Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA586990
`ESTTA Tracking number:
`02/12/2014
`
`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 89102
`UNITED STATES
`
`Citizenship
`
`Nevada
`
`Attorney
`information
`
`M. Feder, J. Craft, A. Sedlock
`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
`
`86030706
`02/12/2014
`
`Publication date
`Opposition
`Period Ends
`
`01/14/2014
`02/13/2014
`
`Jason Ellison
`1447 Drew Street
`Clearwater, FL 33755
`USX
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 2013/03/01 First Use In Commerce: 2013/03/01
`All goods and services in the class are opposed, namely: Athletic apparel, namely, shirts, pants,
`jackets, footwear, hats and caps, athletic uniforms
`
`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
`No.
`Registration Date
`
`Word Mark
`
`2981638
`
`Application Date
`
`09/30/2002
`
`08/02/2005
`
`Foreign Priority
`Date
`UFC ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`
`ESTTA586990
`ESTTA Tracking number:
`02/12/2014
`
`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 89102
`UNITED STATES
`
`Citizenship
`
`Nevada
`
`Attorney
`information
`
`M. Feder, J. Craft, A. Sedlock
`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
`
`86030706
`02/12/2014
`
`Publication date
`Opposition
`Period Ends
`
`01/14/2014
`02/13/2014
`
`Jason Ellison
`1447 Drew Street
`Clearwater, FL 33755
`USX
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 2013/03/01 First Use In Commerce: 2013/03/01
`All goods and services in the class are opposed, namely: Athletic apparel, namely, shirts, pants,
`jackets, footwear, hats and caps, athletic uniforms
`
`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
`No.
`Registration Date
`
`Word Mark
`
`2981638
`
`Application Date
`
`09/30/2002
`
`08/02/2005
`
`Foreign Priority
`Date
`UFC ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2001/09/00 First Use In Commerce: 2001/09/00
`gloves
`
`U.S. Registration
`No.
`Registration Date
`
`4372982
`
`07/23/2013
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`05/11/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the design of an octagon.
`
`Class 025. First use: First Use: 2007/05/15 First Use In Commerce: 2007/05/15
`Belts; bottoms; coats; dresses; gloves;headwear; jackets; loungewear;
`scarves;sleepwear; socks; sweatbands; swimwear;tops; undergarments; warm
`up suits
`
`U.S. Registration
`No.
`Registration Date
`
`4222605
`
`10/09/2012
`
`Word Mark
`
`NONE
`
`Application Date
`
`02/18/2011
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of an octagon design cut in three parts diagonally.
`
`Class 025. First use: First Use: 2010/07/01 First Use In Commerce: 2010/07/01
`Belts; Bottoms; Coats; Dresses; Footwear; Gloves; Headwear; Jackets;
`Loungewear; Scarves; Sleepwear; Socks; Sweatbands;Swimwear; Tops;
`Undergarments; Warm up suits
`
`U.S. Registration
`No.
`Registration Date
`
`2098577
`
`09/23/1997
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`04/27/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`
`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
`
`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
`martialarts; educational services, namely, providing information on the subject of
`sports and entertainment; providing a website on global computer networks
`featuringinformation on the subject of sports and entertainment; production of
`entertainment shows and interactive entertainmentprograms 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 martialarts competitions and events for
`distribution over television, cable, satellite, audio and global computer networks
`
`Attachments
`
`76977283#TMSN.gif( bytes )
`85318710#TMSN.jpeg( bytes )
`85246463#TMSN.jpeg( bytes )
`74673129#TMSN.gif( bytes )
`76402817#TMSN.gif( bytes )
`
`
`
`77581257#TMSN.jpeg( bytes )
`Notice of Opposition - FIGHT JUNCTURE Octagon Design.pdf(63758 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
`02/12/2014
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Zuffa, LLC, a Nevada limited liability
`company,
`
`
`Mark FIGHT JUNCTURE &
`Octagon Design
`
`
`Serial No. 86030706
`
`Published January 14, 2014
`
`
`
`
`
`
`
`
`
`Opposer,
`
`v.
