Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA233207
`ESTTA Tracking number:
`08/27/2008
`
`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
`extension
`Address
`
`Zuffa LLC
`08/27/2008
`
`2960 W. Sahara Avenue
`Las Vegas, NV 89102
`UNITED STATES
`
`Attorney
`information
`
`Mark C. Scarsi
`Milbank, Tweed, Hadley & McCloy LLP
`601 S. Figueroa Street, 31st Floor
`Los Angeles, CA 90017
`UNITED STATES
`tpaschall@milbank.com, jmiremadi@milbank.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77334717
`08/27/2008
`
`Publication date
`Opposition
`Period Ends
`
`04/29/2008
`08/27/2008
`
`Miletich Fighting Systems, Inc.
`325 16th St.
`Bettendorf, IA 52722
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025.
`All goods and services in the class are opposed, namely: Clothing, namely, belts, coats, jackets,
`jerseys, pants, rainwear, shirts, shorts, sweat pants, sweat shirts, sweaters, t-shirts, tank tops, wind-
`resistant jackets; footwear, headwear
`Class 041.
`All goods and services in the class are opposed, namely: Personal training services, namely, strength
`and conditioning training; Sport camps; Organizing exhibitions for sporting or entertainment purposes
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`
`2706754
`
`Application Date
`
`05/01/2002
`
`

`
`No.
`Registration Date
`
`04/15/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`UFC
`
`NONE
`
`Class 009. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`Pre-recorded video cassettes, digital video discs, digital versatile discs, all
`featuring sports and entertainment; video game cartridges and discs; computer
`game cartridges and discs
`Class 016. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`Posters; event and competition programs; photographs; postcards; trading
`cards; stickers
`Class 018. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`All purpose sports bags; all purpose athletic carrying bags; back packs; book
`bags; duffel bags; gym bags; tote bags; knapsacks; luggage
`Class 025. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`Warm-up suits, sweatshirts, tee-shirts; muscle shirts; sports shirts; tank tops;
`bathing suits; beach wear; jogging suits; shorts; shirts; gloves; underwear;
`jerseys; headwear; footwear, namely, bath thongs; hats; caps; workout and
`sports apparel, namely shorts and shirts
`Class 028. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`Martial arts gloves; karate gloves; wrestling gloves; boxing gloves
`Class 041. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`Entertainment services, namely, development, organization and production of
`competitions, performances and events featuring sports and entertainment;
`educational services, namely, providing information on the subject of sports and
`entertainment; providing a website on global computer networks featuring
`information on the subject of sports and entertainment; production of
`entertainment shows and interactive entertainment programs for distribution via
`television, cable, satellite, audio and video media cartridges, laser discs,
`computer discs and electronic means; production and distribution of
`entertainment shows and news programs via global communication networks
`
`U.S. Registration
`No.
`Registration Date
`
`3004864
`
`10/04/2005
`
`Application Date
`
`05/01/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`UFC
`
`NONE
`
`Class 009. First use: First Use: 2004/08/24 First Use In Commerce: 2004/08/24
`pre-recorded compact discs featuring sports and entertainment
`Class 016. First use: First Use: 2004/11/00 First Use In Commerce: 2004/11/00
`books and printed instructional and teaching manuals in the field of sports and
`entertainment, appliques in the form of decals, decals and windshield decals
`strips; bumper stickers
`Class 024. First use: First Use: 2005/05/04 First Use In Commerce: 2005/05/04
`towels
`
`

