Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA488789
`ESTTA Tracking number:
`08/13/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Petition for Cancellation
`
`Notice is hereby given that the following party requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`Address
`
`Zuffa, LLC
`limited liability company
`2960 West Sahara Avenue
`Las Vegas, NV 89102
`UNITED STATES
`
`Citizenship
`
`Nevada
`
`Attorney
`information
`
`Michael N. Feder
`Gordon & Silver, Ltd.
`3960 Howard Hughes Parkway, 9th Floor
`Las Vegas, NV 89169
`UNITED STATES
`TRADEMARKS@GORDONSILVER.COM Phone:(702) 796-5555
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`Registration date
`3539442
`Premier Championship Fighting LLC
`3535 Boodel Circle
`Elizabeth, CO 80107
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`12/02/2008
`
`Class 041. First Use: 2007/06/15 First Use In Commerce: 2007/06/15
`Cancelled goods and services in the class: Entertainment in the nature of competitions in the field of
`ultimate fighting
`
`Grounds for Cancellation
`
`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 Petitioner as Basis for Cancellation
`
`U.S. Registration
`No.
`Registration Date
`
`3047189
`
`01/24/2006
`
`Word Mark
`
`ULTIMATE FIGHTING
`
`Application Date
`
`01/07/2002
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1993/11/00 First Use In Commerce: 1993/11/00
`Entertainment, namely live stage shows and performances featuring sports and
`mixed martial arts
`
`U.S. Registration
`No.
`Registration Date
`
`2925669
`
`02/08/2005
`
`Word Mark
`Design Mark
`
`ULTIMATE FIGHTING
`
`Application Date
`
`01/07/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1996/00/00 First Use In Commerce: 1996/00/00
`[ compact discs, laser video discs, ] digital video discs, digital versatile discs [
`and CD-ROM discs, all featuring sports events and mixed martial arts; ]
`computer software for programming video games in the fields of sports and
`entertainment; video game cartridges and discs; [ computer game cartridges ]
`Class 025. First use: First Use: 1993/09/00 First Use In Commerce: 1993/09/00
`sweatshirts; tee-shirts; sports shirts; tank tops; shorts; underwear; nylon shells,
`namely, shirts; [ hats and caps; ] workout and sports apparel, namely, shorts
`and shirts; [writ * wrist * bands, namely, bands worn around and wrist ]
`
`U.S. Registration
`No.
`Registration Date
`
`3226285
`
`04/10/2007
`
`Word Mark
`Design Mark
`
`ULTIMATE FIGHTING
`
`Application Date
`
`01/07/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1996/00/00 First Use In Commerce: 1996/00/00
`Pre-recorded video cassettes featuring sports events and mixed martial arts;
`computer game programs
`
`U.S. Registration
`
`3022840
`
`Application Date
`
`03/08/2002
`
`

`

`No.
`Registration Date
`
`12/06/2005
`
`Word Mark
`Design Mark
`
`ULTIMATE FIGHTING
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1993/11/00 First Use In Commerce: 1993/11/00
`souvenir event programs featuring sports events and mixed martial arts; posters
`
`U.S. Registration
`No.
`Registration Date
`
`2960665
`
`06/07/2005
`
`Word Mark
`Design Mark
`
`ULTIMATE FIGHTING
`
`Application Date
`
`03/08/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`
`NONE
`
`Class 016. First use: First Use: 2001/11/02 First Use In Commerce: 2001/11/02
`[ books in the field of sports and entertainment; ] trading cards; [ books and
`journals featuring athletic contests and games; stickers; adhesive stickers; ]
`decals and windshield decal strips; [ bumper stickers and strips; autograph
`books ]
`
`1939277
`
`Application Date
`
`04/20/1994
`
`12/05/1995
`
`Foreign Priority
`Date
`THE ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`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 and
`personal appearances for live and prerecorded transmission by means of cable,
`broadcast, satellite and other media
`
`4099296
`
`Application Date
`
`06/04/2008
`
`02/14/2012
`
`Foreign Priority
`Date
`ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`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
`
`U.S. Registration
`No.
