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`Double parenthesis ((..)) identify any ''less goods";
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`Single brackets [..] indicate deleted goods; and,
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`FOR: Pre-recorded audio cassettes and computer game programs
`INT. CLASS 009 (U.S. CLASSES O21 ‘O23 026 036 AND 038)
`70FIRST USE
`USE IN COMMERCE
`CLASS STATUS: 6
`action skill games
`INT. CLASS 028 (U.S. CLASSES 022 023 038 AND 050)
`TOFIRST USE
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`FOR: Live stage shows; presentation of live performances
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`INT. CLASS 041 (US. CLASSES 100 101 AND 107)
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`CLASS STATUS: 6
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`Live Status/
`Live
`Total
`Dead
`Marks ~Marks Viewed Viewed Search
`Docs
`Images Duration
`
`02
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`04
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`O5
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`Session started 9/29/01 3:29:59 PM
`Session finished 9/29/01 3:34:51 PM
`Total search duration 0:20 minutes
`Session Duration 4:52 minutes
`
`Default NEAR limit= 1 ADJ limit: 1
`
`

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`_ 01/05/2ou2'13:3i3 FAX‘ 702 362.5’
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`Pre-recorded audio cassettes; phonograph records; compact
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`sandals; infant and toddler sleepwear; robes; nightshirts and ‘
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`wear; d'iapersets;‘ toddlershort sets; jogging suits; rompers;
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`L suits; henley suits; shorts; skirts;gblouses; pants; slacks; shirts;
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`01/05/2002 13:33 FAX. 702‘ 362 53-89
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`, jackets; referees and umpires uniforms; athletic: uniforms;
`team uniform reproductions; sweaters; parkas; turtlenecks; _
`.mittens and gloves; underwear; jerseys; bow ties; headwear
`and scarves; ear muffs; ear bands 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; Halloween and masquerade costumes;
`blazers; legwarmers; jeans; leotards; workout and sports
`,0 apparel, namely shorts, jackets; slacks, shirts
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`Rubber balls; action figures and accessories; action skills a
`games; bean bag dolls; plush toys; balloons; golifballs; tennis
`balls; bath toys; Christmas tree ornaments; board games; a
`building blocks; equipment sold as a unit for playingcard
`games; video game cartridges and discs; dolls and doll
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`clothing; doll playsets; computer game cartridges; computer _
`game discs; children's play cosmetics; crib toys; electric action
`toys; manipulative games; golf gloves; golf ball markers;
`jigsaw puzzles; kites; mobiles; music box toys; party favors in 0
`thenature of small toys; inflatable pool toys; multiple activity
`- toys; wind-up toys; target ‘games; disc-type toss toys; bows and
`i arrows; toy vehicles; toy‘ cars; toy trucks; toy bucket and
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`0 shovel sets; roller skates; toy model liobbycraft kits; toy‘
`g rockets; toy guns; toy holsters; musical toys; badminton sets;
`bubble making [wands and solution sets; toyvifigurines; toy
`banks; puppets; yo-yos; skateboards; scooters; face masks;
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`‘ production, presentation, distribution, and rental of television
`and radio programs; production, presentation, distribution,
`and rental of motion picture films; production, presentation;
`distribution, andrental of sound and video recordings’;
`entertainment information;»produc"tio_n of entertainment shows .
`0 and interactive programs fordistribution via televisio;n,tcable/, ‘
`satellite, audio andivideo mediagcartridges‘, laser discs, i
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`01/05/2002 «i3:34 FAX702 362 53’
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`FER"T‘ITTa“r3:NT;
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`0 POWER OF ATTORNEY
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`The undersigned‘ hereby appoints‘ the following individuals as its attorneys with '
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`full power of substitution, association and revocation, to prosecute this application, to transact all ~ ,
