UNITED STATES DEPARTMENT OF COMMERCE
`Patent and Trademark Office
`
`APPLICANT
`
`AC-[ION NO-
`
`MAILING DATE
`5"; 1:1‘
`3::
`
`F95!‘ ET9‘§?5 (5'?9l_
`
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`of
`
`o|iF'gE N — W
`
`ADDRESS:
`Assistant Commissioner
`fur Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`Ifno fees are enclosed, the an dress should include the
`words "Box Responses - No Fee."
`
`Please provide in all correspondence:
`. Filing Date, serial number, mark and
`Applicant's name.
`. Mailing date ofthis Officc action.
`. Examining Attorney's name and
`Law Office number.
`4 Your telephone number and ZIP code.
`
`A PROPER RESPONSE TO THIS OFFICE ACTION MUST BE RECEIVED WITHIN 6
`MONTHS FROM THE DATE OF THIS ACTION IN ORDER TO AVOID ABANDONMENT.
`For your convenience and to ensure proper handling ofyour response, a label has been enclosed.
`Please attach it to the upper right corner ofyour response. If the label is not enclosed, print or type
`the Trademark Law Ojlzce N0., Serial No., andMark in the upper right corner ofyour response.
`
`RE: Serial Number: 75/982336
`
`The assigned examining attorney has reviewed the referenced application and determined the
`following.
`
`The examining attorney has searched the Office records and has found no similar registered or
`pending mark which would bar registration under Trademark Act Section 2(d), 15 USC.
`§1052(d). TMEP §704.02.
`
`MARK IS MERELY DESCRIPTIVE
`The examining attorney refiises registration on the Principal Register because the proposed mark
`merely describes the goods. Trademark Act Section 2(e)(1), 15 USC. Section 1052(e)(_ 1); TMEP
`section 1209 et seq. A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 USC.
`1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of
`the relevant goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bea’ &
`Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986),‘ In re MetI’ath Inc., 223 USPQ
`88 (TTAB 1984); In re Bright-Crest, Ltd, 204 USPQ 591 (TTAB 1979); TIWEP section
`1209.01(b). The examining attorney must consider whether a mark is merely descriptive in
`relation to the identified goods, not in the abstract. In re Omaha National Corp.,_ 8,1,9lF:.2d 1117, 2
`
`

`
`A
`
`75/98233 6
`
`-2-
`
`USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp, 588 F.2d. 811, 200 USPQ 215 I
`(CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
`
`Here, the applicant seeks registration of the mark ULTIMATE FIGHTING for its “pre—recorded
`video cassettes and computer game programs, action skill games,
`live stage shows, and
`' presentation of live performances.” The examining attorney refers to the excerpted articles from
`the examining attorney's search in a computerized data base in which “ultimate fighting” as used to
`refer to a type of sports fighting, e.g., boxing and martial arts appeared in 380 storiesl.
`See
`attachments. The Trademark Trial and Appeal Board has held that materials obtained through
`computerized text searching are competent evidence to show the descriptive use of terms under
`Trademark Act Section 2(e)(1), 15 U.S.C. Section lO52(e)(1).
`In re National Data Corp, 222
`USPQ 515, 517 n.3 (TTAB 1984). When viewed as a whole,
`the proposed mark is merely
`descriptive of a feature or subject matter of the goods and services, especially the action skill
`games and the live stage shows and performances.
`
`Although the examining attorney has refused registration on the Principal Register, the applicant
`may amend the application to seek registration on the Supplemental Register. Trademark Act
`Section 23, 15 U.S.C. Section 1091, 37 C.F.R. Sections 2.47 and 2.75(a); TMEP sections 202.02(b)
`and 1115. Please note that the mark in an application under Trademark Act Section 1(b), 15
`U.S.C. Section 1051(b), is not eligible for registration on the Supplemental Register until an
`acceptable amendment to allege use under 37 C.F.R. Section 2.76 or statement of use under
`37 C.F.R. Section 2.88 has been timely filed.
`37 C.F.R. Section 2.4’7(c); TMEP section
`1105.01(a)(vii). When such an application is changed from the Principal Register to the
`Supplemental Register,
`the effective filing date of the application is the date of filing of the
`allegation ofuse. 37 C.F.R. Section 2.75(b); TMEP section 708.01.
`
`REQUIREMENT FOR INFORMATION
`In order to allow the appropriate examination of the application, the applicant must submit samples
`of advertisements or promotional materials for goods of the same type.
`If such materials are not
`available, the applicant must submit a photograph of similar goods and must describe the nature,
`purpose and channels of trade of the goods on which the applicant has asserted a bona fide intent to
`use the mark. 37 C.F.R. Section 2.6l(b); TMEP sections 1103.04 and 1105.02. Trademark Rule
`2.6l(b) states "The examiner may require the applicant to furnish such information and exhibits as
`may be reasonably necessary to the proper examination of the application". The Trademark Trial
`and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide
`information requested under this rule.
`In re Babies Beat Inc,
`13 USPQ2d 1729 (TTAB
`l990)(failure to submit patent information regarding configuration).
`
`Although the examining attorney has refused registration, the applicant may respond to the refusal
`to register by submitting evidence and arguments in support of registration.
`
`INFORMALITIES
`
`If the applicant chooses to respond to the refiisal to register, the applicant must also respond to the
`following informalities.
`
`games.
`
`1 See attached LEXIS/NEXIS® excerpts attached to Office Action in 76273529.
`
`

