THIS DISPOSITION IS
`NOT CITABLE AS PRECEDENT
`OF THE TTAB
`
`
`
`Mailed: August 18, 2005
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________
`
`Trademark Trial and Appeal Board
`________
`
`In re Zuffa, LLC
`________
`
`Serial No. 75982336
`_______
`
`Parker H. Bagley of Milbank, Tweed, Hadley & McCloy LLP for
`Zuffa, LLC.
`
`Debra Lee, Trademark Examining Attorney, Law Office 116
`(Meryl Hershkowitz, Managing Attorney).1
`_______
`
`Before Hairston, Chapman and Drost, Administrative
`Trademark Judges.
`
`Opinion by Chapman, Administrative Trademark Judge:
`
`On January 7, 2002, Zuffa, LLC (a Nevada limited
`
`liability company, located in Las Vegas, Nevada) filed an
`
`application to register the mark ULTIMATE FIGHTING on the
`
`Principal Register for goods and services in International
`
`Classes 9, 25, 28 and 41. The Class 25 goods (and certain
`
`goods and services in Classes 9, 28 and 41) were divided
`
`
`1 The application was assigned to this Examining Attorney at the
`time the Examining Attorney’s brief was due.
`
`
`NOT CITABLE AS PRECEDENT
`OF THE TTAB
`
`
`
`Mailed: August 18, 2005
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________
`
`Trademark Trial and Appeal Board
`________
`
`In re Zuffa, LLC
`________
`
`Serial No. 75982336
`_______
`
`Parker H. Bagley of Milbank, Tweed, Hadley & McCloy LLP for
`Zuffa, LLC.
`
`Debra Lee, Trademark Examining Attorney, Law Office 116
`(Meryl Hershkowitz, Managing Attorney).1
`_______
`
`Before Hairston, Chapman and Drost, Administrative
`Trademark Judges.
`
`Opinion by Chapman, Administrative Trademark Judge:
`
`On January 7, 2002, Zuffa, LLC (a Nevada limited
`
`liability company, located in Las Vegas, Nevada) filed an
`
`application to register the mark ULTIMATE FIGHTING on the
`
`Principal Register for goods and services in International
`
`Classes 9, 25, 28 and 41. The Class 25 goods (and certain
`
`goods and services in Classes 9, 28 and 41) were divided
`
`
`1 The application was assigned to this Examining Attorney at the
`time the Examining Attorney’s brief was due.
`
`
`
`Ser. No. 75982336
`
`out pursuant to applicant’s Request to Divide filed March
`
`8, 2002, resulting in related application Serial No.
`
`76356163. Applicant deleted its Class 28 goods through an
`
`amendment filed September 3, 2003 (via certificate of
`
`mailing). The Class 9 goods remaining in this application
`
`were divided out pursuant to applicant’s Request to Divide
`
`filed December 14, 2004, resulting in related application
`
`Serial No. 75983542. Thus, the application before us
`
`currently involves only the services in International Class
`
`41 identified as “entertainment, namely live stage shows
`
`and performances featuring sports and mixed martial arts.”2
`
`The application was originally based on applicant’s
`
`assertion of a bona fide intention to use the mark in
`
`commerce on or in connection with the identified goods and
`
`services. Applicant filed an Amendment to Allege Use, with
`
`a specimen and claiming a date of first use and first use
`
`in commerce of November 1993 for the services in
`
`International Class 41, which was accepted by the USPTO.
`
`
`2 Applicant claims ownership of Registration Nos. 1939277 for the
`mark THE ULTIMATE FIGHTING CHAMPIONSHIP (“fighting championship”
`disclaimed) for entertainment services, namely conducting martial
`arts competitions, events and personal appearances for live and
`prerecorded transmission; and Registration No. 2170463 for the
`mark THE ULTIMATE FIGHTING CHAMPIONSHIP and design for
`prerecorded video optical disks featuring sports and
`entertainment events and prerecorded audio and videotapes
`featuring sports and entertainment events.
`
`2
`
`
`
`Ser. No. 75982336
`
`The Examining Attorney has refused registration under
`
`Section 2(e)(1) of the Trademark Act, 15 U.S.C.
`
`§1052(e)(1), on the basis that ULTIMATE FIGHTING, when used
`
`in connection with the services of applicant, is generic of
`
`them; and that applicant’s claim of acquired
`
`distinctiveness under Section 2(f) of the Trademark Act, 15
`
`U.S.C. §1052(f), is not sufficient in view of the nature of
`
`the proposed mark.