`Registration Date
`
`3038488
`
`01/03/2006
`
`Word Mark
`Design Mark
`
`THE ULTIMATE FIGHTER
`
`Application Date
`
`06/25/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2005/01/00 First Use In Commerce: 2005/01/00
`tee-shirts; team uniform reproductions, namely jerseys featuring reproductions
`of professional athletic team logos; hats; caps
`Class 041. First use: First Use: 2004/12/00 First Use In Commerce: 2005/01/17
`entertainment in the nature of an on-going television program in the field of
`sports and mixed martial arts
`
`U.S. Registration
`No.
`Registration Date
`
`3140717
`
`09/05/2006
`
`Word Mark
`
`ULTIMATE FIGHT NIGHT
`
`Application Date
`
`07/12/2005
`
`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: 2005/06/12 First Use In Commerce: 2005/06/12
`entertainment, namely live stage shows and performances featuring sports and
`mixed martial arts; entertainment in the nature of an on-going television program
`in the field of sports and mixed martial arts
`
`3052007
`
`Application Date
`
`05/01/2002
`
`01/31/2006
`
`Foreign Priority
`Date
`UFC ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`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
`
`Word Mark
`
`3792144
`
`Application Date
`
`04/14/2009
`
`05/25/2010
`
`Foreign Priority
`Date
`ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`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 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 arts equipment, 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.
`Registration Date
`
`Word Mark
`Design Mark
`
`3044208
`
`Application Date
`
`05/01/2002
`
`01/17/2006
`
`Foreign Priority
`Date
`UFC ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`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
`
`U.S. Registration
`No.
`Registration Date
`
`2576367
`
`06/04/2002
`
`Application Date
`
`04/20/1994
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`THE ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`Class 009. First use: First Use: 1993/05/00 First Use In Commerce: 1993/05/00
`[eyeglasses; sunglasses; ] prerecorded compact disks, [ phonorecords and ]
`audio tapes featuring music, sports and entertainment; computer hardware and
`computer software programs for database management in the field of sports and
`entertainment; [ fashion eyeglasses; eyeglass frames; binoculars; ] prerecorded
`audio tapes featuring sports and entertainment events; [ magnetic automobile
`emblems for decoration of metal surfaces; neon signs; magnifying glasses;
`luminous signs; decorative refrigerator magnets ]
`Class 016. First use: First Use: 1993/05/00 First Use In Commerce: 1993/05/00
`books and printed instructional and teaching manuals in the field of sports and
`entertainment; [ note paper dispensers; general feature and sports, fitness and
`entertainment magazines; newspapers in the field of sports, fitness and
`entertainment; ] calendars; mounted and unmounted photographs; playing and
`trading cards; [ road maps; books and journals featuring athletic contests and
`games; ] catalogs for the sale of athletic merchandise; [ envelopes; cartoon
`prints on paper and cardboard; blank and picture postcards; notecards; note
`pads; greeting cards; cookbooks; adult and children's activity and coloring
`books; puffy stickers; ] adhesive stickers; [ photograph albums; memorandum
`books; pens; pencils; folders and portfolios for papers; notebooks and binders;
`letter openers; memo holders; pennants made of paper and mounted on sticks;
`diaries; clipboards; book covers; book marks; bulletin boards; erasable memo
`boards; pen and pencil holders; paper clip holders; paper weights; paper
`napkins and towels; posters; writing paper and stationery; drawing paper; gift
`wrapping paper; luminous paper; graphics paper; stickers; paper banners;
`decals and windshield decals strips; collector decals and collector decals with
`display sheets; ] bumper stickers and strips; [ plastic water filled snow globes;
`memo pads; non-electric erasers; electric erasers; stationery holders; maps;
`desk sets; color lithograph sticker books; postcard books; holographic greeting
`and trading cards; pencil bags; pencil sharpeners; gift wrapping paper sets;
`decorative gift boxes; comic books; bookmarks; posterbooks; paper, party and
`lawn signs; stamp pads; rubber stamps for impressing illustrated images; score,
`check and autograph books; adhesive tape dispensers for stationery or
`household use; corrugated cardboard storage boxes and corrugated closet
`wardrobes and storage boxes; reflective paper stock ]
`Class 018. First use: First Use: 1993/05/00 First Use In Commerce: 1993/05/00
