UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`#4 77.-23’9Jo?.z,
`
`Mailed: August 14, 2012
`
`Cancellation No. 92056020
`Registration No. 3539442
`
`Zuffa, LLC
`
`Premier Championship Fighting LLC
`
`MR JEFFREY SMITH
`PREMIER CHAMPIONSHIP FIGHTING LLC
`3535 BOODEL CIRCLE,
`ELIZABETH, CO 80107-8221
`
`MICHAEL N FEDER
`GORDON & SILVER LTD
`3960 HOWARD HUGHES PARKWAY 9TH FLOOR
`LAS VEGAS, NV 89169
`
`Rochelle Adams, Paralegal Specialist:
`
`An electronic
`(defendant) by the petitioner (plaintiff).
`registrant
`version of the petition for cancellation 's viewable in the electronic
`file for this proceeding via the Board's TTABVUE system:
`http://tta bvue.usQto.gov/ttabvue/.
`
`Practice, set forth in Title 37, part 2, of the Code of Federal
`Regulations ("Trademark Rules").
`These rules may be viewed at the
`USPTO's trademarks page:
`htt
`://www.us to. ov/trademarks/index.'s .
`The Board's
`main webpage (httg://www.usgt0.gov/trademarkgggrocess/appea!/index.isp) includes
`information on amendments to the Trademark Rules applicable to Board
`proceedings, on Alternative Dispute Resolution (ADR), Frequently Asked
`Questions about Board proceedings, and a web link to the Board's manual
`of procedure (the TBMP).
`
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`if by voluntary investigation or other means the plaintiff discovers
`information indicating that a different party may have an interest in
`The
`defending the case, such information must be provided to the Board.
`Board will then effect service, by publication in the Official Gazette
`if necessary.
`See Trademark Rule 2.118.
`In circumstances involving
`ineffective service or return of defendant's copy of the Board's
`institution order,
`the Board may issue an order noting the proper
`defendant and address to be used for serving that party.
`
`Defendant's ANSWER IS DUE FORTY DAYS after the mailing date of this
`order.
`(See Patent and Trademark Rule 1.7 for expiration of this or any
`deadline falling on a Saturday, Sunday or federal holiday.)
`other
`deadlines the parties must docket or calendar are either set forth below
`(if you are reading a mailed paper copy of this order) or are included
`in the electronic copy of this institution order viewable in the Board's
`
`TTABVUE system at the following web address:
`
`hflpflfimbvueuqyogovhmbvud.
`
`include
`Defendant's answer and any other filing made by any party must
`the
`proof of service.
`See Trademark Rule 2.119.
`If they agree to,
`parties may utilize electronic means, e.g., e-mail or fax, during the
`proceeding for forwarding of service copies.
`See Trademark Rule
`2.119(b> (6).
`
`The parties also are referred in particular to Trademark Rule 2.126,
`which pertains to the form of submissions.
`Paper submissions,
`including
`but not limited to exhibits and transcripts of depositions, not filed in
`accordance with Trademark Rule 2.126 may not be given consideration or
`entered into the case file.
`
`Time to Answer
`
`Deadline for Discovery Conference
`Discovery Opens
`Initial Disclosures Due
`
`Expert Disclosures Due
`
`Discovery Closes
`
`Plaintiff's Pretrial Disclosures
`
`Plaintiff's 30-day Trial Period Ends
`
`Defendant's Pretrial Disclosures
`
`Defendant's 30-day Trial Period Ends
`
`Plaintiff's Rebuttal Disclosures
`
`Plaintiff's l5~day Rebuttal Period Ends
`
`9/23/2012
`
`10/23/2012
`10/23/2012
`11/22/2012
`
`3/22/2013
`
`4/21/2013
`
`6/5/2013
`
`7/20/2013
`
`8/4/2013
`
`9/18/2013
`
`10/3/2013
`
`11/2/2013
`
`the parties are
`As noted in the schedule of dates for this case,
`required to have a conference to discuss:
`(1)
`the nature of and basis
`for their respective claims and defenses,
`(2)
`the possibility of
`settling the case or at least narrowing the scope of claims or defenses,
`and (3) arrangements relating to disclosures, discovery and introduction
`of evidence at trial, should the parties not agree to settle the case.
`See Trademark Rule 2.120(a)(2). Discussion of the first two of these
`three subjects should include a discussion of whether the parties wish
`to seek mediation, arbitration or some other means for resolving their
`dispute. Discussion of the third subject should include a discussion of
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`

`
`whether the Board's Accelerated Case Resolution (ACR) process may be a
`more efficient and economical means of trying the involved claims and
`defenses.
