Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1091241
`10/26/2020
`
`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
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Zuffa, LLC
`
`10/28/2020
`
`6650 SOUTH TORREY PINES DR.
`LAS VEGAS, NV 89118
`UNITED STATES
`
`JOHN KRIEGER
`DICKINSON WRIGHT PLLC
`3883 HOWARD HUGHES PKWY.
`SUITE 800
`LAS VEGAS, NV 89169
`UNITED STATES
`Primary Email: trademarkslv@dickinson-wright.com
`Secondary Email(s): jkrieger@dickinson-wright.com,
`slnorton@dickinson-wright.com
`702-550-4400
`
`Docket Number
`
`066108-30753
`
`Applicant Information
`
`Application No.
`
`88821600
`
`Publication date
`
`06/30/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`10/26/2020
`
`Opposition Peri-
`od Ends
`
`10/28/2020
`
`Oghayore, Christopher
`300 GRAHAM AVE
`STATEN ISLAND, NY 10314
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 041. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Entertainment services in the nature oflive
`mixed martial arts (MMA) events; Entertainment services, namely, arrangingand conducting of com-
`petitions in the field of boxing, fighting and kickboxing;Organizing live mixed martial arts events and
`competitions
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`

`

`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2706754
`
`Registration Date
`
`04/15/2003
`
`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: 2001/05/00 First Use In Commerce: 2001/05/00
`Pre-recorded video cassettes, digital video discs, digital versatile discs, allfeatur-
`ing sports and entertainment; video game cartridges and discs; [ computergame
`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; under-
`wear; 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; edu-
`cational services, namely, providing information on the subject of sports and en-
`tertainment; providing a website on global computer networks featuring informa-
`tion 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.
`
`2645312
`
`Registration Date
`
`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 ba-
`bies; 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 athlet-
`ic team logos; sweaters; parkas; turtlenecks; mittens and gloves; underwear; jer-
`seys; [ bowties; ] headwear and scarves; [ ear muffs; earbands ] and head-
`bands; [ 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; [ canvasfootwear; knickers; ] wind resistant jackets; [ mas-
`querade 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.
`
`3624854
`
`Registration Date
`
`05/19/2009
`
`Application Date
`
`06/19/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`UFC
`
`NONE
`
`Class 005. First use: First Use: 2008/10/30 First Use In Commerce: 2008/10/30
`Nutritional supplements and vitamins; [nutritional supplement drinks in the form
`of liquid and powdered drinks and drink mixes; meal replacement nutrition bars;
`] nutritional supplement in the nature of fortified energy drink beverages
`[;nutritional meal replacement drinks andmeal replacement drink mixes ]
`Class 028. First use: First Use: 2008/10/22 First Use In Commerce: 2008/10/22
`Personal exercise mats
`
`U.S. Registration
`No.
`
`3723920
`
`Registration Date
`
`12/08/2009
`
`Application Date
`
`06/19/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`UFC
`
`NONE
`
`Class 028. First use: First Use: 2007/08/27 First Use In Commerce: 2007/08/27
`Weight lifting gloves; martial arts equipment, namely, bag gloves, shin
`guards,punch mitts, pads, namely, kick pads, target pads and shin pads; focus
`mitts, mouth guards, free standing bags
`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
`
`U.S. Registration
`No.
`
`1939277
`
`Registration Date
`
`12/05/1995
`
`Application Date
`
`04/20/1994
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`Class 041. First use: First Use: 1993/09/01 First Use In Commerce: 1993/09/01
`entertainment services, namely conducting martial arts competitions, events an-
`dpersonal appearances for live and prerecorded transmission by means of
`cable, broadcast, satellite and other media
`
`U.S. Registration
`No.
`
`3792144
`
`Registration Date
`
`05/25/2010
`
`Application Date
`
`04/14/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`Class 005. First use: First Use: 2008/10/30 First Use In Commerce: 2008/10/30
`[ Nutritional supplements and vitamins;nutritional supplement drinks in the form
`of liquid and powdered drinks and drink mixes; meal replacement nutrition bars;
`nutritional supplement in the nature of fortified energy drink beverages; nutrition-
`al meal replacement drinks and meal replacement drink mixes ]
`Class 028. First use: First Use: 2008/01/11 First Use In Commerce: 2008/01/11
`[ exercise and fitness equipment and accessories, namely, personal exercise
`mats; weight lifting gloves; ] martial artsequipment, namely, [ bag gloves, ] focus
`mitts, punching mitts, [ shin guards, punching bags, heavy bags, free standing-
`bags; ] pads for use in boxing and martial arts, namely, [ kick pads, ] target pads
`[, thai pads and shin pads; karate target pads ]
`Class 032. First use: First Use: 2006/04/30 First Use In Commerce: 2006/04/30
`[ Energy sports drinks ]
`
`U.S. Registration
`No.
`
`4099296
`
`Registration Date
`
`02/14/2012
`
`Application Date
`
`06/04/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`Class 041. First use: First Use: 2009/12/01 First Use In Commerce: 2009/12/01
`providing health club services, namely,providing fitness and exercise facilities
`
`Related Proceed-
`ings
`
`New opposition being filed concurrently against applicant's application serial no.
`88/821,604
`
`Attachments
`
`TTAB Notice of Opposition - TFC-41.pdf(147830 bytes )
`
`Signature
`
`Name
`
`Date
`
`/John L. Krieger/
`
`JOHN KRIEGER
`
`10/26/2020
`
`