`[ knapsacks; ] all purpose sports bags; back packs; [ tote bags; handbags;
`purses; ] wallets; [ credit card holders; ] brief cases; [ attache cases of leather
`and vinyl; garment bags for travel; ] gym bags; all purpose athletic carrying
`bags; [ umbrellas; luggage; trunks for traveling; parasols; walking sticks; whips;
`canvas tote bags; barrel bags; fanny packs; ] travel bags and gym bags
`designed to fit into lockers; duffel bags; [ suit bags for travel; school bags; plastic
`shopping bags; plastic garment bags for travel ]
`Class 025. First use: First Use: 1994/12/00 First Use In Commerce: 1994/12/00
`belts; [ neckties; suspenders; ] bandanas; beach sandals; [ bathrobes; ] infant
`and toddler sleepwear; bathrobes; [ nightshirts, ] pajamas [ and loungewear;
`beach coverup dresses; diaper sets; toddler short sets; ] jogging suits; [ boys
`short sets; socks; playsuits; coveralls; ] wristbands; [ union suits; henley suits;
`shorts; pants; slacks; ] shirts; jackets; [ referees and umpires uniforms; team
`uniform reproductions; sweaters; parkas; turtlenecks; mittens; ] underwear;
`jerseys; [ bowties; headwear and scarves; ear muffs, earbands and headbands;
`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; canvas footwear; knickers; ] wind resistant jackets; [
`
`

`

`masquerade costumes; blazers; legwarmers; jeans; leotards; ] workout and
`sports apparel, namely shorts, jackets, slacks, shirts
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`2170463
`
`Application Date
`
`04/20/1994
`
`06/30/1998
`
`Foreign Priority
`Date
`THE ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1994/12/31 First Use In Commerce: 1994/12/31
`prerecorded video optical disks featuring sports and entertainment events;
`prerecorded audio and videotapes featuring sports and entertainment events
`
`U.S. Registration
`No.
`Registration Date
`
`3122194
`
`07/25/2006
`
`Word Mark
`Design Mark
`
`THE ULTIMATE FIGHTER
`
`Application Date
`
`06/25/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2005/11/01 First Use In Commerce: 2005/11/01
`Laser video discs, digital video discs, digital versatile discs and CD-ROM discs,
`all featuring sports events and mixed martial arts
`
`U.S. Registration
`No.
`Registration Date
`
`4129014
`
`04/17/2012
`
`Word Mark
`
`THE ULTIMATE FIGHTER
`
`Application Date
`
`08/22/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2005/01/17 First Use In Commerce: 2005/01/17
`Motion picture films featuring sports events, mixed martial arts and profiles of
`athletes
`Class 025. First use: First Use: 2005/01/18 First Use In Commerce: 2005/01/18
`Shorts and tops for martial arts, wrestling, mixed martial arts; tank tops; warm-
`up suits, sweatshirts, hooded sweatshirts, sweat pants; shirts; athletic uniforms;
`jerseys
`
`U.S. Application
`No.
`Registration Date
`
`85367123
`
`NONE
`
`Word Mark
`Design Mark
`
`ULTIMATE FIGHTING
`
`Application Date
`
`07/08/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 044. First use:
`Providing information in the fields of nutrition, health and wellness
`
`U.S. Application
`No.
`Registration Date
`
`85367120
`
`NONE
`
`Word Mark
`
`ULTIMATE FIGHTING
`
`Application Date
`
`07/08/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use:
`Health club services, namely, providing fitness, personal training and exercise
`facilities; providing instruction in the fields of fitness, personal training, exercise
`and mixed martial arts; providing instructional programs and classes in fields of
`fitness, personal training, exercise and mixed martial arts; providing information
`in the fields of fitness, personal training, exercise and mixed martial arts via a
`global computer network; Providing instruction in the fields of nutrition, health
`and wellness
`
`U.S. Application
`No.
`Registration Date
`
`85575140
`
`NONE
`
`Word Mark
`Design Mark
`
`THE ULTIMATE FIGHTER
`
`Application Date
`
`03/20/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use:
`Entertainment in the nature of an on-going program in the field of sports and
`mixed martial arts broadcast over television, cable, satellite, Internet and audio
`and visual media; providing on-line newsletters in the fields of current events,
`news and information featuring sports, mixed martial arts and entertainment;
`providing electronic newsletters delivered by email in the fields of current events,
`news and information featuring sports, mixed martial arts and entertainment;
`and information services, namely, providing a web site featuring audio, video,
`photographic and prose presentations featuring sports, mixed martial arts and
`entertainment
`
`U.S. Application
`No.
