Trademark Trial and Appeal Board Electronic Filing System. 3935
`
`ESTTA Tracking number: ESTTA31083
`
`Filing date3
`
`04/21/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`Applicant
`
`75982336
`Zuffa, LLC
`
`PARKER H. BAGLEY, ESQ
`i MILBANK, TWEED, HADLEY & MCCLOY LLP
`C
`orrespondence :
`g 1 CHASE MANHATTAN PLAZA
`Address
`NEW YORK,, NY 10005-1413
`
`Filer's Name
`Filer's e—mail
`Signature
`Date
`
`Parker H. Bagley
`jnici@mi1bank.c0m
`lphbf
`04/21/2005
`
`
`
`ESTTA Tracking number: ESTTA31083
`
`Filing date3
`
`04/21/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`Applicant
`
`75982336
`Zuffa, LLC
`
`PARKER H. BAGLEY, ESQ
`i MILBANK, TWEED, HADLEY & MCCLOY LLP
`C
`orrespondence :
`g 1 CHASE MANHATTAN PLAZA
`Address
`NEW YORK,, NY 10005-1413
`
`Filer's Name
`Filer's e—mail
`Signature
`Date
`
`Parker H. Bagley
`jnici@mi1bank.c0m
`lphbf
`04/21/2005
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Applicant:
`Mark:
`
`Zuffa, LLC
`ULTIMATE FIGHTING
`
`75/982,336
`Application No.:
`January 7, 2002
`Filing Date:
`Examining Attorney: Debra Lee, Law Office 116
`Office Action
`
`(FINAL):
`Examining Attorney’s
`Brief:
`
`June 30, 2004
`
`April 1, 2005
`
`APPLICANT’S REPLY BRIEF
`
`By: MILBANK, TWEED. HADLEY &
`MCCLOY LLP
`
`Attorneys for Applicant, Zuffa, LLC
`Parker H. Bagley
`One Chase Manhattan Plaza
`
`New York, NY 10005-1413
`
`Date of Deposit
`
`April 21.2005
`
`I hereby certify that this correspondence is being deposited with
`the United States Postal Service via electronic transmission
`through the USPTO web site yVV\"W.llSQt().g0\«’
`
`
`
`NY2:#46374l3
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`
`
`TABLE OF AUTHORITIES
`
`Case Law
`
`American Velcro, Inc. V. Charles Mayer Studios,
`Q, 177 U.S.P.Q. 149 (TTAB 1973)
`In re Automatic Radio Mfg. Co., Inc., 404 F.2d
`1391, 160 U.S.P.Q. 233 (C.C.P.A. 1969)
`
`In re Emco Inc., 158 U.S.P.Q. 622 (TTAB 1968)
`In re Hollygyood Brands, Inc., 214 F.2d 139, 102
`U.S.P.Q. 294 (C.C.P.A. 1954)
`In re Merrill Lynch, Pierce, Fenner and Smith Inc.,
`828 F.2d 1567, 4 U.S.P.Q.2d 1141 (Fed. Cir. 1987)
`Pacific Industries, Inc. v. Minnesota Mining and
`Manufacturing Co., 425 F.2d 1265, 165 U.S.P.Q.
`631(C.C.P.A. 1970)
`In re Packaging Specialists, Inc., 221 U.S.P.Q. 917
`(TTAB 1984)
`In re Raychem Corp, 12 U.S.P.Q. 2d 1399 (TTAB
`1989)
`In re Schenectady Varnish Company, Inc., 280
`F.2d 169, 126 U.S.P.Q. 395 (C.C.P.A. 1960)
`
`
`
`NY2:#46374 1 3
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`
`
`75/982336
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Applicant:
`Mark:
`
`Zuffa, LLC
`ULTIMATE FIGHTING
`
`75/982,336
`Application No.:
`January 7, 2002
`Filing Date:
`Examining Attorney: Lauriel Dalier, Law Office 116
`Office Action
`
`(FINAL):
`Examining Attorney’s
`Brief:
`
`June 30, 2004
`
`April 1, 2005
`
`APPLICANT’S REPLY BRIEF
`
`Applicant replies to the Examining Attorney’s Brief mailed as follows.