`business in the United States Patent and Trademark Office and to receive the Certificate of
`.
`Registration: Christopher E. Chalsen, Parker H, Bagley, Michael M. Murray, John M. Griern,’
`. Jr., Iames R. Klaiber, Lawrence T. Kass, Alison Naidech, Chris L. Holm, and Christopher J.
`.
`Gaspar, all members of the Bar of the State of New York, with offices at Milbank, Tweed,
`.
`Hadley & McCloy LLP, One Chase Manhattan Plaza, New York, New York 10005-1413 and W.
`Jackson Matney, Jr. and‘ Michael H. Jacobs,pboth members of the Bar of the State of Virginia,
`and Jake A. Taylor and C. Thomas Paschall, both members of the Bar of the State of California.
`Please direct all correspondence to: ‘ =
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`Parker H.7Bagley, Esq.
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`Milbank, Tweed, Hadley/'& McC1oy LLP A
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`1 Chase Manhattan Plaza
`i _,N6W York, NY 10005-1413 J
`(Tel) 212-530-5343
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`l pbagley@rnilbank.corn
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`I The undersigned being hereby warned} that willfiil false statements and the like so made‘ .
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`are punishable by fine or imprisomnent, or both under 18 U. S.C. 1001, and that such willful false
`statements may jeopardize the validity of the application or any registration resulting therefrom,
`A declares that he is properly authorized to execute this application on behalf of the applicant; the
`applicant has -aibona fide intentionto usethe mark shown in the accompanying drawing in
`commerce on or in connection with the specified goods and services; theapplicant believes it is
`entitled to use the mark in commerce; that to the best of declarant's knowledge and belief, no —
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`other person, firm, corporation, or association has the right to use the mark in cornInerce,‘either
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`in the identical form or in such near resemblance thereto as to be likely, when applied to the V
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`goods or services of the other person, to cause confusionjor to cause rnistake, or to deceive; that
`the facts set forth in the application -are true; that all statements made ofhis own knowledge are .
`trueianpd all statements made on infomiation and belief are believed to be true.
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`
`Serial No. 75/982336 for ‘IMATE FIGHTING
`
`Dalier, Lauriel
`
`From:
`
`JNici@mi|bank.com
`
`Sent:
`
`‘Wednesday, August 14, 2002 12:21 PM
`
`To:
`
`IaurieI.dalier@uspto.gov
`
`Subject: Serial No. 75/982336 for ULTIMATE FIGHTING
`Dear Ms. Daliert
`
`Following up on my voice mail messages, I discovered that the filing receipt data for this application contains
`an error in the class 9 goods description in that it identifies "audio" casettes instead of "video" casettes. The AAU
`was filed for the following class 9 goods: "pre—recorded video casettes and computer game programs."
`
`I spoke with the ITU Unit about having this corrected, but they told me I needed to contact the Examining
`Attorney. However, if there is someone else who can make this correction, please let me know, and I'll contact
`them.
`
`The reason I need this done fairly quickly is because I need to submit a certilied copy of the U.S. application
`in support of a priority claim in a foreign application. The certified copy I ordered and received contained the error
`in the class 9 goods description, so I am unable to submit it.
`
`Attached is a copy of my April 17th request for correction of the filing receipt data.
`please let me know.
`
`lfyou need anything else,
`
`Thank you for your assistance with this.
`
`MILBANK
`INTELLECTUAL PROPERTY
`
`Janis Nici
`Trademark Legal Assistant
`MILBANK, TINEED, HADLEY 8- McCLOY LLP
`One Chase Manhattan Plaza
`
`New York, NY 10005
`Tel: (212)530-5423
`Fax: (212) 822-5423
`
`e—mail: jnici@mi|bank.com
`
`<<hdq03000.PDF>>
`
`This e-mail message may contain legally privileged andlor confidential
`infonnation. If you are not the intended recipient(s), orthe employee
`or agent responsible for delivery of this message to the intended
`recipient(s), you are hereby notified that any dissemination,
`distribution or copying of this e-mail message is strictly prohibited.
`If you have received this message in error, please immediately notify
`the sender and delete this e-mail message from your computer.
`
`,
`
`-
`
`8/26/02
`
`

