IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`~~—.-
`
`TTAB
`
`:
`Applicant
`:
`Mark
`,
`:
`Serial No.
`:
`Filing Date
`Examining Attorney :
`Officc Action
`:
`
`Zuffa, LLC
`ULTIMATE FIGHTING
`75/982,336
`I
`January 7, 2002
`Lauriel Dalier, Law Office 116
`June 30, 2004
`
`Commissioner for Trademarks
`
`BOX TTAB/FEE
`P.O. Box 1451
`Alexandria, VA 223 13 -1451
`
`S I R :
`
`Illlllllllllflllllllllllllllllilllmlllllllllllll
`
`12_14_2o04
`U3, paw, TMOWM Ma” Humor #11
`A
`
`NOTICE OF APPEAL
`
`Pursuant to 37 CFR §2.141, Applicant hereby appeals to the Trademark Trial and
`Appeal Board from the decision of the Trademark Examining Attorney refusing
`registration in Class 41.
`
`Applicant’s Appeal Brief, together with a copy of the Request to Divide (37
`C.F.R,. §2.87) the goods in Class 9 for which no there is no final requirement or refusal,
`"are being submitted with this Notice of Appeal. The original Request to Divide is being
`concurrently filed with the ITU Unit.
`
`The appeal fee of $100 is submitted herewith.
`
`Respectfully submitted
`
`MILBANI , T
`
`E
`
`.
`
`‘
`
`LEY/2/MCCLOY LLP
`
`Dated: V /513453- O4-/i
`
`at 1212312004» .ZE!.~IFT01i —.759a2éI36“
`' 01 FB:6403 ‘
`.
`a
`100.00 DP
`
`Par er H. Bagley
`Attorney for Applicant
`One Chase Manhattan Plaza
`New York) NY 10005
`(212) 530—5000
`
`Date ofDeposit
`Express .\/[ail No.:
`
`er)/i béyr
`EV 251 629 665 US
`
`. 147 Q’ 250
`
`I hereby certify that this correspondence is being deposited with
`the United States Postal Service with sufficient postage as Express
`Mail Post Office to Addressee Service under 37 C.F.R. Sec. 1.10
`on the date indicated above and is addressed to the Commissioner
`for Trademarks, BOX TTAB/FEE” P.(). Box 1451, Alexandria,
`VA 22313-1451
`
`Typed or print
`’
`Signature 0 per
`
`Janis Nici
`1
`e,f
`41244255
`1 mai ing papers
`
`NY2:#460X462
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`~~—.-
`
`TTAB
`
`:
`Applicant
`:
`Mark
`,
`:
`Serial No.
`:
`Filing Date
`Examining Attorney :
`Officc Action
`:
`
`Zuffa, LLC
`ULTIMATE FIGHTING
`75/982,336
`I
`January 7, 2002
`Lauriel Dalier, Law Office 116
`June 30, 2004
`
`Commissioner for Trademarks
`
`BOX TTAB/FEE
`P.O. Box 1451
`Alexandria, VA 223 13 -1451
`
`S I R :
`
`Illlllllllllflllllllllllllllllilllmlllllllllllll
`
`12_14_2o04
`U3, paw, TMOWM Ma” Humor #11
`A
`
`NOTICE OF APPEAL
`
`Pursuant to 37 CFR §2.141, Applicant hereby appeals to the Trademark Trial and
`Appeal Board from the decision of the Trademark Examining Attorney refusing
`registration in Class 41.
`
`Applicant’s Appeal Brief, together with a copy of the Request to Divide (37
`C.F.R,. §2.87) the goods in Class 9 for which no there is no final requirement or refusal,
`"are being submitted with this Notice of Appeal. The original Request to Divide is being
`concurrently filed with the ITU Unit.
`
`The appeal fee of $100 is submitted herewith.
`
`Respectfully submitted
`
`MILBANI , T
`
`E
`
`.
`
`‘
`
`LEY/2/MCCLOY LLP
`
`Dated: V /513453- O4-/i
`
`at 1212312004» .ZE!.~IFT01i —.759a2éI36“
`' 01 FB:6403 ‘
`.
