Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA489502
`ESTTA Tracking number:
`08/16/2012
`
`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 W. Sahara Ave.
`Las Vegas, NV 89102
`UNITED STATES
`
`Citizenship
`
`NV
`
`Attorney
`information
`
`Michael N. Feder & Jennifer Ko Craft
`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
`
`3542706
`Puyallup Tribe of Indians
`3009 East Portland Avenue
`Tacoma, WA 98404
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`12/09/2008
`
`Class 041. First Use: 1997/04/19 First Use In Commerce: 1997/04/19
`Cancelled goods and services in the class: Providing live theatrical performances and sporting
`events, namely, 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)
`
`Related
`Proceedings
`
`Petitioner is also filing forthwith Petitions to Cancel registrant's Registration Nos.
`3542705 and 3461228.
`
`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
`
`85367120
`
`NONE
`
`Word Mark
`Design Mark
`
`ULTIMATE FIGHTING
`
`Application Date
`
`07/08/2011
`
`Foreign Priority
`Date
`
`NONE
`
`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
`
`85367123
`
`NONE
`
`Application Date
`
`07/08/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`ULTIMATE FIGHTING
`
`Description of
`Mark
`Goods/Services
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 044. First use:
`Providing information in the fields of nutrition, health and wellness
`
`77753251
`
`Application Date
`
`06/05/2009
`
`NONE
`
`Foreign Priority
`Date
`ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use:
`Computer software and computer software downloadable from a computer
`network for use in the provision of entertainment services, namely, on-line
`computer games featuring poker, casino gaming, card, and roulette games, on-
`line card games, on-line roulette games and on-line casino games;
`downloadable electronic publications in the nature of magazines concerning on-
`line poker, on-line card games, on-line roulette games and on-line casino
`games; communication servers; computer hardware; educational software
`featuring instruction for playing card games; computer hardware and computer
`software for playing poker games; computer game and video game cassettes,
`cartridges, discs and software programs, all featuring poker, casino games, card
`games, and roulette games; interactive computer systems consisting of software
`and controllers for playing on-line card games, on-line roulette games and on-
`line casino games; interactive electronic apparatus, namely, controllers for use
`over a computer network in relation to on-demand poker, casino gaming, card
`games, and roulette games; electrical and scientific apparatus, namely,
`prerecorded video discs and pre-recorded digital versatile discs featuring video
`content or television shows featuring poker games, information regarding the
`game of poker and instructional information regarding card games and the game
`
`

`
`of poker; video game discs featuring poker, casino games, card games and
`roulette games; decorative refrigerator magnets
`Class 028. First use:
`Games, namely, card games, board games, roulette wheels, parlor game
`versions of casino games; coin-operated games featuring poker, card games,
`casino games and roulette games; playing cards; card games; dice and dice
`games; roulette wheels; parlor game versions of lottery games, bingo game
`playing equipment, keno cards, slot machines; gaming equipment, namely,
`casino chips; darts, dart boards, electronic dart games and dart boards; articles
`and apparatus for playing pool and snooker, namely, cues and tables; gaming
`equipment consisting of playing cards, poker chips, table felt, gaming tables,
`octagon-shaped pub tables, automatic card shufflers, blind and dealer buttons,
`card makers and rule books sold therewith; lottery cards and tickets; disposable
`tickets for playing games of chance; equipment for playing card games, namely,
`cards and chips; game tables and table covers for playing games, namely, table
`covers used to adapt existing tables to tables for playing poker
`Class 038. First use:
`Electronic transmission of text, graphics, and data; communication services,
`namely, providing online chat rooms for real-time interaction between online
`computer users concerning online poker, card games, casino gaming and
`games of chance; communication services, namely, providing access to an
`online computer database for real-time tracking of and searching for network
`use and online computer users and transferring users to the online location(s) of
`another user or other users or other online locations; communication services,
`namely, providing online chat rooms for real-time interaction between online
`computer users for arranging and playing online poker, card games, casino
`gaming and games of chance; instant messaging services
`Class 041. First use:
`Entertainment services, namely, online wagering transmitted through wireless
`communication devices; betting and wagering services provided via a global
`computer information network; providing information in the field of on-line card
`games, on-line roulette games and on-line casino games via a computer
`network; lottery services; entertainment services, namely, conducting
`Rochambeau games and tournaments; Entertainment services, namely,
`organizing, conducting, producing and exhibiting poker tournament events
`rendered live and through the media of television and the Internet; providing
`information in the field of poker related tips and strategy; providing news and
`information in the field of tournament rankings, poker player and celebrity news,
`poker player profiles, poker tournament schedules, online card games and
`casino gaming, online computer poker games, poker community gossip, poker
`related links, and poker news and information via a global computer network;
`entertainment and educational services, namely, an on-going television segment
`featuring poker instructions, strategy and tips, and providing poker instructions,
`strategy and tips via a global computer network; production of television
`programs featuring poker tournaments; entertainment services, namely,
`gambling via a global computer network, cable satellite, broadcasting, and
`telecommunication devices; electronic publications in the nature of magazines
`provided by electronic mail concerning on-line card games, on-line roulette
`games and on-line casino games; Entertainment services, namely, online
`wagering transmitted through wireless communication devices; betting and
`wagering services provided via a global computer information networks
`
`U.S. Application
`No.
`Registration Date
`
`85575140
`
`NONE
`
`Word Mark
`
`THE ULTIMATE FIGHTER
`
`Application Date
`
`03/20/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`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
`
`85537061
`
`Application Date
`
`02/08/2012
`
`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
`
`77727510
`
`Application Date
`
`05/01/2009
`
`