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`Jason Ellison, an individual
`
`
`
`NOTICE OF OPPOSITION
`
`Pursuant to 15 U.S.C. § 1063 and 37 C.F.R. § 2.101, Opposer Zuffa, LLC (“Opposer”), 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 Applicant Jason Ellison
`
`(“Applicant”) to register the mark
`
` in International Class 25 (Serial No. 86030706),
`
`published on January 14, 2014.
`
`As grounds for its opposition, Zuffa alleges as follows:
`
`1. Opposer owns the UFC and ULTIMATE FIGHTING CHAMPIONSHIP marks and is
`
`one of the world’s leading promoters of mixed martial arts ("MMA") competitions and events.
`
`2. Opposer also owns the eight-sided competition mat and cage design (“Octagon
`
`Design”), which has been featured at UFC and ULTIMATE FIGHTING CHAMPIONSHIP
`
`competitions and events since 1993 and is known worldwide as the Octagon.
`
`
`
`3. Opposer 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).
`
`4. Opposer and its predecessors-in-interest have used the Octagon Design in connection
`
`with a wide variety of merchandise, including, without limitation, apparel, athletic equipment,
`
`wallets, bags, backpacks, coin cases, mouse pads, USB flash drives, clocks, wall signs, furniture,
`
`jewelry, watches, toys, key chains, mugs and books.
`
`5. Opposer owns several federal
`
`trademark registrations, particularly
`
`those
`
`in
`
`International Class 25, for the Octagon Design and other marks incorporating the Octagon
`
`Design, including the following (which together with the Octagon Design are collectively
`
`defined as the “Octagon Marks”):
`
`(a)
`
` for “Gloves” in International Class 25 (U.S. Reg. No.
`
`2981638), first used in commerce as early as September, 2001, and registered
`
`on the Principal Register on August 2, 2005;
`
`(b)
`
` for “Belts; bottoms; coats; dresses; gloves; headwear; jackets;
`
`loungewear; scarves; sleepwear; socks; sweatbands; swimwear;
`
`tops;
`
`undergarments; warm up suits” in International Class 25 (U.S. Reg. No.
`
`4372982), first used in commerce as early as May 15, 2007, and registered on
`
`the Principal Register on July 23, 2013;
`
`
`
`(c)
`
` for “Belts; Bottoms; Coats; Dresses; Footwear; Gloves;
`
`Headwear; Jackets; Loungewear; Scarves; Sleepwear; Socks; Sweatbands;
`
`Swimwear; Tops; Undergarments; Warm up suits” in International Class 25
`
`(U.S. Reg. No. 4222605), first used in commerce as early as July 1, 2010, and
`
`registered on the Principal Register on October 9, 2012;
`
`(d)
`
`for “Entertainment in the nature of multi-disciplined
`
`fighting competitions” in International Class 41 (U.S. Reg. No. 2098577), first
`
`used in commerce as early as November, 1993, and registered on the Principal
`
`Register on September 23, 1997;
`
`
`
`(e)
`
` 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.
`
`3052007), first used in commerce as early as May, 2001, and registered on the
`
`Principal Register on January 31, 2006; and
`
`(f)
`
` 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.
`
`3650069), first used in commerce as early as July 19, 2008, and registered on
`
`the Principal Register on July 7, 2009.
`
`6. Four of the Octagon Mark registrations, namely, U.S. Reg. No.’s 2098577, 2981638,
`
`3052007, and 3650069, are incontestable.
`
`7. For more than two decades, Opposer and its predecessor in interest, have made
`
`substantial and continuous use of the Octagon Marks and have 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. By virtue of this continuous and extensive use of the Octagon Marks, Opposer owns,
`
`in addition to registration rights, substantial common law rights in the Octagon Marks.
`
`10. Applicant filed a federal trademark application assigned Serial Number 86030706,
`
`seeking registration of
`
` (“Applicant’s Mark”) for “athletic apparel, namely, shirts,
`
`
`
`pants, jackets, footwear, hats and caps, athletic uniforms” in International Class 25 (such goods
`
`collectively defined as, “Applicant’s Goods” and such application defined as, “Application”).
