Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA431936
`ESTTA Tracking number:
`09/22/2011
`
`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
`Entity
`Address
`
`Zuffa, LLC
`limited liability company
`2960 W. Sahara Avenue
`Las Vegas, NV 89169
`UNITED STATES
`
`Citizenship
`
`Nevada
`
`Attorney
`information
`
`Michael N. Feder and Jennifer Ko Craft
`Gordon & Silver, Ltd.
`3960 Howard Hughes Parkway, 9th Floor
`Las Vegas, NV 89169
`UNITED STATES
`TRADEMARKS@GORDONSILVER.COM Phone:(702) 796-5555
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85278750
`09/22/2011
`
`Publication date
`Opposition
`Period Ends
`
`08/23/2011
`09/22/2011
`
`Parasol LLC
`590 Madison Avenue, 25th Floor
`New York, NY 10022
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 003.
`All goods and services in the class are opposed, namely: sunscreen, sunblock, suntan lotions, after
`sun lotions, cosmetic preparations for protecting the skin from the sun's rays, non-medicated
`cosmetics
`Class 009.
`All goods and services in the class are opposed, namely: sunglasses
`Class 018.
`All goods and services in the class are opposed, namely: beach bags, beach tote bags
`Class 024.
`All goods and services in the class are opposed, namely: beach towels
`Class 035.
`All goods and services in the class are opposed, namely: providing consumer information in the field
`of sun protection products
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`
`ESTTA431936
`ESTTA Tracking number:
`09/22/2011
`
`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
`Entity
`Address
`
`Zuffa, LLC
`limited liability company
`2960 W. Sahara Avenue
`Las Vegas, NV 89169
`UNITED STATES
`
`Citizenship
`
`Nevada
`
`Attorney
`information
`
`Michael N. Feder and Jennifer Ko Craft
`Gordon & Silver, Ltd.
`3960 Howard Hughes Parkway, 9th Floor
`Las Vegas, NV 89169
`UNITED STATES
`TRADEMARKS@GORDONSILVER.COM Phone:(702) 796-5555
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85278750
`09/22/2011
`
`Publication date
`Opposition
`Period Ends
`
`08/23/2011
`09/22/2011
`
`Parasol LLC
`590 Madison Avenue, 25th Floor
`New York, NY 10022
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 003.
`All goods and services in the class are opposed, namely: sunscreen, sunblock, suntan lotions, after
`sun lotions, cosmetic preparations for protecting the skin from the sun's rays, non-medicated
`cosmetics
`Class 009.
`All goods and services in the class are opposed, namely: sunglasses
`Class 018.
`All goods and services in the class are opposed, namely: beach bags, beach tote bags
`Class 024.
`All goods and services in the class are opposed, namely: beach towels
`Class 035.
`All goods and services in the class are opposed, namely: providing consumer information in the field
`of sun protection products
`
`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
`Design Mark
`
`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
`Design Mark
`
`NONE
`
`Class 025. First use: First Use: 2001/09/00 First Use In Commerce: 2001/09/00
`gloves
`
`3044208
`
`Application Date
`
`05/01/2002
`
`01/17/2006
`
`Foreign Priority
`Date
`UFC ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word 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
`
`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. Registration
`No.
`Registration Date
`
`2098577
`
`09/23/1997
`
`Word Mark
`
`NONE
`
`Application Date
`
`04/27/1995
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of an eight-sided competition mat.
`
`Class 041. First use: First Use: 1993/11/00 First Use In Commerce: 1993/11/00
`entertainment in the nature of multi-disciplined fighting competitions
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3787078
`
`05/11/2010
`
`OCTAGON
`
`Application Date
`
`08/27/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2009/02/21 First Use In Commerce: 2009/02/21
`Providing health club services, namely, providing fitness and exercise facilities;
`instruction services, namely, instruction in the field of health and physical fitness;
`educational services, namely, instruction and training in the fields of fitness and
`nutrition; instruction programs in the field of health and physical fitness, namely,
`providing exercise classes for groups of individuals
`
`U.S. Registration
`No.
`Registration Date
`
`3931260
`
`03/15/2011
`
`Word Mark
`
`OCTAGON GIRLS
`
`Application Date
`
`04/06/2007
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1994/03/11 First Use In Commerce: 1994/03/11
`Entertainment services in the nature of modeling performances during martial
`arts competitions
`
`U.S. Registration
`No.
`Registration Date
`
`3287380
`
`09/04/2007
`
`Word Mark
`Design Mark
`
`OCTAGON GIRLS
`
`Application Date
`
`09/27/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2005/08/21 First Use In Commerce: 2005/08/21
`calendars
`
`U.S. Registration
`No.