`

`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`limited
`
`liability
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`Opposer,
`
`Applicant.
`
`
`
`Mark:
`Ser. No: 88/821,600
`Published: June 30, 2020
`Class: 41
`
`
`
`ZUFFA, LLC, a Nevada
`company,
`
`
`
`
`
`CHRISTOPHER OGHAYORE,
`
`
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`Pursuant to 15 U.S.C. § 1063 and 37 C.F.R. §§ 2.101 and 2.104(a), Zuffa, LLC, a Nevada
`
`limited liability company, with a principal place of business at 6650 S. Torrey Pines Drive, Las
`Vegas, Nevada 89118 (“Opposer”), believes it will be damaged by registration of the above
`referenced mark in International Class 41 for “Entertainment services in the nature of live mixed
`martial arts (MMA) events; Entertainment services, namely, arranging and conducting of
`competitions in the field of boxing, fighting and kickboxing; Organizing live mixed martial arts
`events and competitions” (Ser. No. 88/821,600) (the “Opposed Mark”), which was published on
`June 30, 2020, and hereby opposes the same.
`
`As grounds for its opposition, Opposer alleges as follows:
`Upon information and belief, Christopher Oghayore (“Applicant”) is an
`1.
`individual, having an address of 300 Graham Avenue, Staten Island, New York 10314.
`Opposer owns the UFC®, Ultimate Fighting Championship®, UFC GYM®, and
`2.
`a multitude of similar trademarks (collectively, the “UFC® Marks”) and is one of the world’s
`leading promoters of mixed martial arts (“MMA”) competitions and events.
`Opposer and its predecessor-in-interest first began using the UFC® Marks in
`3.
`connection with MMA and sports-related goods and services since at least as early as September
`1993.
`
`