`
`85537061
`
`Application Date
`
`02/08/2012
`
`

`

`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Foreign Priority
`Date
`THE ULTIMATE FIGHTER BRASIL
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use:
`Entertainment in the nature of an on-going program in the field of sports and
`mixed martial arts broadcast over television, cable, satellite, Internet and audio
`and visual media; providing on-line newsletters in the fields of current events,
`news and information featuring sports, mixed martial arts and entertainment;
`providing electronic newsletters delivered by email in the fields of current events,
`news and information featuring sports, mixed martial arts and entertainment;
`and information services, namely, providing a web site featuring audio, video,
`photographic and prose presentations featuring sports, mixed martial arts and
`entertainment
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`77727510
`
`Application Date
`
`05/01/2009
`
`NONE
`
`Foreign Priority
`Date
`ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 028. First use:
`Exercise and fitness equipment and accessories, namely, ankle and wrist
`weights; exercise bars; exercise benches; exercise doorway gym bars; rowing
`machines; stair-stepping machines; stationary cycles; abdominal boards; chest
`expanders; chest pulls; exercise platforms; trampolines; treadmills; weight cuffs;
`weights; manually-operated exercise equipment; stress relief balls for hand
`exercise; bar bells for athletic use; weight lifting belts; weight lifting benches and
`bench accessories; elliptical machines; jump ropes; fixed-gear stationary bikes;
`
`

`

`protective pads for cycling; stationary bicycles for indoor cycling; group exercise
`platforms; and hiking machines; martial arts equipment, namely, kicking shields,
`head guards, female chest protectors, groin cups, karate targets, body shields;
`sparring vests, ankle and hand wraps, jump ropes, mouth guards, knee pads,
`and elbow pads
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`85351672
`
`Application Date
`
`06/21/2011
`
`NONE
`
`Foreign Priority
`Date
`ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`The mark consists of a man with fists raised standing above the earth with a
`banner with the text "ULTIMATE FIGHTING CHAMPIONSHIP" written across it
`waving across the earth.
`Class 016. First use:
`Encyclopedias; Publications, namely, books in the fields of mixed martial arts,
`sports, entertainment, and pop culture
`
`85531199
`
`Application Date
`
`02/01/2012
`
`NONE
`
`Foreign Priority
`Date
`UFC ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the stylized words "UFC ULTIMATE FIGHTING
`CHAMPIONSHIP".
`Class 028. First use: First Use: 2009/10/00 First Use In Commerce: 2009/10/00
`Martial arts gloves; karate gloves; wrestling gloves; boxing gloves
`
`Attachments
`
`75982336#TMSN.gif ( 1 page )( bytes )
`
`

`

`76977166#TMSN.gif ( 1 page )( bytes )
`75983542#TMSN.gif ( 1 page )( bytes )
`76977064#TMSN.gif ( 1 page )( bytes )
`76977378#TMSN.gif ( 1 page )( bytes )
`77490897#TMSN.jpeg ( 1 page )( bytes )
`78976533#TMSN.jpeg ( 1 page )( bytes )
`78668283#TMSN.jpeg ( 1 page )( bytes )
`76402817#TMSN.gif ( 1 page )( bytes )
`77713969#TMSN.jpeg ( 1 page )( bytes )
`76977324#TMSN.gif ( 1 page )( bytes )
`75976536#TMSN.gif ( 1 page )( bytes )
`78977112#TMSN.jpeg ( 1 page )( bytes )
`77553615#TMSN.jpeg ( 1 page )( bytes )
`85367123#TMSN.jpeg ( 1 page )( bytes )
`85367120#TMSN.jpeg ( 1 page )( bytes )
`85575140#TMSN.jpeg ( 1 page )( bytes )
`85537061#TMSN.jpeg ( 1 page )( bytes )
`77727510#TMSN.jpeg ( 1 page )( bytes )
`85351672#TMSN.jpeg ( 1 page )( bytes )
`85531199#TMSN.jpeg ( 1 page )( bytes )
`Notice of Cancellation of PREMIVER CHAMPIONSHIP FIGHTING.pdf ( 11
`pages )(50164 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
`08/13/2012
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Zuffa, LLC, a Nevada limited liability
`company,
`
`PREMIER
`CHAMPIONSHIP
`FIGHTING
`
`3539442
`
`December 2, 2008
`
`
`Mark
`
`
`Reg. No.