`Registration Date
`
`3287381
`
`09/04/2007
`
`Word Mark
`
`OCTAGON GIRL SEARCH
`
`Application Date
`
`09/27/2006
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 041. First use: First Use: 2006/10/02 First Use In Commerce: 2006/10/02
`entertainment services in the nature of an on-going television program featuring
`tryouts for models
`
`3598929
`
`Application Date
`
`06/18/2001
`
`03/31/2009
`
`Foreign Priority
`Date
`IF IT'S NOT IN THE OCTAGON IT'S NOT REAL
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2005/05/31 First Use In Commerce: 2005/05/31
`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
`television, cable, satellite, audio and global computer networks
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`
`3383466
`
`Application Date
`
`06/18/2001
`
`02/12/2008
`
`Foreign Priority
`Date
`IF IT'S NOT IN THE OCTAGON, IT'S NOT REAL
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 025. First use: First Use: 2006/02/00 First Use In Commerce: 2006/02/00
`tee-shirts and shirts
`
`3431804
`
`Application Date
`
`06/18/2001
`
`05/20/2008
`
`Foreign Priority
`Date
`IF IT'S NOT IN THE OCTAGON IT'S NOT REAL
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2006/12/12 First Use In Commerce: 2006/12/12
`digital video discs and digital versatile discs featuring mixed martial arts
`competitions, events and programs
`
`U.S. Application
`No.
`Registration Date
`
`85005157
`
`NONE
`
`Word Mark
`
`OCTAGON COLLECTION
`
`Application Date
`
`04/02/2010
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use:
`Sunglasses, eye glasses
`Class 014. First use:
`Watches, jewelry
`
`U.S. Application/
`Registration No.
`Registration Date
`Design Mark
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`Goods/Services
`
`a wide variety of souvenir items, including bags, towels, clothing, coin
`cases, jewelry, watches, toys, key chains, mugs and books
`
`Attachments
`
`76977283#TMSN.gif ( 1 page )( bytes )
`76977324#TMSN.gif ( 1 page )( bytes )
`
`
`
`76402817#TMSN.gif ( 1 page )( bytes )
`77581257#TMSN.jpeg ( 1 page )( bytes )
`74673129#TMSN.gif ( 1 page )( bytes )
`77814508#TMSN.jpeg ( 1 page )( bytes )
`77150655#TMSN.jpeg ( 1 page )( bytes )
`77008402#TMSN.jpeg ( 1 page )( bytes )
`77008407#TMSN.jpeg ( 1 page )( bytes )
`76978943#TMSN.jpeg ( 1 page )( bytes )
`76978458#TMSN.gif ( 1 page )( bytes )
`76978761#TMSN.jpeg ( 1 page )( bytes )
`85005157#TMSN.jpeg ( 1 page )( bytes )
`Octagon Shape.jpg
`Notice of Opposition to Octagon Design Mark by Parasol.pdf ( 7 pages )(39292
`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 First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/Michael N. Feder/
`Michael N. Feder
`09/22/2011
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Zuffa, LLC, a Nevada lin1ited liability
`company,
`
`A
`
`Opposer’
`
`Mark’
`
`(design only)
`
`V’
`Parasol LLC
`
`Applicant.
`
`Serial No.:
`
`85278750
`
`Published:
`
`August 23, 2011
`
`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 the application filed by Parasol LLC a New York
`
`limited liability company having an address of 590 Madison Avenue, 25th Floor, New York, NY
`
`10022 ("Applicant") to register the
`
`7
`
`mark in International Classes 3, 9, 18, 24 and 35
`
`(Serial No. 85278750) published on August 23, 2011 (“Application”).
`
`As grounds for its opposition, Zuffa alleges as follows:
`
`1. Zuffa owns the Ultimate Fighting Championship (“UFC”) brand and is one of the
`
`world’s leading promoters of mixed martial arts (“MMA”) competitions and events.
`
`2. Zuffa's eight—sided competition mat and cage design (“Octagon Design”) has been
`
`featured at UFC competitions and events since 1993 and is known worldwide as the "Octagon."
`
`1331794.doc
`
`
`
`3. Zuffa owns several trademarks that are comprised in whole or in part of the word
`
`OCTAGON and that incorporate the Octagon Design into the design of the mark (the "Octagon—
`
`Formative Marks").
`
`4. Zuffa also owns common law rights in numerous other marks incorporating the
`
`Octagon Design and used in association with a wide variety of souvenir items, including bags,
`
`towels, clothing, coin cases, jewelry, watches, toys, key chains, mugs and books (which together
`
`with the Octagon Design and Octagon Formative Marks are collectively referred to as the
`
`“OCTAGON Marks”).
`
`5. Zuffa and its predecessor—in—interest have used the OCTAGON Marks for several
`
`years in association with a wide variety of goods and services, including sports and
`
`entertainment services (such as MMA competitions, events, promotions and television
`
`programs), CDs, DVDs, and other pre—recorded media featuring sports and entertainment
`
`content, printed materials, apparel, toys, souvenir items, including, without limitation, those
`
`referenced above, and health club and fitness related products and services.
`
`6. Zuffa also owns several federal trademark registrations for the OCTAGON Marks,
`
`including, the following:
`
`"Gloves"
`
`in International Class 25
`
`(U.S. Reg. No.
