Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1041901
`03/12/2020
`
`ESTTA Tracking number:
`
`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
`
`PATRON SPIRITS INTERNATIONAL AG
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`03/15/2020
`
`QUAISTRASSE 11
`SCHAFFHAUSEN, 8200
`SWITZERLAND
`
`JOHN P. MURTAUGH
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET, SUITE 1200
`CLEVELAND, OH 44114-3108
`UNITED STATES
`tmdocket@pearne.com, jmurtaugh@pearne.com
`216-579-1700
`
`Applicant Information
`
`Application No
`
`88176571
`
`Publication date
`
`09/17/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`03/12/2020
`
`Opposition Peri-
`od Ends
`
`03/15/2020
`
`Zuffa, LLC
`6650 South Torrey Pines Drive
`Las Vegas, NV 89118
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 033. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Spirits and liqueurs
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3157736
`
`Application Date
`
`10/20/2005
`
`Registration Date
`
`10/17/2006
`
`Foreign Priority
`
`NONE
`
`
`
`Word Mark
`
`Design Mark
`
`ULTIMAT VODKA
`
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 033. First use: First Use: 2001/02/01 First Use In Commerce: 2001/03/01
`Vodka
`
`U.S. Registration
`No.
`
`3535807
`
`Registration Date
`
`11/25/2008
`
`Word Mark
`
`Design Mark
`
`ULTIMAT
`
`Application Date
`
`03/21/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 033. First use: First Use: 2001/02/01 First Use In Commerce: 2001/02/01
`Alcoholic beverages, namely, distilled spirits and vodka
`
`U.S. Registration
`No.
`
`3785086
`
`Registration Date
`
`05/04/2010
`
`Word Mark
`
`ULTIMAT VODKA
`
`Application Date
`
`06/26/2008
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "ULTIMAT"above the word "VODKA" in stylized
`font.
`
`Class 033. First use: First Use: 2007/11/00 First Use In Commerce: 2007/11/00
`Alcoholic beverages, except beers; distilled spirits; and vodka
`
`Attachments
`
`78736816#TMSN.png( bytes )
`76687969#TMSN.png( bytes )
`76690926#TMSN.png( bytes )
`Notice-Opposition.pdf(137079 bytes )
`
`Signature
`
`/johnpmurtaugh/
`
`Name
`
`Date
`
`JOHN P. MURTAUGH
`
`03/12/2020
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`) Mark being Opposed: UFC ULTIMATE SPIRITS
`
`Application No.
`
`88/176,571
`
`Opposition No.
`
`) >
`
`)
`)
`)
`I
`
`BACARDI MARTINI PATRON
`
`INTERNATIONAL GMBH,
`Opposer,
`
`v.
`
`ZUFFA, LLC,
`Applicant
`
`NOTICE OF OPPOSITION
`
`1. BACARDI MARTINI PATRON INTERNATIONAL GMBH, a Gesellschaft mit beschrankter
`
`Haftung (GmbH) of Switzerland, having an address at Quaistrasse 11, Schaffhausen, 8200,
`
`Switzerland (“Bacardi” or “Opposer”), believes that it will be damaged by registration of the mark
`
`shown in US. Application No. 88/176,571 forthe mark UFC ULTIMATE SPIRITS and hereby
`
`opposes the same. Bacardi may take advantage of the extension of time to oppose that was
`
`granted to PATRON SPIRITS INTERNATIONAL AG (“Patrén”) because Bacardi is in privity with
`
`Patron; specifically, Patrén became Bacardi through an Entity Conversion recorded on October
`
`22, 2019 at Reel 6776, Frame 0526. The grounds for opposition are as follows.
`
`2. US. Application No. 88/176,571 was filed by Zuffa, LLC, a limited liability company of
`
`Nevada, having an address at 6650 South Torrey Pines Drive, Las Vegas, NEVADA 89118
`
`(“Applicant”), on October 31, 2018 for the mark UFC ULTIMATE SPIRITS on an intent-to—use
`
`basis. The mark was published for opposition on September 17, 2019 for spirits and liqueurs, in
`
`Class 33. Accordingly, the earliest date of claimed rights is October 31, 2018.
`
`3. Opposer is the owner of the following marks (“Opposer’s marks”):
`
`A. US. Registration No. 3157736, filed on October 20, 2005, and registered on
`
`October 17, 2006, for ULTIMAT VODKA, for vodka, in Class 33, claiming a date of first use in
`
`US commerce of March 1, 2001.
`
`B. U.S. Registration No. 3535807, filed on March 21, 2008, and registered on
`
`November 25, 2008, for ULTIMAT, for alcoholic beverages, namely, distilled spirits and vodka,
`
`in Class 33, claiming a date of first use in US commerce of February 1, 2001.
`
`1
`
`
`
`C. U.S. Registration No. 3785086, filed on June 26, 2008, and registered on May 4,
`
`2010, for ULTIMAT VODKA, for alcoholic beverages, except beers; distilled spirits; and vodka,
`
`in Class 33, claiming a date of first use in US commerce of November 2007.
`
`4. Opposer has used its marks in US commerce with respect to the registered goods on a
`
`regular and continuous basis since its first use and accordingly has common law rights
`
`corresponding to its registration rights.
`
`5. As can be seen from the above, Opposer has priority over Applicant by reason of Opposer’s
`
`rights going back years before Applicant’s earliest date of October 31, 2018.
`
`6. Opposer’s marks are similar to Applicant’s mark in that all of Opposer’s marks start with or
`
`consist of ULTliVlAT, which is the same (except for the terminal “E”) as the largest word and the
`
`central word of Applicant’s three word UFC ULTIMATE SPlRlTS mark.
`
`7. Applicant’s goods, being spirits and liqueurs, are substantially identical to and encompass
`
`Opposer’s goods, which are alcoholic beverages, except beers; distilled spirits; and vodka .
`
`8. As a result of Opposer’s extensive promotional and marketing efforts and the resulting sales
`
`of its products under its marks in the United States, Opposer’s marks have achieved a high
`
`degree of consumer awareness and attributed fame such that Opposer‘s marks are viewed by
`
`relevant purchasers as famous marks.
`
`9. Opposer’s marks became famous before Applicant’s filing date or any other possible date on
`
`which Applicant may rely.
`
`10. Applicant's mark is likely to cause dilution by blurring or by tarnishment of the
`
`distinctiveness of Opposer’s famous marks.
`
`11.
`
`in view of the similarity of the marks and the substantial identicality of the goods,
`
`Applicant's mark so resembles Opposer’s marks that, when applied to Applicant’s goods,
`
`Applicant’s mark is likely to cause confusion, to cause mistake and/or to deceive the trade and
`
`
`
`the public. Also, any poor performance by Applicant towards Applicant’s customers in terms of
`
`quality of goods will impact Opposer's reputation in a negative manner.
`
`12. Registration of Applicant’s mark will result in damage to Opposer.
`
`WHEREFORE, Opposer prays that Application No. 88/176,571 be refused, that no registration
`
`be issued thereon to Applicant, and that this Opposition be sustained in favor of Opposer.
`
`Respectfully submitted,
`
`BACARDI MARTINl PATRON INTERNATIONAL GMBH
`
`Date: WA 5&1 EWM
`
`;
`By Jo
`
`l). a
`P. Murtaug'h
`
`'
`
`PEARNE & GORDON LLP
`1801 East 9‘“ Street, Suite 1200
`Cleveland, Ohio 44114—3108
`Phone: 216—579—1700
`
`jmurtaugh@pearnetcom
`Email:
`Attorney for Opposer
`
`