`a
`100.00 DP
`
`Par er H. Bagley
`Attorney for Applicant
`One Chase Manhattan Plaza
`New York) NY 10005
`(212) 530—5000
`
`Date ofDeposit
`Express .\/[ail No.:
`
`er)/i béyr
`EV 251 629 665 US
`
`. 147 Q’ 250
`
`I hereby certify that this correspondence is being deposited with
`the United States Postal Service with sufficient postage as Express
`Mail Post Office to Addressee Service under 37 C.F.R. Sec. 1.10
`on the date indicated above and is addressed to the Commissioner
`for Trademarks, BOX TTAB/FEE” P.(). Box 1451, Alexandria,
`VA 22313-1451
`
`Typed or print
`’
`Signature 0 per
`
`Janis Nici
`1
`e,f
`41244255
`1 mai ing papers
`
`NY2:#460X462
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Applicant:
`Mark:
`
`Zuffa, LLC
`ULTIMATE FIGHTING
`
`75/982,336
`Application No.:
`January 7, 2002
`Filing Date:
`Examining Attorney: Laurie1Da1ier, Law Office 116
`Office Action
`
`(FINAL):
`
`June 30, 2004
`
`APPLICANT’S APPEAL BRIEF
`
`By: MILBANK, TWEED, HADLEY &
`MCCLOY LLP
`‘
`
`Attorneys for Applicant, Zuffa, LLC
`Parker H. Bagley
`One Chase Manhattan Plaza
`
`New York, NY 10005-1413
`
`Date ofDeposit Defléffl bgfl’
`Express Mail No.1
`EV 251 629 665 US
`
`i
`
`l
`
`:9 00 L7!
`
`I hereby certify that this correspondence is being deposited with
`the United States Postal Service with sufficient postage as Express
`Mail Post Office to Addrcssee Service under 37 C.F.R. Sec. 1.10
`on the date indicated above and is addressed to the Commissioner
`for Trademarks, BOX TTAB/FEE PO. Box 1451, Alexandria,
`VA 22313-1451
`V:
`
`Typed or print
`
`Janis Nici
`ame of ersofl
`
`-
`"ling papers
`
`Signatureo
`
`erso mailing papers
`
`NY2:#4619565
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant
`
`Marl<
`
`Class
`
`I
`
`Appln. No.
`
`Date of Deposit
`
`:
`
`:
`
`:
`
`:
`
`:
`
`Zuffa, LLC
`
`ULTIMATE FIGHTING
`
`9, 41
`
`75/982,336
`
`December 14, 2004
`
`CERTIFICATE» OF MAILING UNDER 37 C.F.R. §1.8
`
`I hereby certify that the following attached papers
`
`1.
`2.
`
`Request to Divide Application Pursuant to 37 CFR §2.87
`Check in the amount of $100
`
`are being deposited with the United States Postal Service as First Class Mail on the date
`. indicated above in an envelope addressed to the Commissioner for Trademarks, BOX: ITU/FEE,
`P.O. Box 1451, Alexandria, Virginia 22202-3514.
`
`Janis Nici
`
`Typed Name
`.
`"WU
`~
`. O2 >M.©\/
`Signat
`
`e
`
`_December 14, 2004
`Date
`
`NY2:#4620749
`
`
`
`36784-05700
`
`75/982335
`TRADEMARK
`
`4
`
`:
`Applicant
`’:
`Mark
`:
`Serial No.
`2:
`Filing Date
`Examining Attorney :
`Office Acton
`:
`
`Zuffa, LLC
`ULTIMATE FIGHTING
`75/982,336‘
`January 7, 2002
`Lauriel Dalier, Law Office 116
`June 30, 2004
`
`RE! QUEST TO DIVIDE APPLICATION
`PURSUANT TO 37 C.F.R. §2.87
`
`Commissioner for Trademarks
`BOX ITU/FEE
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`SIR:
`
`Applicant hereby requests that this application be divided into two applications as
`follows:
`
`1. Please retain "entertainment, namely live stage shows and performances featuring
`sports and mixed martial arts" in Int. Class 41 in the original parent application. A Notice of
`Appeal and Applicant’s Appeal Brief against the refusal to register in Int. Class 41 are being '
`concurrently filed with the TTAB.
`
`. 2. Please make the following goods in Int. Class 9 the subject of a new child application:
`“pre—rec0rded video cassettes featuring sports events and mixed martial arts; computer. game
`programs.”
`
`A check in the amount of $100 is being submitted with this Request to Divide.
`
`Any additional fees should be charged to the undersigned attorneys’ Deposit Account No.
`13-3250.
`*
`
`Respectfully submitted,
`WEE
`
`ADIEY & MCCLOY LLP
`1‘
`
`Parker H. Bagley
`Attorney for Applicant
`One Chase Manhattan Plaza
`
`New York, NY 10005-1413
`(212) 5301-5000
`
`PHB :JN
`enclosures
`
`NY2 #4608583
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`H. Marvin Ginn Corp. V. International Ass’n of Fire Chiefs, Inc.,
`782 F.2d 987, 228 U.S.P.Q. 528 (Fed. Cir. 1986) .................................................... .. 13
`
`In Miss Universe Inc. v. Little Miss U.S.A. Inc.,
`212 U.S.P.Q. 425 (N.D. Ga. 1981) ........................................................................... .. 17
`
`.