`
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`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
`
`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
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4190778
`
`Application Date
`
`02/01/2012
`
`08/14/2012
`
`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 )
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`85351672#TMSN.jpeg ( 1 page )( bytes )
`85531199#TMSN.jpeg ( 1 page )( bytes )
`Petition to Cancel EMERALD QUEEN CASINO (41).pdf ( 12 pages )(60319
`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
`
`/Michael N. Feder/
`
`

`
`Name
`Date
`
`Michael N. Feder
`08/16/2012
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Mark
`
`
`
`
`Reg. No.
`
`Date Registered
`
`
`
`
`
`
`
`EMERALD QUEEN
`CASINO
`
`3542706
`
`December 9, 2008
`
`
`
`Petitioner,
`
`v.
`
`
`
`Respondent.
`
`
`
`Zuffa, LLC, a Nevada limited liability
`company,
`
`
`
`
`
`
`
`
`
`
`
`
`Puyallup Tribe of Indians,
`
`PETITION TO CANCEL
`
`Petitioner, Zuffa, LLC ("Zuffa"), believes that it will be damaged by Registration No.
`
`3542706 for the mark EMERALD QUEEN CASINO in International Class 41 for the 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 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
`
`Puyallup Tribe of Indians, 3009 East Portland Avenue, Tacoma, WA 98404.
`
`3. The grounds for cancellation are as follows:
`
`(a)
`
`(b)
`
`(c)
`
`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;
`
`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
`
`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.
`
`1299730_2.doc
`
`

`
`4. Zuffa owns the ULTIMATE FIGHTING CHAMPIONSHIP brand and is one of the
`
`world’s leading promoters of mixed martial arts ("MMA") competitions and events.
`
`5. 5. Zuffa offers a wide variety of goods and services under Zuffa's ULTIMATE
`
`FIGHTING, THE ULTIMATE FIGHTING CHAMPIONSHIP, ULTIMATE FIGHTING
`
`CHAMPIONSHIP, UFC ULTIMATE FIGHTING CHAMPIONSHIP, THE ULTIMATE
`
`FIGHTER, ULTIMATE FIGHT NIGHT, and other ULTIMATE-formative marks (collectively,
`
`the "ULTIMATE Formative Marks"), including, but not limited to, sports and entertainment
`
`services (such as MMA competitions, events, promotions and television programs), CDs, DVDs,
`
`computer programs and other pre-recorded media featuring sports and entertainment content,
`
`publications and printed materials, apparel and apparel accessories, souvenir items, sports,
`
`exercise and fitness equipment and accessories, energy drinks, nutritional supplements and
`
`drinks, vitamins and credit cards.
`
`6. Zuffa owns numerous federal trademark registrations for the ULTIMATE Formative
`
`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 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 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 (U.S. Reg. No. 2925669);
`
`1299730_2.doc
`
`

`
`(c) ULTIMATE FIGHTING in International Class 9 for pre-recorded video
`
`cassettes featuring sports events and mixed martial arts; computer game
`
`programs (U.S. Reg. No. 3226285);
`
`(d) ULTIMATE FIGHTING in International Class 16 for souvenir event
`
`programs featuring sports events and mixed martial arts; posters (U.S.
`
`Reg. No. 3022840);
`
`(e) ULTIMATE FIGHTING in Class 16 for trading cards; decals and
`
`windshield decal strips (U.S. Reg. No. 2960665);
`
`(f) THE ULTIMATE FIGHTING CHAMPIONSHIP in International 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
`
`(U.S. Reg. No. 1939277);
`
`(g) ULTIMATE FIGHTING CHAMPIONSHIP in International Class 41
`
`for providing health club services, namely, providing fitness and
`
`exercise facilities (U.S. Reg. No. 4099296);
`
`(h) THE ULTIMATE FIGHTER in International Class 41 for entertainment
`
`in the nature of an on-going television program in the field of sports and
`
`mixed martial arts (U.S. Reg. No. 3038488);
`
`(i) ULTIMATE FIGHT NIGHT
`
`in
`
`International Class 41
`
`for
`
`entertainment, namely live stage shows and performances featuring
`
`sports and mixed martial arts; entertainment in the nature of an on-going
`
`1299730_2.doc
`
`

`
`television program in the field of sports and mixed martial arts (U.S.
`
`Reg. No. 3140717);
`
`(j)
`
`in International Class 41 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 (U.S. Reg. No. 3052007);
`
`(k) ULTIMATE FIGHTING CHAMPIONSHIP in International 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 martial arts,
`
`namely, kick pads, target pads, thai pads and shin pads; karate target
`
`pads (U.S. Reg. No. 3792144);
`
`1299730_2.doc
`
`

`
`(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 prerecorded compact disks; audio tapes featuring music,
`
`sports and 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. 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
`
`1299730_2.doc
`
`

`
`(p) THE ULTIMATE FIGHTER in International Classes 9 and 25 for
`
`motion picture films featuring sports events, mixed martial arts and
`
`profiles of athletes (in Class 9); and shorts and tops for martial arts,
`
`wr