`
`Date Registered
`
`
`
`
`
`
`
`
`Petitioner,
`
`v.
`
`
`
`Respondent.
`
`
`
`
`
`
`
`
`
`
`
`
`Premier Championship Fighting, LLC, a
`Colorado Limited Liability Company,
`
`PETITION TO CANCEL
`
`Petitioner, Zuffa, LLC ("Zuffa"), believes that it will be damaged by Registration No.
`
`3539442 for the mark PREMIER CHAMPIONSHIP FIGHTING in International Class 41 for the
`
`goods and services that include "ultimate fighting," and hereby petitions to cancel the same. As
`
`grounds for its petition, Zuffa alleges as follows:
`
`1. Petitioner Zuffa is a Nevada limited liability company with its principal place of
`
`business at 2960 W. Sahara Avenue, Las Vegas, Nevada 89102.
`
`2. To the best of Zuffa's knowledge, the current owner of the contested
`
`registration is Premier Championship Fighting LLC, 3535 Boodel Circle, Elizabeth, CO 80107.
`
`3. The grounds for cancellation are as follows:
`
`(a)
`
`(b)
`
`(c)
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`The registration at issue was obtained contrary to the provisions of 15 U.S.C. §
`1052(d), in that it is likely to cause confusion, or to cause mistake, or to deceive;
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`The registration at issue was obtained contrary to the provisions of 15 U.S.C. §
`1125(c), in that it dilutes the famous and distinctive quality of Zuffa’s marks; and
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`The registration at issue was obtained contrary to the provisions of 15 U.S.C. §
`1052(a), in that it falsely suggests a connection with Zuffa.
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`102800-005/1299867
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`4. Zuffa owns the ULTIMATE FIGHTING CHAMPIONSHIP brand and is one of the
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`world’s leading promoters of mixed martial arts ("MMA") competitions and events.
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`5. Zuffa offers a wide variety of goods and services under Zuffa's ULTIMATE
`
`FIGHTING, THE ULTIMATE FIGHTING CHAMPIONSHIP, ULTIMATE FIGHTING
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`CHAMPIONSHIP, UFC ULTIMATE FIGHTING CHAMPIONSHIP, THE ULTIMATE
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`FIGHTER, ULTIMATE FIGHT NIGHT, and other ULTIMATE-formative marks (collectively,
`
`the "ULTIMATE Formative Marks"), including, but not limited to, sports and entertainment
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`services (such as MMA competitions, events, promotions and television programs), CDs, DVDs,
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`computer programs and other pre-recorded media featuring sports and entertainment content,
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`publications and printed materials, apparel and apparel accessories, souvenir items, sports,
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`exercise and fitness equipment and accessories, energy drinks, nutritional supplements and
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`drinks, vitamins and credit cards.
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`6. Zuffa owns numerous federal trademark registrations for the ULTIMATE Formative
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`Marks in International Classes 41, 9, 16, 25, 28, 44 and others, including the following:
`
`(a) ULTIMATE FIGHTING in International Class 41 for entertainment, namely
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`live stage shows and performances featuring sports and mixed martial arts
`
`(U.S. Reg. No. 3047189);
`
`(b) ULTIMATE FIGHTING in International Class 9 for compact discs, laser
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`video discs, digital video discs, digital versatile discs and CD-ROM discs, all
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`featuring sports events and mixed martial arts; computer software for
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`programming video games in the fields of sports and entertainment; video
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`game cartridges and discs; computer game cartridges (U.S. Reg. No.
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`2925669);
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`(c) ULTIMATE FIGHTING in International Class 9 for pre-recorded video
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`cassettes featuring sports events and mixed martial arts; computer game
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`programs (U.S. Reg. No. 3226285);
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`(d) ULTIMATE FIGHTING in International Class 16 for souvenir event
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`programs featuring sports events and mixed martial arts; posters (U.S. Reg.