`In re Gourmet Bakers Inc.,
`173 U.S.P.Q. 565 (TTAB 1972) ............................................................................... .. 16
`
`In re Merrill Lynch, Pierce, Fenner & Smith Inc.,
`828 F.2d 1567, 4 U.S.P_.Q.2d 1141 (Fed. Cir. 1987) ................................................ .. 14
`
`In re Minnetonka Inc.,
`3 U.S.P.Q. 2d 1711 (TTAB 1987) ............................................................................ ..11
`
`In re Waverly Inc,
`27 U.S.P.Q. 2d 1620 ................................................................................................. .. 16
`
`Miss Universe Inc. v. Little Miss U.S.A. Inc.,
`212 U.S.P.Q. 425 (N.D. Ga. 1981) ........................................................................... .. 15
`
`Safeway Stores, Inc. v. Safeway Discount Drugs, Inc.,
`675 F.2d 1160, 216 U.S.P.Q. 599 (11th Cir. 1982) .................................................. .. 15
`
`Zimmerman V. Nat’1 Assoc. of Realtors,
`70 U.S.P.Q. 2d 1425 (TTAB 2004) .............................................................. .. 11, 14, 19
`STATUTES
`
`37 CFR § 2.76 ................................................................................................................... .. 2
`
`37 CFR § 2.87 ................................................................................................................... .. 2
`TREATISES
`
`2 J. Thomas McCarthy on Trademarks and Unfair Competition, § 15.77 at
`15-110 (4th ed. 2004) ................................................................................................. .. 18
`
`NY2:#4619565
`
`
`
`75/982336
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Applicant:
`Mark:
`
`Zuffa, LLC
`ULTIMATE FIGHTING
`
`75/982,336
`Application No.:
`January 7, 2002
`Filing Date:
`Examining Attorney: Laurie1Dalier, Law Office 116
`Office Action
`
`(FINAL):
`
`June 30, 2004
`
`APPLICANT’S APPEAL BRIEF
`
`1. Introduction
`
`Pursuant to a Notice of Appeal filed concurrently herewith, Applicant has
`
`appealed the Trademark Examining Attorney’s final refusal to register applicant’s mark,
`
`ULTIMATE FIGHTING, in International Class 41 for “entertainment, namely live stage
`
`shows and performances featuring sports and mixed martial arts.” This refusal was based
`
`on the ground that Applicant’s mark is merely descriptive of the identified services in
`
`Class 41 under Trademark Act Section 2(e)(l) of the Trademark Act and that the mark
`
`appears to be generic as applied to the services and therefore is incapable of fiinctioning
`
`as a source-identifier for applicant’s services.
`
`For the reasons set forth below, Applicant respectfully disagrees with the
`
`Examiner’s refusal to register this mark. Applicant maintains that while the mark is
`
`arguably descriptive, it has acquired distinctiveness through continuous use since
`
`November, 1993, as well as through extensive promotion, advertising, sales and
`
`policing. Thus, the mark is eligible for registration under Section 2(f) of the Trademark
`
`Act. Indeed, the ULTIMATE FIGHTING mark has been granted registration in class 9
`
`(reg. no. 2866495).
`
`NY2:#460059l
`
`
`
`75/982336
`
`II. Background
`
`Applicant’s predecessor began using the mark THE ULTIMATE FIGHTING
`
`CHAMPIONSHIP in connection with fighting competitions in November, 1993. On
`
`January 22, 2001, the mark, and all associated goodwill, was purchased by applicant,
`
`Zuffa, LLC, which has used the marks ULTIMATE FIGHTING and ULTIMATE
`
`FIGHTING CHAMPIONSHIP continuously since the date of its acquisition of the
`
`registrations for the ULTIMATE FIGHTING CHAMPIONSHIP mark.1 Applicant filed
`
`application no. 75/356,163 (the ‘I63 application) to register ULTIMATE FIGHTING
`
`based on intent to use in classes 9, 25, 28 and 41 on January 7, 2002.
`
`On March 8, 2002, Applicant filed a Request to Divide Under 37 CFR § 2.87 and
`
`an Amendment to Allege Use Under 37 CFR § 2.76. In its Request to Divide, Applicant
`
`requested that “pre-recorded video cassettes and computer game programs” in Class 9,
`
`“action skill games” in Class 28 and “live stage shows and presentation of live
`
`performances”2 in Class 41 be made the subject of a new application in connection with
`
`which the Amendment of Use was being filed. The remainder of the goods and services
`
`in classes 9, 28 and 41, and all the goods in class 25 were to remain in the original
`
`“parent application.” In its letter dated April 11, 2002, the ITU/Divisional Unit assigned
`
`1 The assignment of Registration Numbers 2170463 and 2576367 for ULTIMATE FIGHTING
`CHAMPIONSHIP and registration no. 1939277 for ULTIMATE FIGHTING CHAMPIONSHIP
`& Design was recorded on May 4, 2002 on R/F 2459/0563.
