Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA387492
`ESTTA Tracking number:
`01/10/2011
`
`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
`01/08/2011
`
`2960 W. Sahara Avenue
`Las Vegas, NV 89102
`UNITED STATES
`
`Attorney
`information
`
`Jennifer K. Craft and Michael N. Feder
`Lewis and Roca LLP
`3993 Howard Hughes Parkway, Suite 600
`Las Vegas, NV 89169
`UNITED STATES
`TRADEMARKS2-LASVEGAS@LRLAW.COM Phone:(702) 949-8200
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77893274
`01/10/2011
`
`Publication date
`Opposition
`Period Ends
`
`11/09/2010
`01/08/2011
`
`Ratner, Barry S.
`Suite #612 2800 N Flagler Drive
`West Palm Beach, FL 33407
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025.
`All goods and services in the class are opposed, namely: Baseball caps; Beachwear; Coats;
`Headwear; Hooded sweat shirts; Jackets; Martial arts uniforms; Pants; Scarves; Shirts; Shorts;
`Sweat shirts; Sweat suits; Sweaters; T-shirts; Tank tops; Underwear; Vests
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`
`3044208
`
`Application Date
`
`05/01/2002
`
`01/17/2006
`
`Foreign Priority
`Date
`UFC ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`
`ESTTA387492
`ESTTA Tracking number:
`01/10/2011
`
`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
`01/08/2011
`
`2960 W. Sahara Avenue
`Las Vegas, NV 89102
`UNITED STATES
`
`Attorney
`information
`
`Jennifer K. Craft and Michael N. Feder
`Lewis and Roca LLP
`3993 Howard Hughes Parkway, Suite 600
`Las Vegas, NV 89169
`UNITED STATES
`TRADEMARKS2-LASVEGAS@LRLAW.COM Phone:(702) 949-8200
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77893274
`01/10/2011
`
`Publication date
`Opposition
`Period Ends
`
`11/09/2010
`01/08/2011
`
`Ratner, Barry S.
`Suite #612 2800 N Flagler Drive
`West Palm Beach, FL 33407
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025.
`All goods and services in the class are opposed, namely: Baseball caps; Beachwear; Coats;
`Headwear; Hooded sweat shirts; Jackets; Martial arts uniforms; Pants; Scarves; Shirts; Shorts;
`Sweat shirts; Sweat suits; Sweaters; T-shirts; Tank tops; Underwear; Vests
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`
`3044208
`
`Application Date
`
`05/01/2002
`
`01/17/2006
`
`Foreign Priority
`Date
`UFC ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`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
`
`2981638
`
`Application Date
`
`09/30/2002
`
`08/02/2005
`
`Foreign Priority
`Date
`UFC ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`
`NONE
`
`Class 025. First use: First Use: 2001/09/00 First Use In Commerce: 2001/09/00
`gloves
`
`3052007
`
`Application Date
`
`05/01/2002
`
`01/31/2006
`
`Foreign Priority
`Date
`UFC ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`Entertainment, namely live stage shows and performances featuring mixed
`martial arts; 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
`
`3650069
`
`07/07/2009
`
`Word Mark
`Design Mark
`
`UFC FIGHT NIGHT LIVE
`
`Application Date
`
`09/29/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2008/07/19 First Use In Commerce: 2008/07/19
`Entertainment services, namely, arranging and conducting mixed martial arts
`competitions and events; providing information regarding mixed martial arts;
`production of programs featuring mixed martial arts competitions and events for
`distribution over television, cable, satellite, audio and global computer networks
`
`U.S. Application/
`Registration No.
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`
`
`Design Mark
`
`Goods/Services
`
`a wide variety of souvenir items, including, t-shirts, mouse pads, USB
`flash drives, clocks, wall signs, furniture, jewelry, watches, mugs and
`books
`
`Attachments
`
`76977324#TMSN.gif ( 1 page )( bytes )
`76977283#TMSN.gif ( 1 page )( bytes )
`76402817#TMSN.gif ( 1 page )( bytes )
`77581257#TMSN.jpeg ( 1 page )( bytes )
`octagon 940.jpg
`569307_1.pdf ( 6 pages )(31596 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Jennifer K. Craft/
`Jennifer K. Craft
`01/10/2011
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Zuffa, LLC, a Nevada limited liability
`COHIPEIHY,
`
`Opposer,
`
`V
`
`Barry S. Rattler’
`
`Applicant.
`
`Mark
`
`VICIOUS V V VICTORY and
`
`Design
`
`Serial No.
`
`77/893274
`
`Published November 9, 2010
`
`NOTICE OF OPPOSITION
`
`Pursuant to 15 U.S.C. § 1063 and 37 C.F.R. § 2.101, Opposer Zuffa, LLC (“Zuffa”), a
`
`Nevada limited liability company with its principal place of business at 2960 W. Sahara Avenue,
`
`Las Vegas, Nevada 89102, hereby opposes Applicant Barry S. Ratner’s application to register
`
`
`
`in International Class 25 (Serial No. 77/893274), published on November
`
`9, 2010. Zuffa filed a 30-day Request for Extension on December 9, 2010, which was granted
`
`by the Trademark Trial and Appeal Board.