`
`File No. 36784-05700 0
`
`TRADEMARK
`
`Applicant
`Mark
`Serial No.
`
`Filing Date
`
`2
`:
`2
`
`:
`
`Zuffa, LLC
`ULTIMATE FIGHTING
`75/982336
`
`January 7, 2002
`
`Assistant Commissioner for Trademarks
`ATTENTION: PRE-EXAMINATION FILE RECEIPT SECTION
`2900 Crystal Drive
`Arlington. Virginia 22202-3513
`
`RES QUEST FOR CORRECTION OF FILING RECEIPT DATA
`
`Applicant has noted that the Filing Receipt Data for this application contains errors
`concerning the description of goods in Class 9. Applicant respectfully requests that the
`following correction be made‘ and that corrected filing receipt data be issued:
`
`-- Description of Goods: Class 9: please delete the word "audio"
`and replace it with "video"
`
`Respectfully submitted,
`
`Byr £
`
`Legal Assistant
`MILBANK, TWEED, HADLEY & McCLOY
`One Chase Manhattan Plaza
`
`New York, NY 10005
`(212) 530-5423
`
`cc: C. Tom Paschall, Esq.
`
`NY3:#7290l 69
`
`

`
`

`
`United States Patent and Trademark Office
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`Mailed: January 25, 2005
`
`In re Zuffa, LLC
`
`Serial No. 75982336
`
`Filed: Ol/07/20020
`
`PARKER H. BAGLEY, ESQ
`MILBANK, TWEED, HADLEY & MCCLOY LLP
`1 CHASE MANHATTAN PLAZA
`
`NEW YORK, N,
`
`10005-1413
`
`Clara Vela, Paralegal Specialist
`
`On December I4, 2004, applicant filed a notice of
`
`appeal, an appeal brief and a request to divide.
`
`The appeal is hereby instituted. However, proceedings
`
`in the appeal are suspended and the application file is
`
`forwarded to the Intent to Use Branch of the Office for
`
`action on the request to divide.
`
`When processing of the request to divide is completed,
`
`the Intent to Use Branch should return the “parent” and the
`
`newly created “child” cases to the Board for further
`
`appropriate action.
`
`

`
`Incoming Correspondence Routing Sheet
`
`Physical Location: ALEX. CENTRAL DOCKET
`
`Mark: ULTIMATE FIGHTING
`
`Serial No: 75982336
`
`Mail Date: 12172004
`
`IH
`
`Doc. Type: Requests to Divide
`
`Examiner: 74663 - DALIER, LAURIEL
`
`CASE IN TICRS: YES
`
`Process in Accordance with Standard Operating Procedure and Work Steps.
`
`Fee
`RAM Mail Date: 121704
`
`

`
`IN THE UNITED STATES PATENTIAND TRADEMARK OFFICE
`
`Applicant
`
`Mark
`
`Class
`
`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. §l.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 Nam‘_,_,.....«,=\
`,2
`
`_December 14, 2004
`Date
`
`NY2:#4620749
`
`llllllllllllllllllllllllllllllllllllllllllllllllll
`
`‘
`
`124 7-2004
`
`U13. PEIEFITG: TMOTG/TM Mail RCPI DC. #39
`
`‘
`
`

`
`36784-05700
`
`75/932336
`TRADEMARK
`
`2
`Applicant
`:
`Marli
`;
`‘ Serial No.
`:
`Filing Date
`Examining Attorney :
`Office Acton
`:
`
`Zuffa, LLC
`ULTIMATE FIGHTING
`75/982,336
`January 7, 2002
`Lauriel Dalier, Law Office 116
`June 30, 2004
`
`REQUEST 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 appiication. 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—recorded 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.
`1 3-3250.
`
`‘ ADLEY 8; MCCLOY LLP
`
`Respectfully submitted,
`MILBANK:,('l\WEE
`By:
`
`'
`Park“ H 133316?" ,
`Attorney for Applicant
`One Chase Manhattan Plaza
`New York, NY 10005-1413
`(212) 530-5000
`
`Dated:
`12/27/2004 HPHRHI
`
`11!” 5 '1'
`ooooeoae 75952335
`
`01 PC5006
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`“mm B9
`
`PHB :JN
`enclosures
`
`NY2;#4608583
`
`