`2 In its Response dated December 10, 2002, Applicant amended the Class 41 services to
`“entertainment, namely live stage shows and performances featuring sports and mixed martial
`arts.”
`
`NY2:#4600S91
`
`- 2 -
`
`
`
`75/982336
`
`application no. 75/982,336 (the ‘336 application) to the new “child application,” class 41
`
`of which is currently the subject of this appea1.3
`
`On May 24, 2002, before she received applicant’s Request to Divide and
`
`Amendment to Allege Use, the Examining Attorney issued a first Office Action in
`
`connection with the new ‘336 “child” application refusing registration in all three classes
`
`on the Principal Register because the proposed mark merely described the goods under
`
`Trademark Act Section 2(e)(l). In support of her refusal, the Examiner cited case law
`
`and attached LEXIS/NEXIS articles. The Examining Attorney also advised Applicant
`
`that it could amend its application to seek registration on the Supplemental Register, and
`
`requested that applicant submit more information about the goods in order to permit
`
`proper examination of the application.
`
`On July 19, 2002, the Examining Attorney issued a Supplemental Office Action
`
`in connection with the ‘336 application acknowledging receipt of Applicanfs
`
`Amendment to Allege Use and incorporating by reference the issues raised in the May
`
`24, 2002 Office Action, requiring amendments to the class 9 description of goods and
`
`requesting a substitute specimen for the goods in class 28.
`
`Applicant filed its response to the above Office Actions on December 10, 2002.
`
`In its Response, Applicant cited relevant case law in support of its arguments against the
`
`Examining Attorney’s refusal. Applicant also noted that several of the LEXIS/NEXIS
`
`research articles used by the Examiner in support of her refusal to register used
`Applicant’sn1ark as a trademark. In addition, applicant submitted the following
`
`information:
`
`3 First use in Class 9 was alleged in 1996; first use in Class 28 was alleged in September, 2000,
`and first use in Class 41 was alleged in November, 1994.
`
`NY2:#460059l
`
`- 3 -
`
`
`
`75/982336
`
`1. Copies of the registrations which were assigned to Applicant by its predecessor
`
`in interest, namely Registration Nos. 2,170,463 for ULTIMATE FIGHTING
`
`CHAMPIONSHIP & Design in Class 9 and 2,576,367 for THE ULTIMATE FIGHTING
`
`CHAMPIONSHIP in classes 9, 16, 18 and 25. Neither registration contained a
`
`disclaimer entered against the term ULTIMATE FIGHTING.
`
`2. A copy (attached as Exhibit A) of the Final Judgment and Permanent
`
`Injunction on Consent which issued January 23, 2002 in connection with a civil action
`
`successfully brought by applicant against Img2.com Inc. and Ultimate Athlete Fighting,
`
`Inc. concerning the Defendant’s use of “Ultimate Athlete Fighting,” in which .Applicant’s
`
`trademark rights in ULTIMATE FIGHTING are acknowledged.
`
`3. Advertisements for app1icant’s events which appeared on “pay-per—view”
`
`shows watched by millions of viewers, as well as a history of all events sponsored by
`
`applicant.
`
`On March 4, 2003, the Examining Attorney issued an Office Action making final
`
`her refusal to register under Section 2(e)(1) on the grounds that the mark is merely
`
`descriptive because it describes the subject matter of applicant’s goods and sen/ices. In
`
`support of her refusal on this ground, the Examining Attorney cited the same case law as
`
`in her May 24, 2002 Office Action. With respect to her refusal in connection with the
`
`class 41 services, the Examining Attorney attached additional article excerpts fiom a
`
`search in the LEXIS/NEXIS data base, as well as “a few of the same exact articles in
`
`FULL view” which the Examiner advised indicated that “the connection to the Applicant
`
`is sparse at best and does not provide any evidence that the mark is not merely descriptive
`
`as used and recognized by the consumers and public.” Further, the Examiner stated that
`
`NY2:#460059 1
`
`
`
`75/982336
`
`the Judgment in the Img2.com case (Exhibit A, referenced above) was insufficient in
`
`support of the mark’s distinctiveness as it “[did] not make any statements that the mark is
`
`inherently distinctive or even suggestive.”