`
`Class 025. First use: First Use: 2004/08/00 First Use In Commerce: 2004/08/00
`pants for babies, bandanas, wristbands, jerseys, headwear
`
`U.S. Registration
`No.
`Registration Date
`
`2941044
`
`04/19/2005
`
`Application Date
`
`06/18/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`UFC
`
`NONE
`
`Class 009. First use: First Use: 1993/09/00 First Use In Commerce: 1993/09/00
`Pre-recorded audio cassettes, phonograph records, compact discs, pre-
`recorded video cassettes, laser video discs, digital video discs, digital versatile
`discs, CD-ROM discs all featuring mixed martial arts competitions, events and
`programs; computer game programs; motion picture films in the field of mixed
`martial arts; eyeglasses; sunglasses; video game cartridges and discs
`Class 016. First use: First Use: 1993/09/00 First Use In Commerce: 1993/09/00
`Address books; photograph albums; appliques in the form of decals;
`appointment books; arts and craft paint kits; autograph books; baby books;
`paper party bags; ball-point pens; binders; bookends; bookmarks; books
`featuring mixed martial arts; paper gift wrap bows; paper cake decorations;
`calendars; gift cards; greeting cards; cartoon strips; pen and pencil cases;
`decorative paper centerpieces; chalk; children's activity books; modeling clay;
`paper table cloths; coloring books; comic strips; comic books; paper party
`decorations; diaries; gift wrapping paper; magazines featuring mixed martial
`arts; paper party hats; periodicals featuring mixed martial arts; paper napkins;
`pens; pencils; stationery; stickers; posters; notebooks; memo pads; erasers;
`pencil sharpeners; paper staplers; writing paper; envelopes; paper weights;
`paper coasters; paper mats; drawing rulers; entertainment newspapers;
`photographs; postcards; trading cards; paper shopping bags
`Class 018. First use: First Use: 1993/09/00 First Use In Commerce: 1993/09/00
`Athletic bags; baby backpacks; backpacks; beach bags; book bags; diaper
`bags; duffel bags; gym bags; tote bags; coin purses; fanny packs; knapsacks;
`waist packs; textile shopping bags; umbrellas; wallets; luggage; handbags;
`purses; walking canes for non-medical purposes
`Class 020. First use: First Use: 1993/09/00 First Use In Commerce: 1993/09/00
`Sleeping bags; plastic cake decorations; drinking straws; figurines of wood, wax,
`plaster, or plastic; picture frames; jewelry cases not of precious metal;
`decorative mobiles; pillows; statues of wood, wax, plaster, or plastic; mirrors;
`plastic ornamental police and detective badges
`Class 024. First use: First Use: 1993/09/00 First Use In Commerce: 1993/09/00
`Afghans; bath linen; bed blankets; bed sheets; crib bumpers; pillow cases;
`comforters; curtains; bed skirts; kitchen towels; table linen; bed linen; quilts;
`towels; washcloths; handkerchiefs; bed spreads; cloth flags; fabric flags; cloth
`pennants; felt pennants
`Class 028. First use: First Use: 1993/09/00 First Use In Commerce: 1993/09/00
`Rubber action balls; action figures and accessories; action skill games; bean
`bag dolls; plush toys; balloons; golf balls; tennis balls; bath toys; Christmas tree
`ornaments; board games; toy building blocks; equipment sold as a unit for
`playing card games; dolls and doll clothing; doll playsets; children's play
`cosmetics; crib toys; electric action toys; manipulative games; golf gloves; golf
`ball markers; jigsaw puzzles; kites; toy mobiles; music box toys; party favors in
`the nature of small toys; inflatable, waterproof toys to use for play and floating in
`
`