`
`The Examining Attorney has maintained that Applicant’s mark is generic and
`
`incapable of registration.
`
`1.
`
`Applicant’s mark is not generic.
`
`App1icant’s mark has acquired distinctiveness through substantially continuous
`
`and exclusive use for well over five years. Moreover, Applicant believes it is
`
`inappropriate and unsupportable that a refusal was made based on genericness after the
`
`Examiner from whom the current Examiner assumed this case (1) invited Applicant to
`
`seek registration on the Supplemental Register (Office Action dated May 24, 2002); (2)
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`requested “evidence/documentation to prove the distinctiveness of the mark in
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`commerce” (Office Action dated February 23, 2004); (3) simultaneously refused
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`registration under Section 2(e)(l) and on the ground the mark was incapable of
`
`registration (Office Actions dated February 23, 2004 and June 30, 2004, and (4)
`
`repeatedly accepted evidence of use in support of a claim under Section 2(f). E, L1_1__r§
`
`Packaging Specialists, Inc., 221 U.S.P.Q. 917 (TTAB 1984), a case cited by the present
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`NY2:#4637207
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`_ 1 -
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`75/982336
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`Examiner, in which the TTAB stated: “we do not believe that applicant should be
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`required to defend against a ‘genericness’ finding, especially when one considers the
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`repeated prior requests for detailed evidence of distinctiveness” Q at p. 921.
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`2.
`
`Applicant’s Section 2(1) Claim was not made in the Original Application.
`
`The Examiner has cited 15 U.S.C. Section l052(f) and stated that “in so doing
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`applicant has admitted that the mark is merely descriptive, and ‘the issue to be
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`determined is not whether the matter is inherently distinctive but, rather, whether it has
`999
`acquired distinctiveness. Applicant’s original application did not contain a Section 2(f)
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`claim, nor did Applicant claim Section 2(f) in its Response dated December 10, 2002.
`
`Applicant’s Section 2(f) claim was made in its second Response dated September 3,
`
`2003, only when its arguments of inherent distinctiveness (which it still maintains)
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`proved unavailing.
`
`2.
`
`The Examiner Has Failed to Sustain the Burden Of Proof.
`
`In support of their refusals, both Examiners relied heavily on Lexis/Nexis articles
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`which purportedly constituted a “vast quantity of evidence.”
`
`However, the Lexis/Nexis articles only support the fact that applicant’s mark,
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`ULTIMATE FIGHTING, is not the only way to refer to mixed martial arts competitions
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`and that it does function as, and is used as a trademark. For example:
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`-
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`-
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`the article dated June 28, 2002 refers to a battle for the “World Extreme
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`Fighting Championship,” and confinns applicant’s previous contention
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`that it originated use of the mark in 1994;
`
`the June 28, 2001 article refers to several different championships all
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`involving martial arts competitions, each differently named, such as
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`NY2:#4637207
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`75/982336
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`“Battlecades Extreme Fighting,” “World Martial Arts Council champion,”
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`and applicant’s “UFC Ultimate Fighting champion”;
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`-
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`the September 26, 2001 article is an article about a fighter with applicant’s
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`“Ultimate Fighting Championship group.”
`
`As Applicant pointed out in its Appeal Brief and prior Responses, the authors of
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`many of the articles relied upon by the Examiner misused applicant’s mark by
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`representing it in lower case letters and as part of the text, thereby making applicant’s
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`mark appear generic. Applicant finds it paradoxical that in those articles in which the
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`authors properly used Applicant’s mark as a trademark, the Examiner has characterized
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`such proper use as an demonstrating “poor capitalization” requiring a “highly imaginative
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`interpretation of the evidence.”