`
`11. In his Application, Applicant asserts a date of first use anywhere and in commerce
`
`of March 1, 2013 of Applicant’s Mark in connection with Applicant’s Goods.
`
`12. Opposer is informed and believes and thereupon alleges that Applicant did not begin
`
`using Applicant’s Mark in connection with Applicant’s Goods anywhere and/or in commerce,
`
`within the meaning of Section 45 of the Lanham Act, 15 U.S.C. § 1127, on March 1, 2013.
`
`13. Opposer is informed and believes and thereupon alleges that if Applicant has made
`
`use of the Applicant’s Mark in connection with Applicant’s Goods, it was first made anywhere
`
`and/or in commerce, within the meaning of Section 45 of the Lanham Act, 15 U.S.C. § 1127,
`
`well after Zuffa made use of its Octagon Marks in connection with Zuffa’s Goods and Services
`
`anywhere and in commerce.
`
`14. In the Application, Applicant describes his mark in the following manner: “[t]he mark
`
`consists of the wording ‘FIGHT JUNCTURE’ in stylized black and white font with red
`
`shadowing next to the letters … across a large octagon that surrounds a smaller octagon, both
`
`octagons having a stylized black and white border including stylized twisting ropes.” Therefore,
`
`Applicant is claiming rights in an octagon-shaped design in his Application.
`
`15. Applicant’s
`
` mark is confusingly similar to the Octagon Marks.
`
`Applicant’s Goods are the same as, or similar to, the goods and services offered by Opposer
`
`under the Octagon Marks, and are even specifically targeted to the same sports and MMA-
`
`related consumer base that is well-aware of Opposer’s famous and established UFC brand and
`
`Octagon Marks.
`
`
`
`16. As a retailer of MMA products such as athletic apparel and uniforms, among other
`
`related products, Applicant’s target consumer base includes MMA practitioners and fans.
`
`17. Applicant is using the
`
` mark to target Opposer’s own consumer base.
`
`18. Therefore, Applicant’s
`
`mark is used in connection with Applicant’s
`
`Goods for the purpose of creating a mistaken belief of association or sponsorship with Opposer’s
`
`famous Octagon Marks, and also its UFC and UFC ULTIMATE FIGHTING CHAMPIONSHIP
`
`marks.
`
`19. Applicant has purposefully chosen to use design features similar or identical to the
`
`Octagon Marks, and thus intended from the outset to infringe upon Opposer’s intellectual
`
`property rights in the Octagon Marks.
`
`20. Opposer’s Octagon Marks were famous and in use before Applicant filed its
`
`Application and before Applicant allegedly began using Applicant’s Mark anywhere and/or in
`
`commerce, within the meaning of Section 45 of the Lanham Act, 15 U.S.C. § 1127.
`
`21. Registration of Applicant’s Mark is likely to dilute the distinctiveness of Opposer’s
`
`Octagon Marks.
`
`22. Registration of Applicant’s Mark is likely to cause confusion, to cause mistake or to
`
`deceive consumers.
`
`23. Opposer will suffer damage including irreparable injury to its reputation and
`
`goodwill if Applicant’s Mark is allowed to register.
`
`
`
`WHEREFORE, Opposer prays that the opposition be sustained and that the Board refuse
`
`registration for Applicant’s Mark.
`
`Dated: February 12, 2014
`
`
`
`Respectfully submitted,
`
`GORDON SILVER
`
`__/Michael N. Feder/_______________________
`Michael N. Feder, Esq.
`Jennifer K. Craft, Esq.
`Andrew D. Sedlock, Esq.
`3960 Howard Hughes Parkway, Ninth Floor
`Las Vegas, Nevada 89169
`trademarks@gordonsilver.com
`(702) 796-5555 (phone)
`(702) 947-9684 (fax)
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that, on this 12th day of February, 2014, 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 address for Applicant:
`
`Jason Ellison
`1447 Drew Street
`Clearwater, Florida 33755
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`_/Michelle Ledesma/________________
`An employee of Gordon Silver Ltd.
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