43035 UNITED STATES Goods/Services Affected by Opposition Class 035. First Use: 2016/01/27 First Use In Commerce: 2016/01/27 All goods and services in the class are opposed, namely: Medical billing for laboratories, healthcare facilities, and medical offices/practices 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 942747 Application Date 04/13/1970 No. Registration Date 09/12/1972 Foreign Priority NONE Date Word Mark IMAX Design Mark Description of NONE Mark Goods/Services Class U026 (International Class 001, 009, 010). First use: First Use: 0 First Use In Commerce: 0 MOTION PICTURE PROJECTORS, CAMERAS, OPTICAL PRINTERS, FILM EDITING MACHINES ANDMOTION PICTURE SCREENS Class U038 (International Class 009, 016, 028). First use: First Use: 0 First Use In Commerce: 0 [ MOTION PICTURE FILMS ] U.S. Registration 2857685 Application Date 07/21/2003 No. Registration Date 06/29/2004 Foreign Priority NONE Date Word Mark IMAX DMR Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 2002/03/04 First Use In Commerce: 2002/03/04 Motion picture production and post production services, including remastering of films from one film format into another U.S. Registration 1283679 Application Date 09/23/1982 No. Registration Date 06/26/1984 Foreign Priority NONE Date Word Mark IMAX Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 1974/02/20 First Use In Commerce: 1974/02/20 Displaying Motion Picture Film and Operating Motion Picture Theatres U.S. Registration 2121078 Application Date 07/09/1996 No. Registration Date 12/16/1997 Foreign Priority NONE Date Word Mark IMAX Design Mark Description of NONE Mark Goods/Services Class 009. First use: First Use: 1990/06/01 First Use In Commerce: 1990/06/01 audio and audio visual tapes and compact discs on educational and entertain- mentsubjects; sound systems for use in motion picture theaters and other public performance theaters, halls and auditoriums, namely, digital sound sources, au- dio processing control subsystems, amplifier subsystems and loudspeakers Class 025. First use: First Use: 1982/12/31 First Use In Commerce: 1982/12/31 clothing, namely, T-shirts, sweatshirts, [ sweatpants ] and caps Class 028. First use: First Use: 1988/04/30 First Use In Commerce: 1988/04/30 [ motion simulator rides ] U.S. Registration 3965737 Application Date 09/22/2010 No. Registration Date 05/24/2011 Foreign Priority NONE Date Word Mark IMAX Design Mark Description of NONE Mark Goods/Services Class 009. First use: First Use: 2010/03/30 First Use In Commerce: 2010/03/30 CDs, DVDs, high definition DVDs, optical discs, magneto optical discs and laser- discs in the fields of education and entertainment; downloadable audio-visual content in the fields of education and entertainment; 3D glasses U.S. Registration 5215314 Application Date 07/14/2016 No. Registration Date 05/30/2017 Foreign Priority NONE Date Word Mark IMAX VR Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 2017/01/06 First Use In Commerce: 2017/01/06 Entertainment services, namely, providing facilities and equipment for playing virtual reality games, providing interactive play areas, and providing virtual real- ity exhibits and displays in the fields of entertainment and education U.S. Registration 5408334 Application Date 07/14/2016 No. Registration Date 02/20/2018 Foreign Priority NONE Date Word Mark IMAX Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 2017/06/29 First Use In Commerce: 2017/06/29 Entertainment services, namely, providing facilities and equipment for playing virtual reality games, providing interactive play areas, and providing virtual real- ity exhibits and displays in the fields of entertainment and education U.S. Registration 5715699 Application Date 02/04/2015 No. Registration Date 04/02/2019 Foreign Priority NONE Date Word Mark IMAX Design Mark Description of NONE Mark Goods/Services Class 009. First use: First Use: 2018/10/25 First Use In Commerce: 2018/10/25 Television and video converters U.S. Registration 2197111 Application Date 01/24/1997 No. Registration Date 10/20/1998 Foreign Priority NONE Date Word Mark THE IMAX EXPERIENCE Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 1987/01/00 First Use In Commerce: 1987/01/00 motion picture theater services featuring integrating large format, wide angle,low distortion, high