`
`The present Examiner has attempted to show that “even applicant uses its mark
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`generically,” by referring to an article from applicant’s website included with its
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`December l0, 2002 response in which ULTIMATE FIGHTING is used in three instances
`
`in all lower case letters.
`
`In that same article, ULTIMATE FIGHTING is also
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`prominently displayed in the banner, and on the first line in bold, initial upper case
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`letters. Moreover, in one of the quotes from the article repeated by the Examiner in her
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`Reply Brief, ULTIMATE FIGHTING is called a “brand,” which is synonymous with
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`“trademark,” i.e., “Ultimate fighting is a real sport and our fighters are world-class
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`athletes. Sports fans will now have the opportunity to see that our brand of fighting is as
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`real as it gets.” (emphasis supplied)
`
`The courts have recognized that merely because third parties have used a
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`trademark in a non-trademark sense does not render the mark merely descriptive.
`
`In
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`NY2:#4637207
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`75/982336
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`Pacific Industries, Inc. V. Minnesota Mining and Manufacturing Co., 425 F.2d 1265, 165
`
`U.S.P.Q. 631, 632-633 (C.C.P.A. 1970), the Court reversed the decision to cancel a
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`registration for IMPACT on the grounds that appellee and others had used the word
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`“impact” so extensively in connection with carbonless copy paper as to render the term
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`merely descriptive, and ruled that the ‘‘appellant’s registration carries with it a
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`presumption of exclusive right, not to any use of the word, but to use of the word in a
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`trademark sense, i.e., as an indication of ori gin.” E also In re Automatic Radio Mfg.
`
`
`Co.
`lnc., 404 F.2d 1391, 160 U.S.P.Q. 233, 236 (C.C.P.A. 1969) (reversing the Board’s
`
`refusal to register AUTOMATIC RADIO on the grounds that it was an apt commercial
`
`name, holding that “descriptive words may become trademarks and subject to protection
`
`as such, without inhibiting the use of the same words in a non—trademark sense.”);
`
`American Velcro, Inc. v. Charles Mayer Studios, Inc., 177 U.S.P.Q. 149, 154 (TTAB
`
`1973) ( reversed the refusal to register HOOK N’ LOOP, stating that to “hold that trade
`
`designations other than the name of a product or the common descriptive name of a
`
`product or an apt descriptive name for a product are inherently incapable of performing a
`
`trademark function overlooks or attempts to obfuscate the fact that proprietary rights and
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`even registrable rights have been created in descriptive notations and other noncoined or
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`arbitrary terms through extensive use and constant exposure to purchasers through the
`
`various means afforded by the vast communication media.”)
`
`3.
`
`Applicant Has Sufficiently Demonstrated Secondary Meaning
`
`(a) Examiner’s Objections that Permanent Injunction and Settlement Agreements
`do not Support Claims of Acguired Distinctiveness are not Well-Grounded
`
`In support of its position that Applicant transformed its mark through use and
`
`enforcement, Applicant attached a copy of the Final Judgment and Pennanent Injunction
`
`NY2:#4637207
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`_ 4 _
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`
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`75/982336
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`on Consent
`
`issued on January 23, 2002 enjoining defendants from using ULTIMATE
`
`FIGHTING, ULTIMATE FIGHTING CHAMPIONSHIP and ULTIMATE ATHLETE
`
`FIGHTING. The Examiner argues that because this document “makes no statement as to
`
`the inherent distinctiveness of applicant’s marks, nor does it disclose the goods or
`
`services to which the subject marks were applied,” it did not support applicant’s claim
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`that the mark is not generic.