`
`pools and other water recreation areas; children's multiple activity toys; baby's
`multiple activity toys; wind-up toys; target games; disc-type toss toys; toy bow
`and arrows; toy vehicles; toy model cars and trucks; plastic toy bucket and
`shovel sets for use in sand and beaches; roller skates; toy model hobbycraft
`kits; toy rockets; toy guns; toy holsters; musical toys; badminton sets; bubble
`making wands and solution sets; molded plastic toy figurines; toy banks;
`puppets; yo-yos; skateboards; toy scooters; non-motorized scooters; face
`masks; hand-held electronic games; playing cards
`
`U.S. Registration
`No.
`Registration Date
`
`2645312
`
`11/05/2002
`
`Application Date
`
`02/26/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`UFC
`
`NONE
`
`Class 025. First use: First Use: 1993/09/00 First Use In Commerce: 1993/09/00
`Clothing and wearing apparel, namely, warm-up suits, sweatshirts, sweatpants;
`tee-shirts; polo shirts; golf shirts; sports shirts; tank tops; vests; pants for babies;
`baby booties; belts; neckties; suspenders; bandanas; beach sandals; infant and
`toddler sleepwear; robes; nightshirts and night gowns; pajamas and loungewear;
`bathing suits; beach wear; diaper sets; toddler short sets; jogging suits; rompers;
`boys short sets; socks; playsuits; coveralls; wristbands; suits, namely, union
`suits in the nature of a one-piece long john; shorts; skirts; blouses; pants; slacks;
`shirts; jackets; referees and umpires uniforms; athletic uniforms; jerseys,
`namely, jerseys featuring reproductions of professional athletic team logos;
`sweaters; parkas; turtlenecks; mittens and gloves; underwear; jerseys; bowties;
`headwear and scarves; ear muffs; earbands and headbands; hosiery; rainwear,
`namely rain ponchos and jackets; footwear, namely shoes, boots and slippers;
`bath thongs; nylon shells; hats; caps; visors; aprons; cloth and ski bibs; canvas
`footwear; knickers; wind resistant jackets; masquerade costumes; blazers; leg
`warmers; jeans; leotards; workout and sports apparel, namely shorts, jackets,
`slacks, shirts
`Class 041. First use: First Use: 1993/09/00 First Use In Commerce: 1993/09/00
`entertainment services, namely production of martial arts competitions, events,
`information, entertainment shows and interactive programs both live and for
`distribution via television, cable, satellite, audio and video media, cartridges,
`video and computer discs, and communication and global computer networks
`
`U.S. Registration
`No.
`Registration Date
`
`3047189
`
`01/24/2006
`
`Application Date
`
`01/07/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`ULTIMATE FIGHTING
`
`NONE
`
`Class 041. First use: First Use: 1993/11/00 First Use In Commerce: 1993/11/00
`Entertainment, namely live stage shows and performances featuring sports and
`mixed martial arts
`
`U.S. Registration
`No.
`
`3226285
`
`Application Date
`
`01/07/2002
`
`