`
`
`
`When the refusals were made final, applicant appealed
`
`to the Board. Both applicant and the Examining Attorney
`
`have filed briefs; applicant did not request an oral
`
`hearing.
`
`The Examining Attorney contends that the proposed mark
`
`is generic for applicant’s identified services of live
`
`stage shows and performances featuring sports and mixed
`
`marital arts, and it is thus incapable of functioning as a
`
`mark and it cannot acquire distinctiveness; and that even
`
`if the proposed mark is held not to be generic, the word
`
`“fighting” is generic for fighting competitions,3 making the
`
`mark highly descriptive, and increasing applicant’s burden
`
`
`3 The Examining Attorney requested in her brief (footnote 7) that
`the Board take judicial notice of definitions of “fighting” she
`submitted from Dictitonary.com. The request is granted to the
`extent that we take judicial notice of the reference therein to
`The American Heritage Dictionary (Fourth Edition 2000) definition
`as “n. …3.a A physical conflict between two or more individuals.
`3b. Sports. A boxing or wrestling match.”
`
`3
`
`
`
`Ser. No. 75982336
`
`of proof to establish acquired distinctiveness, which
`
`applicant has not met. That is, the Examining Attorney has
`
`refused registration as the phrase ULTIMATE FIGHTING
`
`describes a type of athletic competition by its common
`
`commercial name; and that applicant’s evidence of acquired
`
`distinctiveness is insufficient.
`
`The Examining Attorney refers to applicant’s website
`
`use of ULTIMATE FIGHTING to refer to the name of the sport
`
`as follows: “The Ultimate Fighting Championship, the
`
`world’s leading ultimate fighting sports event, will make
`
`its debut on basic cable television… .”
`
`The Examining Attorney submitted (i) printouts of
`
`several excerpted stories retrieved from the Nexis
`
`database, and (ii) printouts of pages from a few third-
`
`party websites, all to show that “ULTIMATE FIGHTING”
`
`describes a type of mixed martial arts. Examples of the
`
`excerpted stories retrieved from the Nexis database are set
`
`forth below:
`
`Headline: Severn Gym Owners Promote
`‘All-out’ Fighting Methods
`…Take a little bit of kickboxing, add
`some wrestling and throw in some
`martial arts and adrenalin, and you’ve
`got ultimate fighting. …
`As Maryland law now stands, mixed
`martial arts matches and tournaments
`aren’t expressly allowed, said Patrick
`Panola, executive director of the
`commission. …
`
`4
`
`
`
`Ser. No. 75982336
`
`Koblinsky and Smith know they have an
`uphill battle, especially when it comes
`to dispelling the notion that ultimate
`fighting is a dangerous sport.
`Smith is quick to point out that no one
`ever has been killed in an ultimate
`fighting match. … “The Maryland
`Gazette,” January 17, 2004;
`
`Headline: Kickboxing’s ‘Wrath’
`Unleashed
`…Eric Bentz, a black belt instructor at
`Apollo’s Karate, will make his pro
`debut under ultimate fighting rules
`against Daryan Wilkerson of Houston. …
`“Tulsa World (Oklahoma),” September 12,
`2003;
`
`Headline: Five Earn 1st, 2nd Places in
`National Jiu-Jitsu
`…Memphis Karate Institute is sponsoring
`Fight Night 2 on Sept. 21 at Denim &
`Diamonds, 5353 Mendenhall Mall.
`Fighters in mixed martial arts and from
`Ultimate Fighting-style championship
`and the Memphis Gracie Jui-Jitsu
`Training Association will participate.
`“The Commercial Appeal (Memphis, TN),”
`August 30, 2001; and
`
`Headline: Kickboxer Smith in K-1 World
`Semis
`…K-1 incorporates all disciplines of
`martial arts in an ultimate fighting
`sport.
`Smith, a West Seattle High School
`graduate who operates his own
`kickboxing school in Bellvue, qualified
`for the semifinals by winning the North
`American K-1 Championship on May 5,
`also in Las Vegas.
`Smith’s title credentials include WKA,
`ISKA and WKC world kickboxing titles,
`Battlecades Extreme Fighting
`heavyweight champion, UFC Ultimate
`Fighting world champion, and World
`Martial Arts Council champion. … “The
`
`5
`
`
`
`Ser. No. 75982336
`
`Seattle Post-Intelligencer,” June 28,
`2001.