`
`Addressing the Examiner’s statement that the preliminary injunction makes no
`
`statement as to the inherent distinctiveness of applicant’s marks, applicant notes that the
`
`paragraph 2 of the injunction states that the defendants are permanently enjoined from
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`“doing any act or thing that dilutes or is likely to. dilute the distinctiveness of the
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`ULTIMATE FIGHTING CHAMPIONSHIP marks” (emphasis supplied). Moreover,
`
`paragraph A. of the “Side Letter” attached to the injunction states that “the UFC marks
`
`(as defined in the Consent Judgment to include ULTIMATE FIGHTING) are famous,
`
`distinctive and well—recognized in the general public and within the field of MMA.” The
`
`very fact that a District Court Judge approved the terms of the Consent Judgment and
`
`enjoined Img2.com’s and Ultimate Athlete Fighting, lnc.’s use of ULTIMATE
`
`FIGHTING is proof enough.
`
`The Examiner also argues that it is an “important distinction” that the injunction
`
`does not disclose the goods or services to which the subject marks were applied. The
`
`injunction makes the broad statement that “Plaintiff owns protectable rights in the
`
`ULTIMATE FIGHTING and ULTIMATE FIGHTING CHAMPIONSHIP marks.” As
`
`there is no limitation as to goods and services, it is implicit that the scope includes not
`
`only the goods covered in applicant’s registrations for ULTIMATE FIGHTING in Class
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`NY2:#4637207
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`75/982336
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`9 and ULTIMATE FIGHTING CHAMPIONSHIP in classes 9, I6, 18, 25 and 41, but
`
`applicant’s entertainment services in its class 41 application for ULTIMATE FIGHTING
`
`as well.
`
`Further, the Examiner argues that the value of the “Side Letter” attached to the
`
`preliminary injunction is “diminished” because compensation was involved. The reason
`
`why the Examiner reached this conclusion is not clear.
`
`It is common practice for
`
`settlements to include compensation as a sign of good faith and as an incentive for the
`
`defendant to refrain from future infringement. The Examiner has also objected that the
`
`letter does not specifically reference “services like those at issue here,” but the Examiner
`
`did note that paragraph C on page one states that the defendants agree not to use the mark
`
`ULTIMATE apart from their own mark ULTIMATE ATHLETE in connection with the
`
`promotion of fighting competitions. Again, the Examiner’s position is untenable. If
`
`defendants are not permitted to use ULTIMATE in connection with promoting fighting
`
`competitions except with ULTIMATE ATHLETE,
`
`then it follows that defendants may
`
`not use ULTIMATE FIGHTING or ULTIMATE FIGHTING CHAMPIONSHIP in
`
`connection with the promotion of f1 ghting competitions.
`
`Finally the Examiner has stated that the March 15, 2004 settlement agreement in
`
`which the defendant agreed not to use ULTIMATE CHICK FIGHTING “demonstrates
`
`only that a civil defendant conceded to applicant’s claim of right to several of its marks,”
`
`that it “makes no statement as to the inherent distinctiveness of applicant’s mark and
`
`does not disclose the goods or services to which the subject marks were applied.”
`
`Applicant disagrees. Paragraph 2 of the letter contains the defendant’s acknowledgement
`
`that applicant’s marks are “exclusively associated with Zuffa and are distinctive marks
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`NY2:#4637207
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`75/982336
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`which for many years have been used by Zuffa to promote their specific mixed martial
`
`arts competitions.” (emphasis added)
`
`(b) Applicant has Met its Threshold of Proof
`
`As the record indicates, and as reiterated in the Examining Attomey’s Brief,
`
`Applicant submitted a large amount of evidence in support of the acquired distinctiveness
`
`of its mark. However, the Examiner has held that none of the exhibits submitted by
`
`applicant showed that applicant’s mark acquired distinctiveness for its services.
`
`The Examiner has appeared to object to virtually all of Applicant’s evidence on
`
`the ground that the evidence shows use “only of applicant’s marks UFC and ULTIMATE
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`FIGHTING CHAMPIONSHIP.” Applicant agrees with the Examiner that ULTIMATE
`
`FIGHTING is often used with the word CHAMPIONSHIP and with the acronym UFC.