`
`Applicant filed its Response on September 3, 2003. With respect to Class 9,
`
`Applicant claimed acquired distinctiveness under Section 2(t) based on ownership of
`
`U.S. Registration Nos. 2,576,367 and 2,170,463 for related goods. With respect to both
`
`classes 9 and 41, applicant requested the amendment of the application to add a prima
`
`facie claim of distinctiveness based on over five years use and submitted a Declaration in
`
`accordance with 37 C.F.R. §2.20 in support of this claim. Applicant requested the
`
`deletion of Class 28 from the application.
`
`Pursuant to a telephone conversation with the Examining Attorney on December
`
`22, 2003, Applicant submitted a Declaration, attached as Exhibit B, sworn to on behalf of
`
`its President, Dana White, in support of the acquired distinctiveness of its mark as it
`
`related to the Class 4l services. In addition to stating that the mark functioned as
`
`Applicant’s service mark since as least as early as November, 1993, Mr. White provided
`
`the following information about App1icant’s activities:
`
`1. Applicant and its predecessor in interest spent in excess of $10 million
`
`marketing, advertising and promoting the ULTIMATE FIGHTING mark.
`
`2. Since September, 2001, the commercial value of Applicant’s advertising
`
`revenues from its partners and licensees were in excess of $50 million.
`
`3. Applicant and its predecessor-in-interest generated in excess of $50 million in
`
`revenues from ticket sales, pay-per-view and broadcast licensing revenues using the
`
`NY2:#460059l
`
`
`
`75/982336
`
`ULTIMATE FIGHTING mark in connection with approximately 50 live mixed martial
`
`arts events held in major sports arenas throughout the United States.
`
`4. Since 1993, App1icant’s live events were purchased by several million pay-
`
`per-view subscribers throughout the United States.
`
`On February 23, 2004, the Examining Attorney issued an Office Action accepting
`
`the Section 2(t) claim with respect to the class 9 goods but maintaining the refusal to
`
`register under Section 2(e)(1) as to the class 41 services, stating that “applicant’s
`
`allegation of use for over five years and claims of expenditures and types of advertising,
`
`without documentation or evidence is insufficient evidence of distinctiveness,” and
`
`requiring that applicant “submit actual evidence/documentation to prove the
`
`distinctiveness of the mark in commerce.” The Examining Attorney also advised that the
`
`mark was incapable of registration in Class 41 because it was generic.
`
`In support of her
`
`contention that “ultimate fighting is understood nationwide to refer to a type of mixed
`
`martial arts fighting,” the Examining Attorney attached evidence from a LEXIS/NEXIS
`
`search.
`
`Attached to its Response dated May 18, 2004, Applicant submitted the following
`
`additional evidence and arguments:
`
`1.
`
`Thirty—one (31) Declarations executed by a wide assortment of people in
`
`the mixed martial arts (“MMA”) field, including members of the MMA media, as well as
`
`owners of competing MMA events. Each of the declarants recognized that the terms
`
`ULTIMATE FIGHTING and ULTIMATE FIGHTING CHAMPIONSHIP identified the
`
`specific mixed martial arts competitions promoted by the Applicant. Copies of these
`
`Declarations are attached as Exhibit C.
`
`NY2:#4600591
`
`
`
`75/982336
`
`2.
`
`Proof that Applicant coined the mark ULTIMATE FIGHTING, as
`
`evidenced by the statement in one of the Examining Attorney’s LEXIS/NEX S articles,
`
`attached as Exhibit D, that “NHB [No Holds Barred] or ‘ultimate fighting’...frrst came to
`
`the states about 10 years ago,” as well as by the results of Applicant’s LEXIS/NEXIS
`
`search, attached as Exhibit E, which uncovered no use of ULTIMATE FIGHTING in
`
`connection with martial arts events prior to an article dated October 9, 1993, the subject
`
`of which was Applicant’s event.
`
`3.
`
`A list of Applicant’s fighters who were the subject of four of the
`
`Examining Attomey’s LEXIS/NEXIS articles, and a photocopy of an advertisement for
`
`one of Applicant’s events, which was the subject of a fifth article. See Exhibit F.
`
`4.
`
`A photocopy of the Nevada state statute, Exhibit G, defining “mixed
`
`martial arts” as “unarmed combat involving the use...of a combination of techniques from
`
`different disciplines of the martial arts, including, without limitation, grappling, kicking
`
`and striking,” with no reference to “ultimate fighting.”
`
`5.
`
`A copy of a settlement agreement, Exhibit H, in which a third party agreed
`
`to cease use of a confusingly similar mark and explicitly acknowledged that the
`
`ULTIMATE FIGHTING mark was exclusively associated with Applicant.