`
`Applicant argues that the mark ULTIMATE FIGHTING is
`
`not the generic term for applicant’s identified services;
`
`that the Examining Attorney has not established either that
`
`ULTIMATE FIGHTING names the genus or class of services at
`
`issue here or that the relevant public understands the term
`
`to refer to that class of services; that the generic names
`
`for applicant’s services include “mixed martial arts
`
`fighting,” “no holds barred fighting” and “cage fighting”
`
`but that ULTIMATE FIGHTING is applicant’s mark identifying
`
`its goods and services; that the relevant public for the
`
`purchase of applicant’s services consists of sports fans;
`
`that the evidence of record does not meet the Examining
`
`Attorney’s burden necessary to establish genericness,
`
`particularly as the Examining Attorney’s Nexis and Internet
`
`evidence shows a mixture of usages, including recognition
`
`of ULTIMATE FIGHTING as applicant’s mark; that some misuses
`
`by media writers, and even a failure of applicant to
`
`capitalize the words “Ultimate Fighting” in a place on its
`
`website are sporadic and do not destroy applicant’s use of
`
`the phrase as a mark recognized by the public; that doubt
`
`on the issue of genericness is resolved in favor of
`
`6
`
`
`
`Ser. No. 75982336
`
`applicant; and that applicant has established acquired
`
`distinctiveness in its mark ULTIMATE FIGHTING.
`
`The Examining Attorney bears the burden of proving
`
`that the proposed mark is generic, and genericness must be
`
`demonstrated through “clear evidence.” See In re Merrill
`
`Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4
`
`USPQ2d 1141, 1143 (Fed. Cir. 1987); and In re Analog
`
`Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d, unpubl’d,
`
`but appearing at 10 USPQ2d 1879 (Fed. Cir. 1989). The
`
`evidence of the relevant public’s perception of a term may
`
`be acquired from any competent source, including
`
`newspapers, magazines, dictionaries, catalogs and other
`
`publications. See Magic Wand Inc. v. RDB Inc., 940 F.2d
`
`638, 19 USPQ2d 1551 (Fed. Cir. 1991); and In re Leatherman
`
`Tool Group, Inc., 32 USPQ2d 1443 (TTAB 1994), citing In re
`
`Northland Aluminum Products, Inc., 777 F.2d 1566, 227 USPQ
`
`961 (Fed. Cir. 1985).
`
`The test for determining whether a designation is
`
`generic, as used in connection with the services in an
`
`application, turns upon how the term or phrase is perceived
`
`by the relevant public. See Loglan Institute Inc. v.
`
`Logical Language Group, Inc., 962 F.2d 1038, 22 USPQ2d 1531
`
`(Fed. Cir. 1992). Determining whether an alleged mark is
`
`generic involves a two-step analysis: (1) what is the
`
`7
`
`
`
`Ser. No. 75982336
`
`genus of the goods or services in question? and (2) is the
`
`term sought to be registered understood by the relevant
`
`public primarily to refer to that genus of goods or
`
`services? See In re The American Fertility Society, 188
`
`F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); and H. Marvin
`
`Ginn Corporation v. International Association of Fire
`
`Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
`
`As noted earlier, “the correct legal test for genericness,
`
`as set forth in Marvin Ginn, supra, requires evidence of
`
`‘the genus of goods or services at issue’ and the
`
`understanding by the general public that the mark refers
`
`primarily to ‘that genus of goods or services.’” American
`
`Fertility Society, supra.
`
`In this case, the Examining Attorney has submitted
`
`some evidence of generic use of the words “ultimate
`
`fighting” to refer to a sporting competition. However, it
`
`is clear from the record that the overwhelming majority of
`
`the examples are direct references to applicant and, as
`
`applicant has explained, numerous other uses are indirect
`
`references to applicant inasmuch as they refer to events or
`
`personalities associated with applicant’s services. There
`
`are relatively few references that simply show generic use
`
`of the phrase to refer to sporting events. Applicant
`
`contends that these are simply sporadic misuses of
`
`8
`
`
`
`Ser. No. 75982336
`
`applicant’s mark ULTIMATE FIGHTING by the media, and that
`
`applicant cannot realistically take action against all
`
`journalists and their uses/misuses of applicant’s mark.
`
`As explained previously, our primary reviewing Court,
`
`the Court of Appeals for the Federal Circuit, has held that
`
`the burden of establishing genericness of a term or a whole
`
`phrase rests with the Office and that the showing must be
`
`based on clear evidence. See In re Merrill Lynch, supra, 4
`
`USPQ2d at 1143; and In re The American Fertility Society,
`
`supra, 51 USPQ2d at 1835. Because the record before us
`
`shows varied uses of the phrase “ULTIMATE FIGHTING,” we
`
`find that there is insufficient clear evidence that the
`
`phrase ULTIMATE FIGHTING is the generic or common
`
`descriptive term for the live stage shows and performances
`
`featuring sports and mixed martial arts to which applicant
`
`first applied the phrase. Although the Nexis and Internet
`
`evidence support a finding of mere descriptiveness, it
`
`simply does not establish that the phrase ULTIMATE FIGHTING
`
`is generic for the genus of applicant’s involved services.