`
`As grounds for its opposition, Zuffa alleges as follows:
`
`1. Zuffa owns the UFC mark and is one of the world’s leading promoters of mixed
`
`martial arts (“MMA”) competitions and events.
`
`
`
`2. Zuffa also owns the eight—sided competition mat and cage design (“Octagon Design”)
`
`which has been featured at UFC competitions and events since 1993 and has become known
`
`worldwide as the UFC Octagon.
`
`3. Zuffa and its predecessor—in—interest have used the Octagon Design for decades in
`
`association with sports and entertainment services (including, live MMA events and television
`
`programs), MMA equipment and a wide variety of souvenir items.
`
`4. Zuffa owns an incontestable federal trademark registration for the Octagon Design in
`
`International Class 41 for entertainment in the nature of multi—disciplined fighting competitions
`
`(U.S. Reg. No. 2098577).
`
`5. Zuffa also owns several federal trademark registrations in International Classes 28
`
`and 41 for other marks incorporating the Octagon Design, including the following (collectively,
`
`the “Octagon Formative Marks”):
`
`
`
`featuring mixed martial
`
`arts; 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
`
`2
`
`
`
`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. Reg. No. 3052007); and
`
` for entertainment services, namely, arranging and conducting
`
`mixed martial arts competitions and events; providing information regarding
`
`mixed martial arts; production of programs featuring mixed martial arts
`
`competitions and events for distribution over television, cable, satellite, audio
`
`and global computer networks (U.S. Reg. No. 3650069).
`
`6. Zuffa owns common law rights in numerous other marks incorporating the Octagon
`
`Design and used in association with a wide variety of souvenir items, including, t—shirts, mouse
`
`pads, USB flash drives, clocks, wall signs, furniture, jewelry, watches, mugs and books (which
`
`together with the Octagon Formative Marks are collectively referred to as the “Octagon Marks”).
`
`7. Zuffa has made substantial and continuous use of the Octagon Marks for several
`
`years and has expended considerable resources in the protection, enforcement, advertising and
`
`marketing of such marks.
`
`8. By virtue of this continuous and extensive use of the Octagon Marks, such marks
`
`have become invested with substantial goodwill and worldwide recognition and fame.
`
`9. Applicant Barry S. Ratner
`
`is
`
`seeking registration of the mark
`
`
`
`International Class 25 for “Baseball caps; Beachwear; Coats; Headwear; Hooded sweat shirts;
`
`Jackets; Martial arts uniforms; Pants; Scarves; Shirts; Shorts; Sweat shirts; Sweat suits;
`
`Sweaters; T—shirts; Tank tops; Underwear; Vests”.
`
`
`
`10. Applicant’s registration of the
`
`;~;a>..,._»~;->.
`4%}
`
`mark is likely to cause confusion,
`
`to
`
`cause mistake or to deceive consumers. Applicant’s
`
`
`
`mark is confusingly similar to
`
`the Octagon Marks. Applicant’s applied for goods are the same as, or similar to, the goods and
`
`services offered by Zuffa under the Octagon Marks.
`
`ll. Zuffa’s Octagon Marks were famous before Applicant
`
`filed its application
`
`
`
`’ 7‘
`
`for
`
`on December 14, 2009, as shown in Application Serial No: 77/893274.
`
`‘§“tEi?3«s
`V‘? 32¢’
`
`
`'
`v.
`
`l2. Applicant’s registration of the
`
`mark is likely to dilute the distinctiveness
`
`of Zuffa’s Octagon Marks.
`
`13. Zuffa will suffer damage including irreparable injury to its reputation and goodwill if
`
`Applicant is permitted to register the
`
`‘§‘*§£?*’«$
`., 23.
`
`
`
`mark.
`
`WHEREFORE, Zuffa prays that the opposition be sustained and that the Board refuse
`
`Applicant’s application to register the
`
`
`
`Pursuant to 37 C.F.R. § 2.6(a)(l7), please deduct the opposition fee in the sum of
`
`$300.00, from the Lewis and Roca LLP deposit account no. 504882.
`
`
`
`Dated: January 10, 2011
`
`Respectfully submitted,
`
`LEWIS AND ROCA LLP
`
`/Jennifer K. Craft/
`
`Michael N. Feder, Esq.
`Jennifer K. Craft, Esq.
`
`3993 Howard Hughes Parkway, Suite 600
`Las Vegas, Nevada 89169
`JCraft@ @LRLAW.c0m
`
`(702) 949-8200 (phone)
`(702) 949-8398 (fax)
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, on this 10m day of January, 2010, a true and complete copy of the
`
`foregoing Notice of Opposition has been served by United States mail, first class postage
`
`prepaid, on the following correspondent of record for Applicant:
`
`Barry S. Ratner
`2800 N. Flagler Drive Apt 612
`West Palm Beach, FL 33407-5226
`
`/Cynthia ErVin/
`Cynthia Ervin
`An employee of Lewis and Roca LLP
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