`
`TRA “EM K EXAMINATION WORKSI-IEET
`
`AMENDMENT STAGE
`
`U PUBLICATIO/REISTRAT ON STAGE
`,.
`.
`I p_,
`Name:TaWana Cambell L.O. 116 Date June 3,2004 No.746/78/79;’
`INSTRUCTIONS: Place a check mark in the appropriate column and/or box to indicate which :1 cements have been amended/coded.
`
`NO CHANGE
`
`Leal Instrument Examiner (LIE)
`Amended
`
`Data Element
`
`Prime/International Class
`
`Cl Goods and Services
`
`First Use Date
`
`In Another Form
`
`E] First Use in Commerce Date
`
`El Certification
`
`1(b)/1(a)/44(d)/44(e) Add Delete
`
`Word Mark
`
`Mark Drawing Code
`
`Scan Sub Drawing
`
`Mark Description
`
`Lining/Stippling
`Translation/Transl iteration
`
`Section 2(f) Entire Mark
`
`Section 2(f) Limitation Statement
`
`Amended Register
`
`Foreign Country
`
`Foreign Application Number
`
`Foreign Registration Number
`
`Foreign Registration Expiration Date
`
`Foreign Reg.‘ Renewal Expiration Date
`Owner Name
`
`Address 1
`
`City
`
`Zip Code
`
`Citizenship
`
`Entity Statement
`
`Assignment(s)/Name Change
`
`Concurrent Use
`
`Prior Registration
`
`Attorney
`
`Attorney Docket Number
`
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`
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`Pseudo Mark
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`Design Search Code
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`Foreign Application Filing Date
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`Foreign Registration Date
`
`Foreign Renewal Reg. Number
`
`Foreign Renewal Reg. Date
`DBA/AKA/TA
`Address 2
`
`State
`
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`Class Data
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`Section 2(1)
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`
`EHHEMHEMINIIIII
`EEMIEHEIIIIIII
`Correspondence _
`
`I certify that all corrections have been entered in accordance with text editing guidelines.
`
`TEG
`LIE
`
`June3 2004
`DATE
`
`

`
`Incoming Correspondence Routing Sheet
`
`To: TMO LAW OFFICE 116 — AWAITING RESPONSE DOCKET
`
`Word Mark: ULTIMATE FIGHTING
`
`Seriztl No: 75982336
`
`III I
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`|||| II II
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`||l\||||\\||||
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`
`
`Mail Date: 05202004
`
`Doc. T e: Amendments to Response
`
`lllllllifilllllllll
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`|||
`
`No Fee
`
`RAM Mail Date: 052004
`
`