`
`On June 30, 2004, the Examining Attorney issued an Office Action making final
`
`her refusal to register in Class 41 under Trademark Act Section 2(e)(1) and stating that
`
`the mark appeared to be “generic as applied to the services and therefore, incapable of
`
`functioning as a source-identifier for applicant’s serVices.”4
`
`4 This Office Action also contains the incongruous statement on the last two lines of :its second
`page that “The examining attorney agrees that the whole mark, as proposed, may be recognized
`as a source indicator.” Applicant agrees with this part of the Office Action.
`
`NY2:#4600S91
`
`_ 7 _
`
`
`
`75/982336
`
`The Examining Attorney advised that Applicant did not establish acquired
`
`distinctiveness because it was unable to show that the primary significance of its mark
`
`was to identify the source of its services. Moreover, the Examining Attorney advised
`
`that Applicant’s “boilerplate declaration form drafted by the applicant is not persuasive
`
`evidence of acquired distinctiveness,” and that “neither an amendment to proceed under
`
`Trademark Act Section 2(f) 15 U.S.C. § l052(t), nor an amendment to the Supplemental
`
`Register can be recommended.”
`
`In support of her final refusal, the Examining Attorney attached purported
`
`“additional evidence from LEXIS/NEXIS,” which actually consisted of identical copies
`
`of the same articles attached to the Examining Attomey’s Office Action dated February
`
`23, 2004.
`
`The Examining Attorney also attached a “computerized intemet search” which
`
`purportedly showed that “ULTIMATE FIGHTING is incapable of being a source
`
`indicator of applicant’s services.” The first page of this search, attached as Exhibit 1,
`
`consisted of the home page of the web site for “Ultimate Athlete Fighting, Inc:.,” the
`
`defendant in the IMG2.COM case, referenced above, which was successfully decided in
`
`favor of the Applicant. Itis notable that the web page indicates that the defendant
`
`described the contents of its “Ultimate Athlete Magazine” as featuring “mixed martial
`
`arts” and “extreme fighting events,” (both alternate generic terms for the genus of
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`sporting events identified by the ULTIMATE FIGHTING trademark), and depicted
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`“Ultimate Fighting Championships” as a trademark by using it in initial upper case
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`letters. Further, in accordance with the terms of a Consent Judgment (Exhibit A), the site
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`75/982336
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`refrains from use of “Ultimate Fighting”, its owner having acknowledged Ap]plicant’s
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`rights in the mark.
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`The “computerized intemet search” also consisted of a copy of the dictionary
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`definition of “championship,” excerpts from three articles in which the terms “mixed
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`martial arts,”, “no holds barred or NHB” and “cage fighting” were used as alternate terms
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`for ULTIMATE FIGHTING; and a cached page from a web site for “Martial Arts
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`Training for the 21“ Century” which appeared to have been located as the result of a
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`Google searchfor the phrase “ultimate fighting mixed martial arts.”
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`Applicant’s Arggrnent
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`I. Summafl
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`Applicant’s mark is not generic for its entertainment services. Applic:ant’s mark
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`has been in continuous use in connection with its services for over 10 years. In fact, use
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`of the coined mark "ULTIMATE FIGHTING” was non—existent prior to applicant’s use.
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`Moreover, applicant’s enforcement of its rights in its mark, combined with its extensive
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`advertising and promotion and the numerous events broadcast both live and via pay per
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`view, have transformed any descriptive significance the mark may have had into a mark
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`which has acquired distinctiveness through its recognition by applicant’s customers and
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`competitors alike as applicant’s trademark.
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`The Examining Attorney has failed to sustain the burden that applicant’s mark is
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`generic. As the record has shown, the Examiner’s refusal to register applicant’s mark
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`was based primarily on LEXIS/NEXIS articles, many of which clearly demonstrated an
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`association with the applicant, and many of which also showed use of Applicant’s mark
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`75/982336
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`as a trademark. In any event, applicant submits that a few articles showing improper
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`third party uses of its mark are of little probative value.
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`Applicant has demonstrated acquired distinctiveness by a preponderance of the
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`evidence it submitted in support of its Section 2(1) claim. In fact, the 31 non-party
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`Declarations submitted by Applicant constitute compelling evidence of acquired
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`distinctiveness, particularly when combined with Applicant’s long use and millions of
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`dollars of sales and advertising.
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`H. .
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`Arguments
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`1. The Mark is Not Generic for Class 41 Services
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`As stated by the Examining Attorney, “generic terms are terms that the relevant
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`purchasing public understands primarily as the common or class name for the goods or
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`services.” Applicant does not dispute this fact. However, the facts in this case prove that
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`the mark is not generic.