`
`s
`
`75/982336
`
`-3-
`
`Amendment to Recitation ofServices
`The recitation of services is unacceptable as indefinite because the applicant did not specify the
`subject matter or nature of the live performaces. The applicant may adopt the following recitation,
`if accurate:
`
`Class 41: Entertainment in the nature of live performances and stage shows featuring
`martial arts, boxing, and kick box fighting. TMEP §1402. l 1.
`
`Please note that, while an application may be amended to clarify or limit the identification,
`additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore,
`the applicant may not amend to include any services that are not within the scope of the services
`recited in the present identification.
`
`If the applicant has any questions or needs assistance in responding to this Office action, please
`telephone the assigned examining attorney.
`.
`
`iel Flower Dalier
`
`rademark Attorney Law Office l 16
`(t) (703) 306 7909
`(r) (703) 873-9702
`(responses) ecoml 16@.uspto. gov
`(email) lauriel.dalier@uspto. gov
`
`

`
`a
`
`*****'k*~k****1r*****'k'A'*k we073695***'k****'k*'k*irir*1l"k**'k
`
`.***'k
`
`SEND TO: DALIER, LAURIEL
`TRADEMARK LAW LIBRARY
`2101 CRYSTAL PLAZA ARC
`MAIL BOX 3104
`ARLINGTON, VIRGINIA 22202-4600
`
`

`
`MAIL-IT REQUESTED: OCTOBER 2, 2001
`
`10083K
`
`.CLIENT:
`LIBRARY: NEWS
`FILE: US
`
`YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
`“ULTIMATE FIGHTING" W/S (KARATE OR "MARTIAL ARTS" OR BOXING OR "KICK BOXING")
`
`NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
`LEVEL
`1...
`380
`
`LEVEL
`
`1 PRINTED
`
`THE SELECTED STORY NUMBERS:
`2,4-6,8,11,23—25,36
`
`DISPLAY FORMAT: 30 VAR KWIC
`
`SEND TO: DALIER, LAURIEL
`TRADEMARK LAW LIBRARY
`2101 CRYSTAL PLAZA ARC
`MAIL BOX 3104
`ARLINGTON VIRGINIA 22202-4600
`
`********‘k***iii-it-it-**‘A'*********s!*Iro3161*************1r****-k‘k*1r**'kaI‘********
`
`

`
`LEVEL 1
`
`- 2 OF 380 STORIES
`
`Copyright 2001 DR Partners d/b Las Vegas Review~Journa1
`Las Vegas Review-Journal
`(Las Vegas, NV)
`
`September 28, 2001 Friday FINAL EDITION
`
`SECTION: c;
`
`Pg. sc
`
`LENGTH: 585 words
`
`HEADLINE: ULTIMATE FIGHTING CHAMPIONSHIPS:
`
`'Bad dude‘ hits town
`
`BYLINE: Kevin Iole
`
`SUBJECT: Tito Ortiz, ultimate fighting championship,
`iole SPORTS (77%); BOXING (77%); HIGH SCHOOL SPORTS (67%);
`
`

`
`LEVEL 1
`
`- 4 OF 380 STORIES
`
`Copyright 2001 The Tulsa World
`Tulsa World
`
`September 26, 2001 Wednesday
`
`SECTION: BROKEN ARROW COMUNITY WORLD
`
`LENGTH: 754 words
`
`HEADLINE: Boxing at Mikey's helps keep kids off the streets
`
`BYLINE: David R. Million
`
`SOURCE: World Staff Writer
`
`BODY:
`
`anyone who has a good message for the kids.
`
`Burnett is an ultimate fighter with the Ultimate Fighting Championship group.
`
`He trains others in the sport that combines several forms of fighting. He has
`made several appearances on television.
`
`With the opening of an ultimate fighting school for adults and Mikey's Gym
`gggigg Club for kids, which teaches Qggigg only, Burnett is doing fewer ultimate
`fights, he said.
`
`Burnett, who opened the eastside gym seven years ago, grew up a mile from the
`gym, graduated from Nathan Hale High School and has been an amateur or
`professional fighter all his
`
`