`

`Application No. 88/821,600
`
`
`Since 1993, Opposer and its predecessor-in-interest have promoted over 500
`
`4.
`MMA events.
`Opposer produces more than 40 UFC live events annually and is the largest pay-
`5.
`per-view event provider in the world. Television content containing one or more of Opposer’s
`UFC® Marks is broadcast in over 163 countries/territories, in 35 different languages, reaching
`over one billion households.
`Opposer has millions of fans, which it connects with through its website at
`6.
`<ufc.com>, as well as on social media sites. Opposer has 26 million followers of Facebook, 23
`million followers on Instagram, and 7.8 million followers on Twitter.
`In 2019, UFC ranked number 8 in the Forbes Fab 40: Most Valuable Sports
`7.
`Brands.
`Zuffa’s rights in and to the UFC® Marks are evidenced by its numerous federal
`8.
`trademark registrations for its UFC® Marks for a wide range of entertainment, sports, fitness and
`mixed martial arts-related goods and services, including, but not limited to:
`
`
`UFC (and design): (Reg. No. 2,706,754) Class 9 for 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 for posters; event and competition programs; photographs; postcards; trading
`cards; stickers. Class 18 for all purpose sports bags; all-purpose athletic carrying bags;
`back packs; book bags; duffel bags; gym bags; tote bags; knapsacks; luggage. Class 25
`for 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 tongs; hats; caps; workout and sports apparel, namely shorts and
`shirts. Class 28 for martial arts gloves; karate gloves; wrestling gloves; boxing gloves.
`Class 41 for 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
`
`

`

`Application No. 88/821,600
`
`
`distribution of entertainment shows and news programs via global communication
`networks.
`
`UFC: (Reg. No. 2,645,312) Class 25 for 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; rain-wear, 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 41 for 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.
`
`UFC: (Reg. No. 3,624,854) Class 5 for nutritional supplements and vitamins; nutritional
`supplement drinks in the form of liquid and powdered drinks and drink mixes; meal
`replacement nutrition bars; nutritional supplements in the nature of fortified energy drink
`beverages; nutritional meal replacement drinks and meal replacement drink mixes. Class
`28 for personal exercise mats.
`
`UFC: (Reg. No. 3,723,920) Class 28 for weight lifting gloves; martial arts equipment,
`namely, bag gloves, shin guards, punch mitts, pads, namely, kick pads, target pads and
`shin pads; focus mitts, mouth guards, freestanding bags. Class 41 for providing health
`club services, namely, providing fitness and exercise facilities.
`
`THE ULTIMATE FIGHTING CHAMPIONSHIP: (Reg. No. 1,939,277) Class 41 for
`entertainment services, namely conducting martial arts competitions, events and personal
`appearances for live and prerecorded transmission by means of cable, broadcast, satellite
`and other media.
`
`ULTIMATE FIGHTING CHAMPIONSHIP: (Reg. No. 3,792,144) Class 5 for
`nutritional supplements and vitamins; nutritional supplement drinks in the form of liquid
`and powdered drinks and drink mixes; meal replacement nutrition bars; nutritional
`supplement in the nature of fortified energy drink beverages; nutritional meal
`replacement drinks and meal replacement drink mixes. Class 28 for exercise and fitness
`equipment and accessories, namely, personal exercise mats; weight lifting gloves; martial
`arts equipment; namely bag gloves, focus mitts, punching mitts, shin guards, punching
`bags, heavy bags, free standing bags, pads for use in boxing and marital arts, namely,
`
`

`

`Application No. 88/821,600
`
`
`kick pads, target pads, thai pads and shin pads; karate target pads. Class 32 for energy
`sports drinks
`
`ULTIMATE FIGHTING CHAMPIONSHIP: (Reg. No. 4,099,296) Class 41 for
`providing health club services, namely, providing fitness and exercise facilities.
`
`
`
`Opposer has expended millions of dollars advertising, marketing and promoting
`9.
`the goods and services provided under its UFC® Marks in the United States and around the
`world, and has developed significant goodwill and fame in the UFC® Marks.
`As a result of Opposer’s extensive use of the UFC® Marks in interstate
`10.
`commerce in the United States and throughout the world, the public has come to associate goods
`and services bearing the UFC® Marks with Opposer alone.
`On March 5, 2020, Applicant filed an application under Section 1(b) of the
`11.
`Trademark Act for the Opposed Mark, as shown below, which was published for opposition in
`the Official Gazette on June 30, 2020.
`
`
`
`
`
`
`
`
`Upon information and belief, Applicant has not used the Opposed Mark in
`12.
`commerce for the services listed in the application.
`Opposer filed a timely request for an extension of time to oppose Applicant’s
`13.
`Mark. The Trademark Trial and Appeal Board granted the request and the deadline to oppose
`was extended to October 28, 2020.
`Opposer has priority of use over Applicant in the UFC® Marks.
`14.
`15.
`Opposer has a good faith belief that it will be damaged by the registration of
`Applicant’s Mark, and therefore, has standing to bring this Opposition.
`
`