`
`Registration Date
`
`04/10/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`ULTIMATE FIGHTING
`
`NONE
`
`Class 009. First use: First Use: 1996/00/00 First Use In Commerce: 1996/00/00
`Pre-recorded video cassettes featuring sports events and mixed martial arts;
`computer game programs
`
`U.S. Registration
`No.
`Registration Date
`
`2866495
`
`07/27/2004
`
`Application Date
`
`01/07/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`ULTIMATE FIGHTING
`
`NONE
`
`Class 009. First use: First Use: 2000/09/00 First Use In Commerce: 2000/09/00
`computer game discs
`
`U.S. Registration
`No.
`Registration Date
`
`3022840
`
`12/06/2005
`
`Application Date
`
`03/08/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`ULTIMATE FIGHTING
`
`NONE
`
`Class 016. First use: First Use: 1993/11/00 First Use In Commerce: 1993/11/00
`souvenir event programs featuring sports events and mixed martial arts; posters
`
`U.S. Registration
`No.
`Registration Date
`
`2925669
`
`02/08/2005
`
`Application Date
`
`01/07/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`ULTIMATE FIGHTING
`
`NONE
`
`Class 009. First use: First Use: 1996/00/00 First Use In Commerce: 1996/00/00
`compact discs, laser video discs, digital video discs, digital versatile discs and
`CD-ROM discs, all featuring sports events and mixed martial arts; computer
`software for programming video games in the fields of sports and entertainment;
`video game cartridges and discs; computer game cartridges
`Class 025. First use: First Use: 1993/09/00 First Use In Commerce: 1993/09/00
`sweatshirts; tee-shirts; sports shirts; tank tops; shorts; underwear; nylon shells,
`namely shirts; hats and caps; workout and sports apparel, namely shorts and
`shirts; [writ] * wrist * bands, namely bands worn around and wrist
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`2960665
`
`06/07/2005
`
`Application Date
`
`03/08/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`ULTIMATE FIGHTING
`
`NONE
`
`Class 016. First use: First Use: 2001/11/02 First Use In Commerce: 2001/11/02
`books in the field of sports and entertainment; trading cards; books and journals
`featuring athletic contests and games; stickers; adhesive stickers; decals and
`windshield decal strips; bumper stickers and strips; autograph books
`
`76402815#TMSN.gif ( 1 page )( bytes )
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`76273527#TMSN.gif ( 1 page )( bytes )
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`76977166#TMSN.gif ( 1 page )( bytes )
`76977378#TMSN.gif ( 1 page )( bytes )
`Notice of Opposition.pdf ( 14 pages )(328714 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 Overnight Courier on this date.
`
`Signature
`Name
`Date
`
`/mcs/
`Mark C. Scarsi
`08/27/2008
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 77/334,717, Int’l Classes 25 and 41
`Filed November 20, 2007 and published in the Official Gazette April 29, 2008
`
`ZUFFA, LLC,
`
`Opposer,
`
`Opposition No.
`
`-against-
`
`MILETICH FIGHTING SYSTEMS,
`INC.
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Sir:
`
`ZUFFA, LLC, a Nevada limited liability company, located and doing business at
`
`2960 West Sahara Avenue, Las Vegas, NV 89102, (hereinafter referred to as “Opposer”),
`
`believes that it will be damaged by the registration of the mark UF MFS ULTI-FIT shown in
`
`Application Serial No. 77/334,717, filed November 20, 2007 and published in the Official
`
`Gazette on April 29, 2008, by Miletich Fighting Systems, Inc. (hereinafter referred to as
`
`“Applicant”), and hereby opposes the same. On May 20, 2008, Opposer filed a First 90 Day
`
`Request for Extension of Time to Oppose for Good Cause. On May 20, 2008, the Trademark
`
`Trial and Appeal Board granted Opposer’s request to extend time until August 27, 2008.
`
`

`
`As grounds for this opposition, Opposer alleges as follows:
`
`I.
`
`Opposer is engaged in an array of sports and entertainment services,
`
`including the organization and production of mixed martial arts competitions and sports and
`
`entertainment events under the marks UFC, UFC (stylized) and ULTIMATE FIGHTING
`
`(hereinafter the “UFC Marks”). Opposer also sells a wide range of goods, including clothing,
`
`featuring the UFC Marks.
`
`2.
`
`Opposer is the exclusive owner of the following United States Trademark
`
`Registrations:
`
`Mark
`
`.
`UFC (styhzed)
`
`fl//FE
`
`Registration No.
`(Registration
`Date)
`
`“F
`
`2706754
`
`(April 15, 2003)
`
`Date of First Use
`
`Goods and Services
`
`May 2001
`
`Class: 09
`Pre—recorded video
`cassettes, digital Video
`discs, digital versatile
`discs, all featuring sports
`and entertainment; video
`
`game cartridges and discs;
`computer game cartridges
`and discs
`
`Class: 16
`
`Posters; event and
`
`competition programs;
`photographs; postcards;
`trading cards; stickers
`
`Class: 18
`
`All purpose sports bags;
`all purpose athletic
`carrying bags; back packs;
`book bags; duffel bags;
`gym bags; tote bags;
`knapsacks; luggage
`
`