`
`LEVEL 1
`
`- 5 OF 380 STORIES
`
`Copyright 2001 Knight Ridder/Tribune News Service
`Knight Ridder/Tribune News Service
`Detroit Free Press
`
`September 15, 2001, Saturday
`
`SECTION: LIFESTYLE
`
`KR—ACC-NO: K1722
`
`LENGTH: 1511 words
`
`HEADLINE: Grapplers hit the mat to stay fit:
`
`BYLINE: By Chris Walton
`
`BODY:
`
`grappling training to anyone who wants to get
`of people lose weight doing this."
`
`into shape. I've seen a lot
`
`Richard not only got back in fighting form but also discovered he had an
`aptitude for submission grappling and the martial arts. Last year, he won the
`Brazilian jujitsu title at the Gracie U.S. Nationals Open Jiu—Jitsu Tournament
`in Columbus, Ohio. He then won his first and only no—holds-barred fight at the
`former Fight Zone in Southgate.
`(No-holds—barred, or Ultimate Fighting, has
`since been banned in Michigan.)
`
`In March, Richard took home three gold medals in submission wrestling and
`jujitsu from the Arnold Classic, a mixed martial arts tournament
`in Ohio.
`
`"It's not about beating people
`
`

`
`LEVEL 1
`
`- 6 OF 380 STORIES
`
`Copyright 2001 The Press Enterprise Co.
`THE PRESS—ENTERPRISE (RIVERSIDE, CA.)
`
`September 13, 2001, Thursday
`
`SECTION: SPORTS;
`
`Pg. F05
`
`LENGTH: 688 words
`
`HEADLINE: Water polo talent in local tourney
`
`BYLINE: RICHARD CHAPLIN ; THE PRESS-ENTERPRISE
`
`BODY:
`
`in the pool. Most of the players have been
`teammates on various club teams for years, she said.
`
`The fighting Cardinal
`
`One coach who probably won't get any backtalk from his players
`is San Bernardino's Brian Warren.
`
`teaching "shoot fighting"
`Warren runs his own martial arts dojo,
`a style used in no-holds-barred fighting, such as ultimate
`fighting.
`
`"I had a little bit of a problem with respect at the beginning
`of the year," said Warren, a former Cardinal goalkeeper who went
`on to success at Chaffey College.
`"But what happened was our
`pool got shut down, so
`
`

`
`LEVEL 1 - 8 OF 380 STORIES
`
`Inc.
`Copyright 2001 The Commercial Appeal,
`The Commercial Appeal
`(Memphis, TN)
`
`August 30. 2001 Thursday Final Edition
`
`SECTION: NEIGHBORS; Pg. GC3
`
`LENGTH: 563 words
`
`HEADLINE: FIVE EARN 1ST,
`
`2ND PLACES IN NATIONAL JIU-JITSU
`
`BYLINE: Bill Sorrell Special to The Commercial Appeal
`
`44, of Germantown.
`
`involved in jiu-jitsu about
`Patel, a senior at White Station High School, got
`a year ago because of the challenge of full contact, he said. He has placed
`first in two other tournaments.
`
`Memphis Karate Institute is sponsoring Fight Night 2 on Sept. 21 at Denim &
`Diamonds, 5353 Mendenhall Mall. Fighters in mixed martial arts and from
`Ultimate Fighting—style championship and the Memphis Gracie Jiu~Jitsu Training
`Association will participate. Admission is $10, ringside $15.
`
`For information on jiu—jitsu training or other martial arts, call Chilcutt at
`388-6338, or Mullen at
`
`

`
`LEVEL 1 — 11 OF 380 STORIES
`
`Copyright 2001 Reed Elsevier Inc.
`
`Daily Variety
`
`August 10, 2001
`
`SECTION: mews; Pg.
`
`5
`
`LENGTH: 380 words
`
`HEADLINE: LEVIN'S NEW BATTLE **HL:Tech vet prepares to focus on mixed martial
`arts
`
`BYLINE: MARC GRASER
`
`BODY:
`
`Interlight veep Jeremy Lappen and former World Championship Wrestling
`topper Eric Bischoff.
`
`The Los Angeles company reps talent in mixed martial arts, a sport second
`only to soccer in popularity around the world. Similar to ultimate fighting,
`sport combines all the skill sets of the various martial arts disciplines --—
`wrestling, boxing,
`judo and karate --— into one event.
`
`the
`
`