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`As Applicant pointed out in its Response dated May 18, 2004, there are
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`commonly used alternative terms to describe the services provided under the
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`ULTIMATE FIGHTING trademark, including “martial arts fighting,” “mixed martial arts
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`fighting,” “toughman fighting,” “no holds barred fighting,” and “extreme fighting.” No
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`reference to the phrase “ULTIMATE FIGHTING” was necessary in the Nevada statute’s
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`definition of the “mixed martial arts” as “unarmed combat involving the use. . ..of a
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`combination of different techniques from different disciplines of the martial arts,
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`including, without limitation, grappling, kicking and striking.”
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`Moreover, there was no use of the mark ULTIMATE FIGHTING prior to
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`Applicant’s introduction of its entertainment services featuring martial arts events. It is
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`NY2:#4600591
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`also notable that no evidence was uncovered by the Examiner showing any use of this
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`term by Applicant’s competitors. The one competitor who attempted to use a similar
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`mark was sued, permanently enjoined, and acknowledged Applicant’s exclusive rights in
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`“ULTIMATE FIGHTING.” (Exhibit A).
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`Applicant submits that the above factors taken alone -- even absent a
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`consideration of Applicant’s substantial showing of secondary meaning -— weigh against
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`a determination that applicant’s ULTIMATE FIGHTING mark is generic.
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`The facts in the instant case are analogous to those in Zimmerman V. Nat’l Assoc.
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`of Realtors, 70 U.S.P.Q. 2d 1425 (TTAB 2004). In denying the petition to cancel two
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`registrations for the marks REALTOR and REALTORS on the grounds that the marks
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`were generic, the TTAB rejected the petitioner’s argument that “the coinage of [the word]
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`realtor was obvious and probably inevitable.” supra, at 1434. Rather, the TTAB noted
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`that “[g]iven the etymology of the Word as shown in the Oxford English Dictionary, the
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`word ‘Realtor’ may well have been one of several logical naming choices for the
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`professional involved in ‘realty.”’ supra, at 1434. The TTAB noted that “the record
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`suggests that ‘realty agent’ ‘real estate agent’ or ‘real estate broker’ are accepted generic
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`alternatives.” Id, at 1437.
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`In another case argued before the Board, In re Minnetonka Inc., 3 U.S.P.Q. 2d
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`1711 (TTAB 1987), the Examining Attorney refused registration under Section 2(e)(l) on
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`ground that SOFTSOAP is merely descriptive or deceptively misdescriptive as applied to
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`liquid hand soap in a pump-type dispenser, taking the position that the mark is a generic
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`designation for certain types of industrial soaps. In reversing the Exa;miner’s refusal, the
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`Board stated:
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`NY2:#4600591
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`75/982336
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`“In conclusion, it is the View of the Board that the issue of
`genericism is based on the basic tenet of trademark law that
`competitors must not be hampered from the free use of
`generic terms to name their goods. The record fails to
`show that competitors have a need to use the term
`SOFTSOAP as a generic designation for liquid hand soap;
`on the contrary, the record shows the opposite, namely, that
`a fairly substantial number of competitors exist and that
`none of them use the term but, rather, appear to use the
`terms “liquid soap,” “1iquid hand soap” or variants thereof
`as the common name for the goods.” Id_. at 1713.
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`Similarly, in the present case, there are several generic alternatives which comrpetitors can
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`use, e. g., “mixed martial arts” or “extreme fighting,” without infiinging the applicant’s
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`coined mark.
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`2. The Examining Attorney failed to sustain the burden of showing that
`the mark is generic.
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`In refirsing registration of the mark, the Examining Attorney relied largely upon
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`articles from the LEXIS/NEXIS data base showing third party uses of Applicant’s mark.
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`Many of these articles reference or allude to the Applicant or use Applicant’s mark in its
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`proper trademark sense. As a result, Applicant believes that the Examining Attorney has
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`failed to prove that the articles demonstrate that the public views ULTIMATE
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`FIGHTING as a generic term for Applicant’s mixed martial arts competitions.
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`Moreover, Applicant believes that the Examining Attorney’s statements in her
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`Office Actions demonstrate a misunderstanding of the identification of the class or genus
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`of the services. In her Office Action dated February 23, 2004, the Examining Attorney
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`stated that
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`“the class or genus of services at issue is mixed martial arts
`fighting performances and shows. The relevant public,
`consisting primarily of fans/consumers of the
`performances, people viewing the mark in the public
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`NY2:#460059l
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`_ 12 _
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`75/982336
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`domain, and promoters of such events understands clearly
`that the term ULTIMATE FIGHTING refers to the genus
`of mixed martial arts performances.”
`.