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`No. 3022840);
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`(e) ULTIMATE FIGHTING in Class 16 for trading cards; decals and windshield
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`decal strips (U.S. Reg. No. 2960665);
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`(f) THE ULTIMATE FIGHTING CHAMPIONSHIP in International Class 41 for
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`entertainment services, namely conducting martial arts competitions, events
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`and personal appearances for live and prerecorded transmission by means of
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`cable, broadcast, satellite and other media (U.S. Reg. No. 1939277);
`
`(g) ULTIMATE FIGHTING CHAMPIONSHIP in International Class 41 for
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`providing health club services, namely, providing fitness and exercise
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`facilities (U.S. Reg. No. 4099296);
`
`(h) THE ULTIMATE FIGHTER in International Class 41 for entertainment in the
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`nature of an on-going television program in the field of sports and mixed
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`martial arts (U.S. Reg. No. 3038488);
`
`(i) ULTIMATE FIGHT NIGHT in International Class 41 for entertainment,
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`namely live stage shows and performances featuring sports and mixed martial
`
`arts; entertainment in the nature of an on-going television program in the field
`
`of sports and mixed martial arts (U.S. Reg. No. 3140717);
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`(j)
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`in International Class 41 for entertainment, namely live
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`stage shows and performances featuring mixed martial arts; educational
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`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. Reg. No. 3052007);
`
`(k) ULTIMATE FIGHTING CHAMPIONSHIP in International Class 28 for
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`exercise and fitness equipment and accessories, namely, personal exercise
`
`mats; weight lifting gloves; martial arts equipment, namely, bag gloves, focus
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`mitts, punching mitts, shin guards, punching bags, heavy bags, free standing
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`bags; pads for use in boxing and martial arts, namely, kick pads, target pads,
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`thai pads and shin pads; karate target pads (U.S. Reg. No. 3792144);
`
`(l)
`
`in International Class 28 for martial arts gloves; karate
`
`gloves; wrestling gloves; and boxing gloves (U.S. Reg. No. 3044208);
`
`(m) THE ULTIMATE FIGHTING CHAMPIONSHIP in International Class 9 for
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`prerecorded compact disks; audio
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`tapes featuring music, sports and
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`entertainment; computer hardware and computer software programs for
`
`database management in the field of sports and entertainment; prerecorded
`
`audio tapes featuring sports and entertainment events (U.S. Reg. No.
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`2576367);
`
`(n)
`
`in International Class 9 for prerecorded video optical
`
`disks featuring sports and entertainment events; prerecorded audio and
`
`videotapes featuring sports and entertainment events (U.S. Reg. No.
`
`2170463);
`
`(o) THE ULTIMATE FIGHTER in International Class 9 for laser video discs,
`
`digital video discs, digital versatile discs and CD-ROM discs, all featuring
`
`sports events and mixed martial arts (U.S. Reg. No. 3122194); and
`
`(p) THE ULTIMATE FIGHTER in International Classes 9 and 25 for motion
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`picture films featuring sports events, mixed martial arts and profiles of
`
`athletes (in Class 9); and shorts and tops for martial arts, wrestling, mixed
`
`martial arts; tank tops; warm-up suits, sweatshirts, hooded sweatshirts, sweat
`
`pants; shirts; athletic uniforms; jerseys (in Class 25) (U.S. Registration No.
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`4129014).
`
`7. Zuffa’s above-referenced federal trademark registrations for ULTIMATE
`
`FIGHTING, THE ULTIMATE FIGHTING CHAMPIONSHIP and UFC ULTIMATE
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`102800-005/1299867
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`FIGHTING CHAMPIONSHIP& Design, corresponding to U.S. Reg. Nos. 3022840; 2960665;
`
`2925669; 1939277; 2576367; 2170463; and 3052007 are incontestable.