`
`LEVEL 1 - 23 OF 380 STORIES
`
`Copyright 2001 Seattle Post—Intelligencer
`THE SEATTLE POST—INTELLIGENCER
`
`June 28, 2001, Thursday
`
`, FINAL
`
`SECTION: SPORTS,
`
`Pg. E9
`
`LENGTH: 242 words
`
`HEADLINE: KICKBOXER SMITH IN K-1 WORLD SEMISE
`
`BODY:
`
`K-1 incorporates all disciplines of martial arts in an ultimate fighting sport.
`
`Smith, a West Seattle High School graduate who operates his own kickboxing
`school
`in Bellevue, qualified for the semifinals by winning the North American
`K-1 Championship on May 5, also in Las Vegas.
`
`ISKA and WKC world kickboxing titles,
`Smith's title credentials include WKA,
`Battlecades Extreme Fighting heavyweight champion, UPC Ultimate Fighting world
`champion and World Martial Arts Council champion.
`In 66 career fights, he is
`57-7-2
`
`For ticket information, call 1-888-488-7111.
`
`The Seattle Thunderbirds selected a pair of Russian players,
`Andre Mukhin with the 19th pick and
`'
`
`left winger
`
`

`
`LEVEL 1
`
`- 24 OF 380 STORIES
`
`Copyright 2001 Charleston Newspapers
`The Charleston Gazette
`
`June 02, 200i, Saturday
`
`SECTION: News; Pg. P3A
`
`LENGTH: 518 words
`
`HEADLINE: Officials hope regulations end extreme fighting
`
`BYLINE: Phil Kabler
`
`BODY:
`
`if it meets the criteria of this definition, it's
`thing is called,
`prohibited," said Dale Steager, counsel for the Department of Tax and Revenue,
`which oversees the Athletic Commission.
`
`Modesitt said that had been a problem in Wheeling, where promoters referred
`to the events alternately as extreme or ultimate fighting, or as mixed martial
`arts.
`
`Commissioner Anthony Torchio of Weirton said it is imperative that the
`commission strictly enforce state boxing regulations.
`
`"What's happening is the word is getting out that West Virginia is easy," he
`said.
`"You can go through the rules one by one, and somebody is going to
`
`

`
`LEVEL 1 - 25 OF 380 STORIES
`
`Copyright 2001 The Press Enterprise Co.
`THE PRESS-ENTERPRISE (RIVERSIDE, CA.)
`
`May 29, 2001, Tuesday
`
`SECTION: LOCAL;
`
`Pg. B02
`
`LENGTH: 187 words
`
`HEADLINE: SPORTS AND RECREATION
`
`BYLINE: THE PRESS-ENTERPRISE
`
`BODY:
`
`Ultimate fighting event
`
`_
`The extreme sport of ultimate fighting, a no—ru1es,
`anything-goes mixed martial arts event will be held at 7 p.m.
`Saturday at Cahuilla Creek Casino in Anza.
`
`Tickets or information is available from Cobra Productions (909)
`695-3802.
`
`

`
`LEVEL 1
`
`- 36 OF 380 STORIES
`
`Copyright 2001 Charleston Newspapers
`Charleston Daily Mail
`
`April 09, 2001, Monday
`
`SECTION: News; Pg. P1D
`
`LENGTH: 50 words
`
`HEADLINE: It's an ultimate thrill for him to combine interests web skills help
`take area native to Middle East
`
`BYLINE: Bob Wojcieszak
`
`BODY:
`
`While West Virginia's athletic commission still won't sanction ultimate
`fighting matches,
`fans of the mixed martial art can View matches through cable
`television and increasingly on the Internet. Chances are that if they watch a
`Web cast, Johnny Walls is the person behind the digital camera.
`
`

`
`*3**; _ . _ . _ . _ _ _ ‘. _ _ _ _ _ _ _ _ _ _ _ _ . _ _ . _ . _ _ . . _ _ _ _ _ . _ _ _ _ _ _ _ _ . _ . _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ . _ _ --**w*
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`*
`EEEEE
`DDD
`
`lOO83K
`
`JOB
`
`E E E
`
`EE
`
`SEND TO: DALIER, LAURIEL
`TRADEMARK LAW LIBRARY
`2101 CRYSTAL PLAZA ARC
`MAIL BOX 3104
`ARLINGTON, VIRGINIA 22202-4600