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`This is not correct. Rather, the genus is mixed martial arts, or no—holds barred fighting,
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`or extreme fighting, or toughman fighting, and the trademark is ULTIMATE
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`FIGHTING.
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`This same issue was decided in H. Marvin Ginn Corp. V. International Ass’n of
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`Fire Chiefs Inc. 782 F.2d 987, 228 U.S.P.Q. 528 (Fed. Cir. 1986), which was one of the
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`cases relied upon by the Examining Attorney.
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`In applying the two-part test used to
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`determine whether a designation is generic, the Court reversed the Board’s decision that
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`registration for the term FIRE CHIEF is generic.
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`“The class of magazines at issue is, therefore, those
`directed to the field of fire fighting. However, we can
`discern no record evidence which suggests that the relevant
`portion of the public refers to a class of fire fighting
`publications as ‘Fire Chief.’ Furthermore, the term ‘Fire
`Chief’ is neither the name of the fire fighting industry nor
`about the fire—fighting industry.” Id. at 532.
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`The facts in the instant case also resemble those in another case cited by the
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`Examining Attorney, In re Merrill Lmch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4
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`U.S.P.Q.2d 1141 (Fed. Cir. 1987), in which the Board reached the conclusion that CASH
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`MANAGEMENT ACCOUNT was generic because there was “voluminous evidence” of
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`usage of the term in financial publications after the applicant, Merrill Lynch, introduced
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`its financial system bearing the mark. The Court of Appeals reversed the Board’s
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`decision, noting that the NEXIS articles before the Board “showed recognition in a
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`substantial number of publications that the source ofthe CASH MANA _GEMENT
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`NY2:#460059l
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`ACCOUNT was the appellant. (emphasis added). This evidence does not clearly place
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`appellant’s mark in the category of a generic or common descriptive term.” _I_d, at 1143,
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`1 144.
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`Similarly, in Zimmerman V. National Association of Realtors, s_ufl, the petitioner
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`attempted to cancel registrations for REALTOR and REALTORS by submitting uses of
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`these terms taken from randomly-chosen newspapers from each of twenty four states in
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`support of his position that the marks had become generic due to generic uses in the
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`media. Respondent contended that although this evidence showed “occasional careless
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`misuse of its registered marks in publications, ...many more publications show[ed]
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`proper use of its collective marks, i.e., the publications recognize the terms as marks.” E.
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`at 1427.
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`In denying the petition to cancel, the Board noted that “we find it in:structive
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`that in a majority of these instances, the word “Realtor” is capitalized and used in a
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`manner consistent with respondent’s position that this term functions as an identifier for
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`its members — not as a generic designation for all real estate agents.” _I_cL at 1434. g
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`&, all In re American Fertility Society, 188 F.3d 1341, 51 USPQ 2d 1832,
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`1836 (Fed. Cir. 1999). “The Board cannot simply cite definitions and generic uses of the
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`constituent terms of a mark, in lieu of conducting an inquiry into the meaning of the
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`disputed phrase as a whole to hold a mark, or a phrase within. the mark, generic”; _l\@§
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`Universe Inc. v. Little Miss U.S.A. Inc, 212 U.S.P.Q. 425, 429 (N.D. Ga. 1981) (“the
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`list of third party uses submitted by defendant has little evidentiary value...oth.er than to
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`show that any combination of the words “U.S.A.,” “US,” or “United States” and “Miss”
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`is a popular name for a beauty pageant.”); Safeway Stores, Inc. V. Safeway Discount
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`NY2:#4600591
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`75/982336
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`Drugs, Inc., 675 F.2d 1160, 216 U.S.P.Q. 599, 603 (11th Cir. 1982) (“third party
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`users...do not significantly diminish strength of Safeway mar ”).
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`3. Reasonable Doubt that Mark is Generic Should be Resolved in Favor
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`of Applicant
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`It is axiomatic that if there is a reasonable doubt that a mark is merely descriptive,
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`such doubt should be resolved in favor of the applicant.
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`In re Merrill Lmch, Ri_qr_ge,
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`Fenner & Smith Inc., 4 U.S.P.Q. 2d 1141, 1144 (“It is incumbent upon the Board to
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`balance the evidence of public understanding of the mark against the degree of
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`descriptiveness encumbering the mark, and to resolve reasonable doubt in favor of the
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`applicant”); In re Gourmet Bakers Inc., 173 U.S.P.Q. 565 (TTAB 1972) (resolving
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`doubt in determining the registrability of THE LONG ONE for bread in favor applicant
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`“on the theory that any person who believes that he would be damaged by the registration
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`will have an opportunity...to oppose the registration of the mark,” and noting that “the
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`registration sought by a
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