resolution, high image stability cinematographic projection equip- ment and film, screen, theater design, seating and sound technology U.S. Registration 2263032 Application Date 06/08/1998 No. Registration Date 07/20/1999 Foreign Priority NONE Date Word Mark AN IMAX EXPERIENCE Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 1996/10/11 First Use In Commerce: 1996/10/11 motion picture theater services featuring integrating large format, wide angle,low distortion, high resolution, high image stability cinemagraphic projection equip- ment and film, screen, theater design, seating and sound technology U.S. Registration 5681124 Application Date 12/19/2016 No. Registration Date 02/19/2019 Foreign Priority NONE Date Word Mark AN IMAX 2D EXPERIENCE Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 2017/09/08 First Use In Commerce: 2017/09/08 movie theater services U.S. Registration 5681123 Application Date 12/19/2016 No. Registration Date 02/19/2019 Foreign Priority NONE Date Word Mark THE IMAX 2D EXPERIENCE Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 2017/03/17 First Use In Commerce: 2017/03/17 movie theater services U.S. Registration 3058603 Application Date 03/01/2005 No. Registration Date 02/14/2006 Foreign Priority NONE Date Word Mark AT THE MAX Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 2004/01/22 First Use In Commerce: 2004/01/22 movie theater services U.S. Registration 2871953 Application Date 11/04/1999 No. Registration Date 08/10/2004 Foreign Priority NONE Date Word Mark TO THE MAX Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 2004/01/22 First Use In Commerce: 2004/01/22 movie theatre services U.S. Registration 1655809 Application Date 06/25/1990 No. Registration Date 09/03/1991 Foreign Priority NONE Date Word Mark MOVIES TO THE MAX Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 1989/01/31 First Use In Commerce: 1989/01/31 movie theater services Attachments 72356735#TMSN.png( bytes ) 76532215#TMSN.png( bytes ) 85135280#TMSN.png( bytes ) 87104709#TMSN.png( bytes ) 87104707#TMSN.png( bytes ) 86524430#TMSN.png( bytes ) 87273034#TMSN.png( bytes ) 87273004#TMSN.png( bytes ) 76632397#TMSN.png( bytes ) 75840741#TMSN.png( bytes ) iMAX MEDICAL BILLING - SN88487829 - Notice of Opposition.PDF(253382 bytes ) Signature /Christopher P. Bussert/ Name Christopher P. Bussert Date 11/13/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the matter of Application Serial No. 88/487,829; iMAX MEDICAL BILLING; Published in the Official Gazette of October 29, 2019 IMAX CORPORATION, ) ) Opposer, ) ) v. ) Opposition No. __________ ) DRG 3 LLC, ) ) Applicant. ) NOTICE OF OPPOSITION Opposer IMAX Corporation (“Opposer”), a Canadian corporation whose business address is 2525 Speakman Drive, Sheridan Science and Technology Park, Mississauga, Ontario, Canada L5K 1B1, believes that it will be damaged by registration of the iMAX MEDICAL BILLING mark as currently shown in Application Serial No. 88/487,829 and hereby opposes the same pursuant to the provisions of 15 U.S.C. § 1063. On June 25, 2019, DRG 3 LLC (“Applicant”) filed an application to register the iMAX MEDICAL BILLING mark for medical billing for laboratories, healthcare facilities, and medical offices/practices., in International Class 35 (collectively “Applicant’s Services”). Applicant’s mark was published in the Official Gazette on October 29, 2019. As grounds for its opposition, Opposer alleges: 1. Since at least 1972, Opposer has been, and is currently, using the IMAX mark in connection with a wide range of technology and services including projection systems, cameras, sound systems, motion picture conversion and editing equipment, 3D glasses, production and post-production services, and screens. Opposer’s IMAX mark has also been, and is currently, used in connection with a wide variety of entertainment related services including motion picture films and the operation of a worldwide system of motion picture theaters. Opposer’s IMAX mark has also been and is currently used in connection with other technology related goods including television and video converters. Opposer’s use of its IMAX mark has been valid and continuous since the date of first use and has not been abandoned. 2. Opposer is the owner of the following U.S.
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