`
`With regard to the second prong of the genericness
`
`test, the evidence of record as to how the relevant
`
`9
`
`
`
`Ser. No. 75982336
`
`purchasers4 would perceive this term in relation to
`
`applicant’s identified services involving entertainment
`
`services is mixed. There is significant evidence of
`
`ULTIMATE FIGHTING clearly referring to applicant and its
`
`entertainment services offered under the mark ULTIMATE
`
`FIGHTING. Further, many of the examples of generic use
`
`actually refer to applicant (either applicant’s events or
`
`individuals/fighters associated with applicant) and are
`
`apparent misuses by journalists. Moreover, none of the
`
`evidence submitted by the Examining Attorney predates
`
`applicant’s first use in November 1993. Thus, the
`
`Examining Attorney has not established that the relevant
`
`purchasing public would perceive the phrase ULTIMATE
`
`FIGHTING as the name of the genus of the services.
`
`We find that the Examining Attorney has not
`
`established a prima facie showing that the phrase ULTIMATE
`
`FIGHTING is generic for applicant’s identified
`
`entertainment services.
`
`We turn to the question of whether applicant has met
`
`its burden to establish that the phrase ULTIMATE FIGHTING
`
`has acquired distinctiveness under Section 2(f) of the
`
`
`4 The Board finds that the relevant purchasers are fans who
`either attend or purchase pay-per-view for the live stage shows
`and performances of this mixed martial arts medium.
`
`10
`
`
`
`Ser. No. 75982336
`
`Trademark Act. Because applicant stated in its reply brief
`
`(p. 2) that it contends that its mark is inherently
`
`distinctive, we address the issue of mere descriptiveness
`
`of the phrase “ULTIMATE FIGHTING.” There is sufficient
`
`evidence regarding use of the phrase “ULTIMATE FIGHTING” in
`
`connection with sporting events and competitions to
`
`establish that the phrase is merely descriptive thereof.
`
`See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564
`
`(Fed. Cir. 2001). Thus, we will now determine whether
`
`applicant has submitted sufficient evidence of acquired
`
`distinctiveness under Section 2(f) to overcome the mere
`
`descriptiveness of the phrase.
`
`Applicant has the burden of establishing that its mark
`
`has become distinctive. See Yamaha International Corp. v.
`
`Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006
`
`(Fed. Cir. 1988). The question of acquired distinctiveness
`
`is one of fact which must be determined on the evidence of
`
`record. As the Board stated in the case of Hunter
`
`Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996,
`
`1999 (TTAB 1986):
`
`[e]valuation of the evidence requires a
`subjective judgment as to its sufficiency
`based on the nature of the mark and the
`conditions surrounding its use.
`
`
`11
`
`
`
`Ser. No. 75982336
`
`There is no specific rule as to the exact amount or
`
`type of evidence necessary at a minimum to prove acquired
`
`distinctiveness, but generally, the more descriptive the
`
`term, the greater the evidentiary burden to establish
`
`acquired distinctiveness. See In re Bongrain International
`
`(American) Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir.
`
`1990); and Yamaha International Corp. v. Hoshino Gakki Co.
`
`Ltd., supra 6 USPQ2d at 1008. See also, 2 J. Thomas
`
`McCarthy, McCarthy on Trademarks and Unfair Competition,
`
`§§11:17 and 15:66 and 15:70 (4th ed. 2005).
`
`
`
`Having carefully reviewed the evidence of record, we
`
`find that applicant’s evidence of acquired distinctiveness
`
`is sufficient to establish a prima facie showing thereof.5
`
`Applicant has submitted a declaration of over 5 years use
`
`of the mark ULTIMATE FIGHTING; the declaration of
`
`applicant’s president, Dana White; 31 declarations by
`
`various people in the mixed martial arts field; printouts
`
`of applicant’s website pages showing the list of
`
`applicant’s fighters; a photocopy of the State of Nevada
`
`statute defining “mixed martial arts” (not using the words
`
`“ultimate fighting”); and evidence of applicant’s policing
`
`
`5 In this case, the Examining Attorney contends that the phrase
`is highly descriptive thereby carrying a high threshold of proof
`from applicant. Even assuming that the phrase is highly
`descriptive of the identified services, we find that applicant’s
`evidence of acquired distinctiveness is sufficient.