`
`
`
`gloves" in International Class 28 (U.S. Reg. No. 3,044,208);
`
`1331794.doc
`
`
`
` .;_: .I
`
`for "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" in International Class 41 (U.S. Reg. No.
`
`3,052,007);
`
`
`
`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" in International Class 41 (U.S. Reg. No.
`
`3,650,069);
`
`
`
`(6)
`
`for "Entertainment in the nature of multi—disciplined fighting
`
`competitions" in International Class 41 (U.S. Reg. No. 2,098,577);
`
`1331794.doc
`
`
`
`(f) OCTAGON for "Providing health club services, namely, providing fitness and
`
`exercise facilities;
`
`instruction services, namely,
`
`instruction in the field of
`
`health and physical fitness; educational services, namely,
`
`instruction and
`
`training in the fields of fitness and nutrition; instruction programs in the field
`
`of health and physical fitness, namely, providing exercise classes for groups
`
`of individuals" in International Class 41 (U.S. Reg. No. 3,787,078);
`
`(g) OCTAGON GIRLS for "Entertainment services in the nature of modeling
`
`performances during martial arts competitions" in International Class 41 (U.S.
`
`Reg. No. 3,931,260);
`
`(h) OCTAGON GIRLS for "calendars" in International Class 16 (U.S. Reg. No.
`
`3,287,380);
`
`(i) OCTAGON GIRL SEARCH for " entertainment services in the nature of an
`
`on—going television program featuring tryouts for models" in International
`
`Class 41 (U.S. Reg. No. 3,287,381);
`
`(j) IF IT'S NOT IN THE OCTAGON ITS NOT REAL 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 television,
`
`cable, satellite, audio and global computer networks" in International Class 41
`
`(U.S. Reg. No. 3,598,929);
`
`(k) IF IT'S NOT IN THE OCTAGON ITS NOT REAL for "tee—shirts and shirts"
`
`in International Class 25 (U.S. Reg. No. 3,383,466); and
`
`1331794.doc
`
`
`
`(1) IF IT'S NOT IN THE OCTAGON ITS NOT REAL for "digital video discs
`
`and digital versatile discs featuring mixed martial arts competitions, events
`
`and programs" in International Class 9 (U.S. Reg. No. 3,43l,804).
`
`7. Zuffa’s above—referenced federal
`
`trademark registration for the Octagon Design
`
`corresponding to U.S. Reg. No. 2,098,577 is incontestable.
`
`8. Zuffa also owns a pending intent
`
`to use trademark application for OCTAGON
`
`COLLECTION in International Class 9 for "Sunglasses, eye glasses," Application Serial No.
`
`85005 l57 filed April 2, 2010 and published for opposition on June 22, 20l0.
`
`9. 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.
`
`l0. 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.
`
`ll. Applicant is seeking registration of
`
`in International Class 3 for "sunscreen,
`
`sunblock, suntan lotions, after sun lotions, cosmetic preparations for protecting the skin from the
`
`sun's rays, non—medicated cosmetics," International Class 9 for "sunglasses," International Class
`
`l8 for "beach bags, beach tote bags," International Class 24 for "beach towels," and International
`
`Class 35 for "providing consumer information in the field of sun protection products."
`
`l2. Applicant’s
`
`A
`
`.
`
`mark is confusingly similar
`
`to the OCTAGON Marks.
`
`Applicant’s applied for goods and services are similar to the goods and services offered by Zuffa
`
`133 l794.doc
`
`
`
`under the OCTAGON Marks. Applicant’s registration of the ®mark is likely to cause
`
`confusion, to cause mistake or to deceive consumers.
`
`13. Zuffa’s OCTAGON Marks were famous before Applicant filed its application for the
`
`mark on March 28, 2011, as shown in Application Serial No: 85278750.
`
`14. Applicant’s registration ofthe k is likely to dilute the distinctiveness of
`
`Zuffa’s OCTAGON Marks.
`
`15. Zuffa will suffer damage including irreparable injury to its reputation and goodwill if
`
`Applicant is permitted to register the
`
`mark.
`
`WHEREFORE, Zuffa prays that the opposition be sustained and that the Board refuse
`
`Applicant’s applicationtoregisterthe mark.
`
`Dated: September 22, 2011
`
`Respectfully submitted,
`
`GORDON SILVER
`
`/Michael N. Feder/
`
`Michael N. Feder, Esq.
`Jennifer K. Craft, Esq.
`3960 Howard Hughes Parkway, Ninth Floor
`Las Vegas, Nevada 89169
`jcraft@ gordonsilver.com
`(702) 796-5555 (phone)
`(702) 369-2666 (fax)
`
`1331794.doc
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, on this 22nd day of September, 2011, 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 counsel of record for Applicant:
`
`Kelly M. Weiner and Jeffrey H. Greene
`Foley & Lardner LLP
`90 Park Ave.
`
`New York, NY 10016-1301
`
`/Katie Sitto/
`
`An employee of Gordon Silver Ltd.
`
`1331794.doc
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