`
`Mark
`
`Registration No.
`(Registration
`Date}
`
`Date of First Use
`
`Goods and Services
`
`Class: 25
`
`Warm—up suits,
`sweatshirts, tee-shirts;
`
`muscle shirts; sports
`shirts; tank tops; bathing
`suits; beach wear; jogging
`suits; shorts; shirts;
`
`gloves; underwear;
`jerseys; headwear;
`footwear, namely bath
`thongs; hats; caps;
`workout and sports
`apparel, namely shorts and
`shirts
`
`Class: 28
`
`Martial arts gloves; karate
`gloves; wrestling gloves;
`boxing gloves
`
`Class: 41
`
`Entertainment services,
`
`namely, development,
`organization and
`production of
`competitions,
`performances and events
`featuring sports and
`entertainment; educational
`
`services, namely,
`providing information on
`the subject of sports and
`entertainment; providing a
`website on global
`computer networks
`featuring information on
`the subject of sports and
`entertainment; production
`of entertainment shows
`
`and interactive
`
`entertainment programs
`for distribution via
`
`

`
`Mark
`
`Registration No.
`(Registration
`Date)
`
`Date of First Use
`
`Goods and Services
`
`television, cable, satellite,
`audio and video media
`
`cartridges, laser discs,
`computer discs and
`electronic means;
`
`production and
`distribution of
`
`entertainment shows and
`
`news programs via global
`communication networks
`
`3004864
`
`Class: 09
`
`Class: 09
`
`UFC (Stylized)
`
`October 4, 2005
`
`August, 24, 2004
`
`WEE
`
`Class: 16
`November 2004
`
`Class: 24
`
`May 4, 2005
`
`Class: 25
`
`August 2004
`
`Prerecorded compact
`discs featuring sports and
`entertainment
`
`Class: 16
`
`Books and printed
`instructional and teaching
`manuals in the field of
`
`sports and entertainment,
`appliqués in the form of
`decals, decals and
`
`windshield decals strips;
`bumper stickers
`
`Class: 24
`Towels
`
`Class: 25
`
`Pants for babies,
`
`bandanas, wristbands,
`
`jerseys, headwear
`
`UFC
`
`2941044
`
`April 19, 2005
`
`September 1993
`
`Class: 09
`
`Pre—recorded audio
`
`cassettes, phonograph
`records, compact discs,
`pre—recorded video
`cassettes, laser video
`
`discs, digital video discs,
`digital versatile discs, CD-
`
`

`
`Mark
`
`Registration No.
`(Registration
`Date}
`
`Date of First Use
`
`Goods and Services
`
`ROM discs all featuring
`mixed martial arts
`
`competitions, events and
`programs; computer game
`programs; motion picture
`films in the field of mixed
`
`martial arts; eyeglasses;
`sunglasses; video game
`cartridges and discs
`
`Class: 16
`
`Address books;
`
`photograph albums;
`appliqués in the form of
`decals; appointment
`books; arts and craft paint
`kits; autograph books;
`baby books; paper party
`bags; ball—point pens;
`binders; bookends;
`
`bookmarks; books
`
`featuring mixed martial
`arts; paper gift wrap bows;
`paper cake decorations;
`calendars; gift cards;
`greeting cards; cartoon
`strips; pen and pencil
`cases; decorative paper
`centerpieces; chalk;
`children's activity books;
`modeling clay; paper table
`cloths; coloring books;
`comic strips; comic books;
`paper party decorations;
`diaries; gift wrapping
`paper; magazines
`featuring mixed martial
`arts; paper party hats;
`periodicals featuring
`mixed martial arts; paper
`napkins; pens; pencils;
`stationery; stickers;
`
`

`
`Mark
`
`Registration No.
`(Registration
`Date)
`
`Date of First Use
`
`Goods and Services
`
`‘T
`
`posters; notebooks; memo
`pads; erasers; pencil
`sharpeners; paper staplers;
`writing paper; envelopes;
`paper weights; paper
`coasters; paper mats;
`drawing rulers;
`entertainment newspapers;
`photographs; postcards;
`trading cards; paper
`shopping bags
`
`Class: 18
`
`Athletic bags; baby
`backpacks; backpacks;
`beach bags; book bags;
`diaper bags; duffel bags;
`gym bags; tote bags; coin
`purses; fanny packs;
`knapsacks; waist packs;
`textile shopping bags;
`umbrellas; wallets;
`
`luggage; handbags;
`purses; walking canes for
`non—medical purposes
`
`Class: 20
`
`Sleeping bags; plastic cake
`decorations; drinking
`straws; figurines of wood,
`wax, plaster, or plastic;
`picture frames; jewelry
`cases not of precious
`metal; decorative mobiles;
`
`pillows; statues of wood,
`wax, plaster, or plastic;
`mirrors; plastic
`omarnental police and
`detective badges
`
`