`
`However, in virtually every instance, the mark ULTIMATE FIGHTING makes a separate
`
`and distinct commercial impression, and the mark is placed in large print above the word
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`CHAMPIONSHIP.
`
`It is abundantly clear from the specimens that ULTIMATE
`
`
`FIGHTING is applicant’s mark. E, In re Emco Inc., 158 U.S.P.Q. 622, 623 (TTAB
`
`I968) (“Responser” is registrable despite presence of surname “Meyer” in specimens);
`
`In re Raychem Corp., 12 U.S.P.Q. 2d 1399, I400 (TTAB 1989) (specimens showing part
`
`number and generic term “ring” were acceptable in application for “Tinel-Lock” for
`
`metal rings).
`
`The Examining Attorney also held that the 31 Declarations submitted by
`
`Applicant were insufficient as evidence of acquired distinctiveness because they contain
`
`“boiler plate language referring to both the ULTIMATE FIGHTING CHAMPIONSHIP
`
`and ULTIMATE FIGHTING marks,” and that “all the declarants are industry insiders.”
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`NY2:#4637207
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`
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`75/982336
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`That the declarations refer to applicant’s ULTIMATE FIGHTING mark both with and
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`without the word “Championship” is not germane — as stated above, the addition of the
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`word “Championship” has no effect on the trademark significance of ULTIMATE
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`FIGHTING. As to the Examiner’s fallback position that the Declarations are insufficient
`
`because they contain “boiler plate language and the declarants were industry insiders,” as
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`stated in Applicant’s Appeal Brief, and reiterated here, the fact that the Declarations
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`contain the same language or were executed by industry insiders does not diminish their
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`credibility. fige, In re Schenectady Varnish Company, Inc., 280 F.2d 169, I26 U.S.P.Q.
`
`395, 397 (C.C.P.A. I960) (Notwithstanding the fact that 21 companies signing a similar
`
`declaration conceived by the appellant and all had a business relationship with the
`
`appellant, the court held that “appellant has satisfactorily shown that its mark had
`
`acquired secondary meaning within the purview of section 2(t) of the Lanham Act.” ) Q
`
`at 397.
`
`The service mark ULTIMATE FIGHTING has acquired distinctiveness through
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`continuous use for over ten years, as well as through extensive promotion, advertising,
`
`sales and policing. While Applicant recognizes that it has the burden of proof in
`
`establishing that its mark has acquired distinctiveness, Applicant believes that it has more
`
`than sufficiently met its burden, and that imposition of a higher burden would be
`
`unreasonable. _S_e§, In re Hollmood Brands, lnc., 214 F.2d 139, 102 U.S.P.Q. 294, 295
`
`(C.C.P.A. 1954) (in reversing refusal to register “Butter Nut,” the Court noted “we do
`
`find, however, an increasing tendency to require more and still more proof from an
`
`applicant for registration under Section 2(f) than we think Congress fairly intended to
`
`impose”)
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`NY2:#4637207
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`75/982336
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`CONCLUSION
`
`If any doubt remains concerning the registrability of this mark, such doubt should
`
`be resolved in favor of the applicant.
`
`In re Merrill Lymch, Pierce, Fenner and Smith 1nc.,
`
`828 F.2d 1567, 4 U.S.P.Q.2d 1141 (Fed. Cir. 1987) Applicant respectfully requests that
`
`the refusal to register this mark in Class 4] be removed, and that the application be
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`allowed to proceed to publication.
`
`Respectfully submitted,
`MILBANK, TWEED, HADLEY
`& MCCLOY LLP
`
`By: Parker H. Bagley
`
`Attorney for Applicant
`One Chase Manhattan Plaza
`
`New York, NY 10005-1413
`
`(212) 530-5000
`
`Dated: H10 [C9 Y
`
`PHB:JN
`
`NY2:#4637207
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