`
`35784-05700
`
`>
`.
`
`“Please place on Upper Right Corner“ 0
`"fof Pwonse to Office Action DNL.Y.* *
`Exarnining Alto
`ey: DALIER, LAUF-HEL
`“Serial Number: 75/982336
`
`0
`
`:
`Applicant
`:
`Mark
`:
`Serial No.
`2
`Filing Date
`Examining Attorney :
`Office Action
`:
`
`T'l'll"'ll'l"lll'""“l"'l"l"l,
`
`Zuffa, LLC
`ULTIMATE FIGHTING
`75/982,336
`January 7, 2002
`Lauriel F. Dalier, L. 0. H6
`No 05, dated February 23, 2004‘
`
`2
`
`AMENDMENT AND RESPONSE
`
`C°mm‘'SSi°n“ 1"“ Trademaiks
`BOX RESPONSES/NO FEB
`
`2900 Crystal’Drive
`Arlington, Virginia 22202-3513
`
`S I R :
`
`I
`
`1
`
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`
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`US. Patent 8: TMOfI:JTM Mall Hept Dt. #74
`
`I
`
`0, Applicant responds to the Office Action dated February 23, 2004.
`
`The Examining Attorney has rejected the Applicant’s Section 2(i) claim as to the
`class 41 services on the grounds that it is ’’insufficient evidence of distinctiveness” and has
`required that applicant submit “actual evidence/documentation to prove the distinctiveness.”
`The Examining Attorney has also advised that the mark “as. a whole is generic.”
`
`RESPONSE
`
`1.
`
`Declarations Asserting Recognition of the Mark as a Source Indicator
`
`Attached as Exhibit A are 31 Declarations executed by a wide assortment of people in
`the mixed martial arts (“MMA”) field, including members of the Nevada State Athletic
`Commission, MMA journalists, managers and trainers of MMA fighters, referees, an NBC
`sports broadcast anchor, owners of competing MMA events, and other members of the MMA
`media. Each of them recognizes that the terms ULTIMATE FIGHTING and ULTIMATE
`FIGHTING CHAMPIONSHIP identify the specific mixed martial arts competitions
`promoted by the Applicant.
`2
`
`Y) fit‘
`Date ofDeposit
`I hereby certify that this correspondence is being deposited with the
`United States Postal Service with sufficient postage as First Class Mail
`on the date indicated above and is addressed to the Commissioner for
`Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-35 l 4.
`.TanisNici
`Typed or printed 11 rfiE('@son m ' in
`A
`.
`»
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`Signature ofpfim ailing papers
`
`apers_
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`

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`36784-05700
`
`‘
`
`75/982336
`
`The Documentation Previousl Submitted Constitutes Strong Evidence of
`Ac uired Distinctiveness in Class 41
`
`Applicant maintains that the Declaration submitted on December 22, 2003, as well as
`its Declaration making a primafacie claim of acquired distinctiveness submitted with its
`Response dated September 3, 2003, also demonstrate that applicant’s mark has acquired
`distinctiveness through its long and continuous use. Moreover, with its response dated
`December 10, 2002, applicant submitted copies of advertisements, a history of all events
`sponsored as part of its “Ultimate Fighting Championship” games and an article describing
`the success of its “pay per view” events as respective Exhibits D, E and F.
`It is axiomatic
`that long use of a mark and large scale expenditures in promoting and advertising goods and
`services are significant to indicate the extent to which a mark has been used and thus has
`acquired distinctiveness.
`
`3.
`
`The Mark is Not Generic
`
`As evidence in support of the contention that the mark is generic, the Examining
`Attorney submitted articles obtained from a search in Lexis/Nexis. Use of the mark
`ULTIMATE FIGHTING in those articles constitutes nothing more than sporadic misuse by
`the media of a mark Applicant and its predecessor in interest coined as a trademark and of
`which Applicant and its predecessor have been the exclusive trademark users since 1993.
`
`It is notable that the subject of several of these articles was App1icant’s “Ultimate
`Fighting Championship” contests and the fighters involved in those contests. As evidenced
`by Applicant’s list of fighters attached as Exhibit B, Matt Lindland] , Carlos Newtonz ,Mark
`Coleman3 and Jens Pulverl are all UFC fighters. Moreover, the article in the November 9,
`2003 edition of the Asbury Park Press references Applicant’s “Ultimate Fighting _
`Championship” which was held in Atlantic City on February 28, 2003.5 (See Exhibit C)
`
`(a)
`
`Applicant Coined the Term ULTIMATEJFIGHTING
`
`Use of the term “ultimate fighting” in connection with martial arts competitions was
`virtually non—existent. prior to November, 1993, at which time applicant began staging its
`competitions and articles describing Applicant’s “Ultimate Fighting Championship” contests
`began to appear in the media. This fact is substantiated in one of the Lexis/Nexis articles
`
`a
`
`featured in article in The Maryland Gazette dated January 17, 2004
`featured in interview dated January 4, 2004 by CTV Television, Inc.
`featured in article in The News-Messenger dated January 1, 2004
`featured in article from The Alla/zta Journal-Constitutzbn dated August 21, 2003
`‘ There is a typographical error in the article in that it states the light took place in 2002, not 2003.
`
`NY2:#4581890
`
`-2-
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`