`
`Mark
`
`Registration No. i
`(Registration
`Date)
`
`Date of First Use
`
`Goods and Services
`
`Class: 24
`
`Afghans; bath linen; bed
`blankets; bed sheets; crib
`
`bumpers; pillow cases;
`comforters; curtains; bed
`
`skirts; kitchen towels;
`
`table linen; bed linen;
`
`quilts; towels; washcloths;
`handkerchiefs; bed
`
`spreads; cloth flags; fabric
`flags; cloth pennants; felt
`pennants
`
`Class: 28
`
`Rubber action balls; action
`
`figures and accessories;
`action skill games; bean
`bag dolls; plush toys;
`balloons; golf balls; tennis
`balls; bath toys; Christmas
`tree ornaments; board
`
`games; toy building
`blocks; equipment sold as
`a unit for playing card
`games; dolls and doll
`clothing; doll playsets;
`children’s play cosmetics;
`crib toys; electric action
`toys; manipulative games;
`golf gloves; golf ball
`markers; jigsaw puzzles;
`kites; toy mobiles; music
`box toys; party favors in
`the nature of small toys;
`inflatable, waterproof toys
`to use for play and floating
`in pools and other water
`recreation areas;
`
`children’s multiple
`activity toys; baby’s
`multiple activity toys;
`wind—up toys; target
`
`

`
`Mark
`
`Registration No.
`(Registration
`Date)
`
`Date of First Use
`
`Goods and Services
`
`UFC
`
`26453 12
`
`November 5,
`2002
`
`games; disc—type toss toys;
`toy bow and arrows; toy
`vehicles; toy model cars
`and trucks; plastic toy
`bucket and shovel sets for
`
`use in sand and beaches;
`
`roller skates; toy model
`hobbycraft kits; toy
`rockets; toy guns; toy
`holsters; musical toys;
`badminton sets; bubble
`
`making wands and
`solution sets; molded
`
`plastic toy figurines; toy
`banks; puppets; yo—yos;
`skateboards; toy scooters;
`non—motorized scooters;
`
`face masks; hand—held
`
`electronic games; playing
`cards
`
`September 1993
`
`Class: 25
`
`Clothing and wearing
`apparel, namely, warm—up
`suits, sweatshirts,
`
`sweatpants; tee—shirts;
`polo shirts; golf shirts;
`sports shirts; tank tops;
`Vests; pants for babies;
`baby booties; belts;
`neckties; suspenders;
`bandanas; beach sandals;
`infant and toddler
`
`sleepwear; robes;
`nightshirts and night
`gowns; pajamas and
`loungewear; bathing suits;
`beach wear; diaper sets;
`toddler short sets; jogging
`suits; rompers; boys short
`sets; socks; playsuits;
`coveralls; wristbands;
`
`

`
`Mark
`
`Registration No.
`(Registration
`Date)
`
`Date of First Use
`
`Goods and Services
`
`suits, namely, union suits
`in the nature of a one«
`
`piece long john; shorts;
`skirts; blouses; pants;
`slacks; shirts; jackets;
`referees and umpires
`uniforms; athletic
`
`uniforms; jerseys, namely,
`jerseys featuring
`reproductions of
`professional athletic team
`logos; sweaters; parkas;
`turtlenecks; mittens and
`
`gloves; underwear;
`jerseys; bowties; headwear
`and scarves; ear muffs;
`earbands and headbands;
`
`hosiery; rainwear, namely
`rain ponchos and jackets;
`footwear, namely shoes,
`boots and slippers; bath V
`thongs; nylon shells; hats;
`caps; visors; aprons; cloth
`and ski bibs; canvas
`
`footwear; knickers; wind
`
`resistant jackets;
`masquerade costumes;
`blazers; leg warmers;
`jeans; leotards; workout
`and sports apparel, namely
`shorts, jackets, slacks,
`shirts
`
`Class: 41
`
`Entertainment services,
`
`namely production of
`martial arts competitions,
`events, information,
`entertainment shows and
`
`interactive programs both
`live and for distribution
`
`via television, cable,
`
`