`
`12
`
`
`
`Ser. No. 75982336
`
`of its mark, ULTIMATE FIGHTING, including photocopies of
`
`(i) a court decision and (ii) a settlement agreement
`
`whereby applicant stopped two different entities from using
`
`the mark.
`
`Specifically, the record shows that applicant (and its
`
`predecessor in interest) have used the mark ULTIMATE
`
`FIGHTING for applicant’s entertainment services since
`
`November 1993; and that the use has been substantially
`
`exclusive and continuous for a period well exceeding the
`
`five years prior to the filing of applicant’s application
`
`in January 2002. Applicant has spent over $10 million on
`
`advertising and promotion of the mark through national
`
`media including television, radio, magazines, newspapers
`
`and internet advertisements; that since September 2001,
`
`applicant has been the beneficiary of $50 million in
`
`commercial value from its partners and licensees pursuant
`
`to applicant’s pay-per-view and broadcasting agreement with
`
`major national and regional cable and satellite pay-per-
`
`view providers (e.g., DISH Network, DirecTV); that
`
`applicant has generated over $50 million dollars in ticket
`
`sales, pay-per-view and broadcast licensing revenues for
`
`its ULTIMATE FIGHTING mixed martial arts events held in
`
`major sports arenas around the United States (e.g., New
`
`Jersey, Nevada, Florida); and that applicant’s pay-per-view
`
`13
`
`
`
`Ser. No. 75982336
`
`live events have been purchased by several million pay-per-
`
`view subscribers and thereby were distributed to
`
`households, sports bars and similar pay-per-view
`
`distribution channels throughout the United States.
`
`Applicant’s use of the mark for over 10 years, and its
`
`nationwide sales revenues and advertising expenditures are
`
`substantial.
`
`Importantly, applicant has submitted 31 declarations
`
`of various people in the mixed martial arts field including
`
`Dr. Tony Alamo, Vice-chairman of the Nevada State Athletic
`
`Commission; Keith Kizer, Chief Deputy Attorney General,
`
`Gaming Division for the state of Nevada, and chief legal
`
`counsel for the Commission; Marcos Rosale Jr., a judge for
`
`the Nevada State Athletic Commission; A. L. Embanato, Jr.,
`
`Vice-chairman of the Louisiana State Boxing & Wrestling
`
`Commission; managers and trainers of mixed martial arts
`
`fighters -- Peter Welch, boxer/trainer, and Donald House,
`
`trainer; owners of competing mixed martial arts events --
`
`Reed Harris, VP World Extreme Cagefighting, and Dan
`
`Lambert, president Absolute Fighting Championship; and
`
`members of the media -- Ryan Bennett, NBC sports anchor,
`
`and Loretta Hart, journalist. In each of the 31
`
`declarations, the declarant avers that within the industry
`
`ULTIMATE FIGHTING and ULTIMATE FIGHTING CHAMPIONSHIP are
`
`14
`
`
`
`Ser. No. 75982336
`
`each trademarks owned by applicant; that the marks are used
`
`to identify the specific mixed martial arts competitions
`
`promoted by applicant; and that due to applicant’s long and
`
`extensive use of those trademarks, those in the industry as
`
`well as the fans of mixed martial arts associate the marks
`
`exclusively with applicant.
`
`These declarations are significant direct evidence of
`
`purchaser and user recognition of the phrase ULTIMATE
`
`FIGHTING as applicant’s mark for its entertainment
`
`services.
`
`Here applicant has enjoyed considerable success in the
`
`sale of its entertainment services offered under the mark
`
`ULTIMATE FIGHTING. Applicant has consistently used the
`
`phrase as a service mark (with perhaps a misuse on its
`
`website at one time); and applicant has established that it
`
`polices its mark. There has been substantial exposure to
`
`the relevant public with significant nationwide sales and
`
`advertising figures.
`
`We find that applicant’s evidence is sufficient to
`
`establish acquired distinctiveness in ULTIMATE FIGHTING as
`
`its mark for the identified services. See In re Mine
`
`Safety Appliances Company, 66 USPQ2d 1694 (TTAB 2002).
`
`Decision: The refusal to register on the Principal
`
`Register on the basis that applicant’s mark is generic
`
`15
`
`
`
`Ser. No. 75982336
`
`under Section 2(e)(1) of the Trademark Act is reversed; and
`
`the refusal to register the mark under Section 2(f) of the
`
`Trademark Act is reversed. Accordingly, the application
`
`will proceed to publication with a notation of applicant’s
`
`claim of acquired distinctiveness under Section 2(f).
`
`16
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