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`36784-05700
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`75/982336
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`attached to the Examining Attorney’s Office Action6 as Well as in the attached Exhibit D
`which contains the first ten of 39 articles which were part of the results of a search of the
`Lexis/Nexis database for “ultimate fighting” for the ten-year period commencing January 1,
`1984 and ending January 1, 1994. It is significant that in all of these early articles “Ultimate
`Fighting Championship” appears in quotation marks and is used as a trademark.
`
`(b)
`
`There are Alternative Terms for ULTIMATE FIGHTING
`
`There are commonly used alternative terms to describe the services provided under
`the ULTIMATE FIGHTING trademark which effectively communicate the same functional
`information about the sport of mixed martial arts. These terms are “martial arts fighting,”
`“mixed martial arts fighting,” “toughman fighting,” “no holds barred (NHB) fighting,” and
`“extreme fighting.” Moreover, for the various states that permit and regulate the sport of
`mixed martial arts, none uses the mark ULTIMATE FIGHTING as the official name of the
`sport of martial arts fighting.‘ Rather, the Nevada statute (excerpt attached as Exhibit E)
`defines “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.”
`
`(c)
`
`Applicant Actively Polices Its Mark
`
`Attached as Exhibit B to Applicant’s response dated December 10, 2002 was a copy
`of the Final Judgment and Permanent Injunction on Consent which issued January 23, 2002
`in connection with a civil action brought by Applicant against Img2.com, Inc. and Ultimate
`Athlete Fighting, Inc. In the Judgment, Defendants explicitly recognized that ULTIMATE
`FIGHTING is distinctive and protectable, and the Court enjoined the Defendants from using
`this term in any manner.
`
`As additional evidence of App1icant’s diligence in policing third party uses of its
`mark, attached as Exhibit F to this Response is a copy of a Settlement Agreement between
`the Applicant and Kwadwo Kuntuo Asare, 3rd, in which Mr. Asare agreed to case use of the
`term “Ultimate Chick Fighting” and acknowledged that Applicant’s ULTIMATE FIGHTING
`and ULTIMATE FIGHTING CHAMPIONSHIP marks are distinctive marks which for
`many years were used by Applicant to promote its specific mixed martial arts competitions.
`
`6 See Article dated August 21, 2003 in the Deseret Morning News: “NHB [No Holds Barred] or
`‘ultimate fighting’... first came to the states about 10 years ago.”
`
`NY2:#4S8189O
`
`-3-
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`

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`36784-05700
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`.
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`75/982336
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`II.
`
`CONCLUSION
`
`It is respectfully requested that the Examining Attorney accept Applicant’s Section
`2(1) claim with respect to the Class 41 services.
`
`5
`
`Respectfully submitted,
`
`MILBANK, TWEED, HADLEY & MCCLOY LLP
`
`Dated;
`
`May 18, 2004
`
`PHBJN
`attachments
`
`Attorney for Applicant
`One Chase Manhattan Plaza
`
`New York, NY 10005
`(212) 530-5343
`
`I
`
`NY2:#458l890
`
`