`
`Mark
`
`Registration No.
`(Registration
`Date)
`
`Date of First Use
`
`Goods and Services
`
`ULTIMATE
`FIGHTING
`
`3047189
`January 24,
`2006
`
`November 1993
`
`ULTIMATE
`FIGHTING
`
`3226285
`April 10, 2007
`
`1996
`
`satellite, audio and video
`
`media, cartridges, video
`and computer discs, and
`communication and global
`computer networks
`
`Class: 41
`Entertainment, namely
`live stage shows and
`performances featuring
`sports and mixed martial
`arts
`
`Class: 09
`Pre~recorded video
`cassettes featuring sports
`events and mixed martial
`
`arts; computer game
`programs
`
`ULTIMATE
`FIGHTING
`
`2866495
`July 27, 2004
`
`September 2000
`
`Class: 09
`Computer game discs
`
`ULTIMATE
`FIGHTING
`
`3022840
`December 6,
`2005
`
`November 1993
`
`ULTIMATE
`FIGHTING
`
`2925669
`February 8,
`2005
`
`Class: 9
`1996
`
`Class: 25
`September 1993
`
`Class: 16
`Souvenir event programs
`featuring sports events and
`mixed martial arts; posters
`
`Class: 09
`Compact discs, laser video
`discs, digital video discs,
`digital versatile discs and
`CD—ROM discs, all
`
`featuring sports events and
`mixed martial arts;
`
`computer software for
`programming video games
`in the fields of sports and
`entertainment; video game
`
`-10-
`
`

`
`Mark
`
`Registration No.
`(Registration
`Date)
`
`Date of First Use
`
`Goods and Services
`
`ULTIMATE
`FIGHTING
`
`2960665
`June 7, 2005
`
`November 2, 2001
`
`cartridges and discs;
`computer game cartridges
`
`Class: 25
`
`Sweatshirts; tee—shirts;
`
`sports shirts; tank tops;
`shorts; underwear; nylon
`shells, namely shirts; hats
`and caps; workout and
`sports apparel, namely
`shorts and shirts; wrist
`
`bands, namely bands worn
`around and wrist
`
`Class: 16
`Books in the field of
`sports and entertainment;
`trading cards; books and
`journals featuring athletic
`contests and games;
`stickers; adhesive stickers;
`decals and windshield
`
`decal strips; bumper
`stickers and strips;
`autograph books
`
`3.
`
`Applicant seeks to register the mark UF MFS ULTI-FIT under Serial
`
`No. 77/334,717, covering “Clothing, namely, belts, coats, jackets, jerseys, pants, rainwear, shirts,
`
`shorts, sweat pants, sweat shirts, sweaters, t-shirts, tank tops, wind-resistant jackets; footwear,
`
`headwear” in Class 25, and “Personal training services, namely, strength and conditioning
`
`training; Sport camps; Organizing exhibitions for sporting or entertainment purposes” in Class
`
`41, based on intent to use.
`
`-11-
`
`