`
`8. Zuffa also owns applications for federal trademark registrations of:
`
`(a) ULTIMATE FIGHTING in International Class 41 for health club services,
`
`namely, providing fitness, personal training and exercise facilities; providing
`
`instruction in the fields of fitness, personal training, exercise and mixed
`
`martial arts; providing instructional programs and classes in fields of fitness,
`
`personal training, exercise and mixed martial arts; providing information in
`
`the fields of fitness, personal training, exercise and mixed martial arts via a
`
`global computer network; Providing instruction in the fields of nutrition,
`
`health and wellness (Serial No. 85/367120);
`
`(b) ULTIMATE FIGHTING in International Class 44 for providing information
`
`in the fields of nutrition, health and wellness (Serial No. 85/367123);
`
`(c) THE ULTIMATE FIGHTER in International Class 41 for entertainment in the
`
`nature of an on-going program in the field of sports and mixed martial arts
`
`broadcast over television, cable, satellite, Internet and audio and visual media;
`
`providing on-line newsletters in the fields of current events, news and
`
`information featuring sports, mixed martial arts and entertainment; providing
`
`electronic newsletters delivered by email in the fields of current events, news
`
`and information featuring sports, mixed martial arts and entertainment; and
`
`information services, namely, providing a web site featuring audio, video,
`
`photographic and prose presentations featuring sports, mixed martial arts and
`
`entertainment (Serial No. 85/575140);
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`(d) THE ULTIMATE FIGHTER BRASIL in International Class 41 for
`
`entertainment in the nature of an on-going program in the field of sports and
`
`mixed martial arts broadcast over television, cable, satellite, Internet and
`
`audio and visual media; providing on-line newsletters in the fields of current
`
`events, news and information featuring sports, mixed martial arts and
`
`entertainment; providing electronic newsletters delivered by email in the
`
`fields of current events, news and information featuring sports, mixed martial
`
`arts and entertainment; and information services, namely, providing a web site
`
`featuring audio, video, photographic and prose presentations featuring sports,
`
`mixed martial arts and entertainment (Serial No. 85/537061);
`
`(e) ULTIMATE FIGHTING CHAMPIONSHIP in International Class 28 for
`
`exercise and fitness equipment and accessories, namely, ankle and wrist
`
`weights; exercise bars; exercise benches; exercise doorway gym bars; rowing
`
`machines; stair-stepping machines; stationary cycles; abdominal boards; chest
`
`expanders; chest pulls; exercise platforms; trampolines; treadmills; weight
`
`cuffs; weights; manually-operated exercise equipment; stress relief balls for
`
`hand exercise; bar bells for athletic use; weight lifting belts; weight lifting
`
`benches and bench accessories; elliptical machines; jump ropes; fixed-gear
`
`stationary bikes; protective pads for cycling; stationary bicycles for indoor
`
`cycling; group exercise platforms; and hiking machines; martial arts
`
`equipment, namely, kicking shields, head guards, female chest protectors,
`
`groin cups, karate targets, body shields; sparring vests, ankle and hand wraps,
`
`jump ropes, mouth guards, knee pads, and elbow pads (Serial No. 77/727510);
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`(f)
`
` in International Class 16 for encyclopedias; publications,
`
`namely, books in the fields of mixed martial arts, sports, entertainment, and
`
`pop culture (Serial No. 85/351672); and
`
`(g)
`
` in International Class 28 for martial arts gloves; karate
`
`gloves; wrestling gloves; boxing gloves (Serial No. 85/531199).
`
`9. Zuffa has made substantial and continuous use of the ULTIMATE Formative Marks
`
`for several years and has expended considerable resources in the protection, enforcement,
`
`advertising and marketing of such marks.
`
`10. By virtue of this continuous and extensive use of the ULTIMATE Formative Marks,
`
`such marks have become invested with substantial goodwill and worldwide recognition and
`
`fame.
`
`11. Premier Championship Fighting LLC ("Registrant" or "Premier") was granted
`
`a registration on December 2, 2008 for PREMIER CHAMPIONSHIP FIGHTING in
`
`International Class 41 for "Entertainment in the nature of competitions in the field of
`
`mixed martial arts, ultimate fighting, cage fighting, and thai fighting" (emphasis added).
`
`12. Premier's use of "ultimate fighting" in the description of the services associated with
`
`the PREMIER CHAMPIONSHIP FIGHTING mark (as shown above) constitutes an improper
`
`use of Zuffa's ULTIMATE Formative Marks as a noun.
`
`13. Premier's registration of the PREMIER CHAMPIONSHIP FIGHTING mark for the
`
`current recitation of the goods and services that includes "ultimate fighting" is