`
`36784-05700
`
`.
`
`O 75/982336
`
`Applicant
`Mark
`
`:
`:
`
`Zuffa, LLC
`ULTIMATE FIGHTING
`
`:
`Serial No.
`:
`Filing Date
`Examining Attorney :
`Ofiice Action
`:
`
`_
`
`75/982,336
`January 7, 2002
`Lauriel F. Dalier, L. O. 116
`I Nos 05, dated February 23, 2004
`
`DECLARATION
`
`DR. TONY ALAMO, hereby declares:
`
`I.
`
`I am the Vice-Chairman of the Nevada Athletic Commission
`
`(Commission), and have served on the Commission since q '3‘
`
`. In my role with the
`
`Commission, I have been involved in the mixed martial arts field.
`
`2.
`
`Within the industry, ULTIMATE FIGHTING and ULTIMATE
`
`FIGHTING CHAMPIONSHIP are considered to be trademarks owned by Zuffa.
`
`3.
`
`I ULTIMATE FIGHTING and ULTIMATE FIGHTING
`
`not generic terms and for many years have been used to identify
`
`the specific mixed martial arts competitions promoted by Zuffa.
`
`4.
`
`Due to the long and extensive use of the trademarks ULTIMATE-
`
`FIGHTING _and ULTIMATE FIGHTING CHAIVIPIONSHIP by Zuffa, I believe that
`
`those in the industry, as well as fans of mixed martial arts, have come to associate those
`
`trademarks exclusively with Zuffa.
`
`5.
`
`Ihereby.declare, under penalty of perjury, rthatitheforegoing is true
`
`and correct.
`
`ijaiéidbéil
`
`I
`
`

`
`36784-05700
`
`.
`
`. 75/982336
`
`Applicant
`Mark
`
`2
`:
`
`Zuffa, LLC
`ULTII\/IATE FIGHTING
`
`‘
`
`:
`Serial No.
`:
`Filing Date
`Examining Attorney :
`Office Action
`:
`
`75/982,336
`January 7, 2002
`Lauriel F. Dalier, L. O. 116
`Nos 05, dated February 23, 2004
`
`DECLARATION
`
`KEITH E. KIZER, hereby declares:
`
`1.
`
`I am the Chief Deputy Attorney General, Gaming Division, for the
`
`State of Nevada, and in that position, act as chief legal counsel for the Nevada Athletic
`
`Commission.
`
`2.
`
`I have been involved in the mixed martial arts field for
`
`approximately 6 years. In fact, I drafted Nevada’s mixed martial arts regulations, the
`
`nation’s premier and first comprehensive mixed martial arts regulations.
`
`3.
`
`Within the industry, ULTIMATE FIGHTING and ULTIMATE
`
`FIGHTING CHAMPIONSHIP are considered to be trademarks owned by Zuffa.
`
`4.
`
`ULTIMATE FIGHTING and ULTIMATE FIGHTING
`
`CHAMPIONSHIP are not generic terms and for many years have been used to identify
`
`the specific mixed martial arts competitions promoted by Zuffa.
`
`5.
`
`Due to the long and extensive use of the trademarks ULTIMATE
`
`FIGHTING and ULTIMATE FIGHTING CHAMPIONSHIP by Zuffa, I believe that
`
`those in the industry, as Well as fans ot‘mixed martial arts, have come to associate those
`
`trademarks exclusively with Zuffa.
`
`6.
`
`I hereby declare, under penalty of perjury, that the foregoing is true
`
`and correct.
`
`Date: March 26,2004
`
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`Applicant
`:
`Mark
`:
`Serial No.
`:
`‘
`Filing Date
`Examining Attorney 2
`Office Action
`:
`
`Zuffa, LLC
`ULTIMATE FIGHTING
`75/982,336
`January 7, 2002
`Lauriel F. Dalier, L. O. 116
`Nos -05, dated February 23, .2004
`
`»
`
`DECLARATION
`
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`Within the industry, ULTIMATE FIGHTING and ULTIMATE
`
`FIGHTING CHAMPIONSHIP are considered to be trademarks owned by Zuffa.
`
`3.
`
`ULTIMATE FIGHTING and ULTIMATE FIGHTING
`
`CHAMPIONSHIP are not generic terms and for many years have been used to identify
`the specific mixed martial arts competitions promoted by Zuffa.
`
`4.
`
`Due to the long and extensive use of the trademarks ULTIMATE
`
`FIGHTING and ULTIMATE FIGHTING CHAMPIONSHIP by Zuffa, I believe that
`those in the industry, as well as fans ofmixed martial arts, have come to associate those
`
`trademarks exclusively with Zuffa.
`
`5.
`
`I hereby declare, under penalty ofperjury, that the foregoing is true
`
`and correct.
`
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`
`36784-05700
`
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`
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`
`2
`Applicant
`:
`Mark
`:
`Serial No.
`:
`Filing Date
`Examining Attorney :
`Office Action
`:
`
`Zuffa, LLC
`ULTIMATE FIGHTING
`75/982,336
`January 7, 2002
`Lauriel F. Dalier, L. O. 116
`Nos 05, dated February 23, 2004
`
`DECLARATION
`
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`employer & position). I have been involved in the mixed martial arts field forZ_I_{ years.
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`
`I Within the industry, ULTIMATE FIGHTING and ULTIMATE
`
`FIGHTING CHAMPIONSHIP are considered to be trademarks owned by Zuffa.
`
`3.
`
`ULTIMATE FIGHTING and ULTIMATE FIGHTING
`
`CHAMPIONSHIP are not generic terms and for many years have been used to identify
`
`the specific mixed martial arts competitions promoted by Zuffa.
`
`4.
`
`Due to the long and extensive use of the trademarks ULTIMATE
`
`FIGHTING and ULTIMATE FIGHTING CHAMPIONSHIP by Zuffa, I believe that
`
`those in the industry, as well as fans of mixed martial arts, have come to associate those
`
`trademarks exclusively with Zuffa.
`
`5.
`
`I hereby declare, under penalty of perjury, that the foregoing is true
`
`