`
`4.
`
`Opposer adopted and used the UFC Marks to identify and distinguish its
`
`services in sports and entertainment competitions and events, as early as September 1993, long
`
`prior to the date Applicant filed its intent—to—use application of the term UF MFS ULTI—FIT.
`
`As a result of the long and extensive use of the UFC Marks, said marks have become distinctive
`
`and truly famous.
`
`5.
`
`Applicants mark UF MFS ULTI—FIT is confusingly similar to Opposer’s
`
`UFC Marks. Specifically, the slant and style of the letters “UF” in Applicant’s mark UF MFS
`
`ULTI—FIT is almost indistinguishable from the slant and style of the letters in Opposer’s UFC
`
`(Stylized) Marks. The emphasis and use of the letters “UF” in Applicant’s mark UF MFS ULTI—
`
`FIT strongly resembles the emphasis and use of the letters “UFC” in Opposer’s UFC Marks.
`
`The term “ULTI—FIT” in Applicant’s mark UF MFS ULTI—FIT appears to be an abbreviation of
`
`Opposer’s mark ULTIMATE FIGHTING, again leading to consumer confusion. Additionally,
`
`Applicant’s mark is intended to be used in connection with “clothing” and “organizing
`
`exhibitions for sporting or entertainment purposes,” the same uses under which Opposer uses the
`
`UFC Marks. Consumers are therefore likely to confuse the marks and mistakenly assume that
`
`they emanate from the same source, or that Opposer has licensed Applicant to use “UF” and
`
`“ULTI~FIT” as part of its mark, should Applicant proceed with its intended use and registration.
`
`The likelihood of confusion is further increased by the fact that Applicant is an entity named for
`
`and owned by Mr. Pat Miletich, a former participant in Opposer’s UFC sports events. Thus,
`
`Applicant’s registration of UF MFS ULTI—FIT in Classes 25 and 41 is likely to cause consumer
`
`confusion, mistake or deception with Opposer’s prior use and registration of the UFC Marks,
`
`within the meaning of 15 U.S.C. §IO52(d).
`
`-12-
`
`

`
`6.
`
`Applicant’s use and registration of UF MFS ULTl—FIT for clothing and
`
`sports and entertainment exhibitions is likely to dilute the distinctive quality of Opposer’s UFC
`
`Marks, within the meaning of l5 U.S.C. § ll25(c).
`
`7.
`
`In View of the foregoing, registration of Applicant’s claimed mark would
`
`be damaging to Opposer within the meaning of 15 U.S.C. § 1063.
`
`WHEREFORE, Opposer prays that this opposition be sustained and that
`
`registration be denied to Applicant on its Application Serial No. 77/334,717.
`
`Dated: August 27, 2008
`
`Respectfully submitted,
`
`
`
`601 Sou Figueroa, 30th Floor
`Los Angeles, CA 90017-5735
`(213) 892-4580
`Attorney for Opposer
`
`LA] #6387035
`
`

`
`PROOF OF SERVICE BY FEDERAL EXPRESS
`
`STATE OF CALIFORNIA, COUNTY OF LOS ANGELES
`
`I am over the
`I am employed in the County of Los Angeles, State of California.
`age of 18 and not a party to the within action; my business address is 601 South Figueroa Street,
`30th Floor, Los Angeles, California 90017.
`
`On August 27, 2008 , I served the foregoing document(s) described as, NOTICE
`OF OPPOSITION, on the interested parties in this action:
`
`X
`
`by placing __ the original X a true copy thereof enclosed in sealed envelopes
`addressed as follows:
`
`Jay R. Hamilton
`Law Office of Jay R. Hamilton, PLC
`331 W. 3rd Street, NVC Suite 120
`
`Davenport, IA 52801
`
`‘N
`
`(BY FEDERAL EXPRESS) Following ordinary business practices at the Los
`Angeles, California office of Milbank, Tweed, Hadley & McCloy LLP, I placed the
`sealed envelope(s) for collection and retrieval by Federal Express on that same day.
`I am readily familiar with the firm’s practice for collection and processing of
`correspondence for retrieval by Federal Express. Under that practice, such
`correspondence would be retrieved by Federal Express on that same day, with fees
`thereon fully prepaid at Los Angeles, California, in the ordinary course of business.
`
`I declare that I am employed in the office of a member of the bar of this court at
`whose direction the service was made.
`
`Executed on August 27, 2008 at Los Angeles, California.
`
`K. GHALAMBOR
`
`Type or Print Name
`
`Signature