`

`Application No. 88/821,600
`
`
`LIKELIHOOD OF CONFUSION
`Opposer hereby re-adopts and re-alleges the allegations contained in the
`16.
`preceding paragraphs as though fully set forth herein.
`Upon information and belief, Opposer has not made any actual and bona fide use
`17.
`of its mark in commerce in connection with the goods and services listed in the application.
`Conversely, Opposer and its predecessor have used the UFC® Marks for over
`18.
`twenty-five (25) years. Therefore, Opposer has priority of use over Applicant.
`The Opposed Mark is confusingly similar to Opposer’s UFC® Marks in sight,
`19.
`sound, meaning and overall commercial impression. In particular, the Opposed Mark is a three-
`letter acronym that differs from the UFC® Marks by only one letter, and utilizes a stylized font
`and color that is strikingly similar to the font style and color often utilized by Opposer for the
`UFC® Marks.
`Furthermore, when applied to Applicant’s services, the Opposed Mark conveys
`20.
`the same commercial impression as the UFC® Marks.
`In addition, the services set forth in the Applicant’s application are closely related,
`21.
`if not identical, to the goods and services provided by Opposer under the UFC® Marks. Indeed,
`both party’s marks are used for entertainment services for arranging and conducting MMA
`events and competitions.
`Opposer is informed and believes, and thereupon alleges, that by adopting the
`22.
`Opposed Mark, Applicant is deliberately seeking to profit from the goodwill and popularity of
`the UFC® Marks.
`Accordingly, because: (1) Opposer is the senior user of the UFC® Marks; (2) the
`23.
`Opposed Mark is identical and/or confusingly similar to the UFC® Marks; and (3) Applicant
`seeks registration for the Opposed Mark for goods and services that are identical or closely
`related to Opposer’s goods and services, the Opposed Mark is likely to cause confusion, or to
`cause mistake, or to deceive consumers under Section 2(d) of the Lanham Act and that
`registration of the Opposed Mark would be inconsistent with and damaging to Opposer’s rights
`
`

`

`Application No. 88/821,600
`
`
`in and to its UFC® Marks.
`
`DILUTION
`Opposer hereby re-adopts and re-alleges the allegations contained in the
`24.
`preceding paragraphs as though fully set forth herein.
`The UFC® Marks were famous and distinctive prior to the filing date of the
`25.
`Opposed Mark of March 5, 2020.
`The Opposed Mark is identical and/or confusingly similar to the UFC® Marks
`26.
`and dilutes the distinctive qualities of the UFC® Marks.
`Opposer is informed and believes and thereupon alleges that Applicant intended
`27.
`to create an association with Opposer to trade off Opposer’s fame and goodwill.
`The UFC® Marks are so well-known that the relevant consuming public would
`28.
`reasonably assume a connection between Opposer and the goods and services allegedly offered
`by Applicant. For this reason, the Opposed Mark is likely to cause dilution by blurring.
`
`RELIEF REQUESTED
`
`
`
`WHEREFORE, Opposer prays that the Opposed Mark (Ser. No. 88/821,600) be rejected,
`
`and that the mark therein sought for the services therein specified be denied and refused.
`
`
`
`Dated: October 26, 2020.
`
`Respectfully submitted,
`
`DICKINSON WRIGHT PLLC
`
`
`____/John L. Krieger/__________________
`John Krieger, Esq.
`jkrieger@dickinsonwright.com
`Shauna L. Norton, Esq.
`slnorton@dickinsonwright.com
`trademarkslv@dickinsonwright.com
`3883 Howard Hughes Parkway, Suite 800
`Las Vegas, Nevada 89169
`(702) 550-4400 (phone)
`(844) 670-6009 (fax)
`
`