`Information on the ACR process is available at the Board's
`main webpage. Finally,
`if the parties choose to proceed with the
`disclosure, discovery and trial procedures that govern this case and
`which are set out
`in the Trademark Rules and Federal Rules of Civil
`Procedure,
`then they must discuss whether to alter or amend any such
`procedures, and whether to alter or amend the Standard Protective Order
`(further discussed below). Discussion of alterations or amendments of
`otherwise prescribed procedures can include discussion of limitations on
`disclosures or discovery, willingness to enter into stipulations of
`fact, and willingness to enter into stipulations regarding more
`efficient options for introducing at trial information or material
`obtained through disclosures or discovery.
`
`The parties are required to conference in person, by telephone, or by
`any other means on which they may agree.
`A Board interlocutory attorney
`or administrative trademark judge will participate in the conference,
`upon request of any party, provided that such participation is requested
`no later than ten (10) days prior to the deadline for the conference.
`See Trademark Rule 2.120(a)(2).
`The request for Board participation
`must be made through the Electronic System for Trademark Trials and
`Appeals
`(ESTTA) or by telephone call to the interlocutory attorney
`assigned to the case, whose name can be found by referencing the TTABVUE
`record for this case at hflpflflmbvuauqfiogovflwbvuw.
`The parties should
`Contact
`the assigned interlocutory attorney or file a request for Board
`participation through ESTTA only after the parties have agreed on
`possible dates and times for their conference.
`Subsequent participation
`of a Board attorney or judge in the conference will be by telephone and
`the parties shall place the call at the agreed date and time,
`in the
`absence of other arrangements made with the assigned interlocutory
`attorney.
`
`The Board's Standard Protective Order is applicable to this case, but
`the parties may agree to supplement that standard order or substitute a
`protective agreement of their choosing, subject to approval by the
`Board.
`The standard order is available for viewing at:
`
`http://www.uspto.gov/trademarks/process/appeal/guidelines/stndagmntisg. Any party
`without access to the web may request a hard copy of the standard order
`from the Board.
`The standard order does not automatically protect a
`party's confidential
`information and its provisions must be utilized as
`needed by the parties.
`See Trademark Rule 2.ll6(g).
`
`the discovery phase of the Board proceeding is
`Information about
`available in chapter 400 of the TBMP.
`By virtue of amendments to the
`Trademark Rules effective November 1, 2007,
`the initial disclosures and
`expert disclosures scheduled during the discovery phase are required
`only in cases commenced on or after that date.
`The TBMP has not yet
`been amended to include information on these disclosures and the parties
`are referred to the August 1, 2007 Notice of Final Rulemaking (72 Fed.
`Reg. 42242) posted on the Board's webpage.
`The deadlines for pretrial
`disclosures included in the trial phase of the schedule for this case
`also resulted from the referenced amendments to the Trademark Rules, and
`also are discussed in the Notice of Final Rulemaking.
`
`The parties must note that the Board allows them to utilize telephone
`conferences to discuss or resolve a wide range of interlocutory matters
`that may arise during this case.
`In addition,
`the assigned
`interlocutory attorney has discretion to require the parties to
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`

`
`participate in a telephone conference to resolve matters of concern to
`the Board.
`See TBMP § 502.06(a)
`(2d ed.
`rev. 2004).
`
`The TBMP includes information on the introduction of evidence during the
`trial phase of the case,
`including by notice of reliance and by taking
`of testimony from witnesses.
`See TBMP §§ 703 and 704. Any notice of
`reliance must be filed during the filing party's assigned testimony
`period, with a copy served on all other parties. Any testimony of a
`witness must be both noticed and taken during the party's testimony
`period.
`A party that has taken testimony must serve on any adverse
`party a copy of the transcript of such testimony,
`together with copies
`of any exhibits introduced during the testimony, within thirty (30) days
`after the completion of the testimony deposition.
`See Trademark Rule
`2.125.
`
`Briefs shall be filed in accordance with Trademark Rules 2.128(a) and
`(b). An oral hearing after briefing is not required but will be
`scheduled upon request of any party, as provided by Trademark Rule
`2.129.
`
`If the parties to this proceeding are (or during the pendency of this
`proceeding become) parties in another Board proceeding or a civil action
`involving related marks or other issues of law or fact which overlap
`with this case,
`they shall notify the Board immediately,
`so that the
`Board can consider whether consolidation or suspension of proceedings is
`appropriate.
`
`For faster handling of all papers the parties need to file
`ESTTA NOTE:
`with the Board,
`the Board strongly encourages use of electronic filing
`through the Electronic System for Trademark Trials and Appeals (ESTTA).
`Various electronic filing forms,
`some of which may be used as is, and
`others which may require attachments, are available at hflp#wsflaJmQhmgow