`
`36784-05700
`
`.
`
`. 75/982336
`
`Applicant
`Mark
`
`:
`:
`
`Zuffa, LLC
`ULTIMATE FIGHTING
`
`:
`Serial No.
`:
`Filing Date
`Examining Attorney :
`Office Action
`:
`
`75/982,336
`January 7, 2002
`Lauriel F. Dalier, L. O. 116
`Nos 05, dated February 23, 2004
`
`DECLARATION
`
`; 1
`1.
`Iam A
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`,hereby declares:
`FWL M/sac-0 Ahe7m4ruiprovide
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`employer & position). I have been involved in the mixed martial arts field for _/Q years.
`
`2.
`
`Within the industry, ULTIMATE FIGHTING and ULTIMATE
`
`FIGHTING CHAMPIONSHIP are considered to be trademarks owned by Zuffa.
`
`3.
`
`ULTIMATE FIGHTING and ULTIMATE FIGHTING
`
`CHAMPIONSHIP are not generic terms and for many years have been used to identify
`
`the specific mixed martial arts competitions promoted by Zuffa.
`
`4.
`
`Due to the long and extensive use of the trademarks ULTIMATE
`
`FIGHTING and ULTIMATE FIGHTING CHAMPIONSHIP by Zuffa, I believe that
`
`those in the industry, as well as fans of mixed martial arts, have come to associate those
`
`trademarks exclusively with Zuffa.
`
`5.
`
`I hereby declare, under penalty of perjury, that the foregoing is true
`
`

`
`36784-05700
`
`‘
`
`75/98i336
`
`:
`Applicant
`:
`Mark
`:
`Serial No.
`:
`Filing Date
`Examining Attorney :
`Office Action
`:
`
`V
`Zuffa, LLC
`ULTIMATE FIGHTING
`75/982,336
`January 7, 2002
`Lauriel F. Dalier, L. O. I 16
`Nos 05, dated February 23, 2004
`
`DECLARATION
`
`A
`
`‘
`
`A
`
`\‘3M?t(pr0vide
`
`employer & position). I have been involved in the mixed martial arts field for
`years.
`2.
`Within the industry, ULTIMATE FIGHTING and ULTIMATE
`
`FIGHTING CHAMPIONSHIP are considered to be trademarks owned by Zuffa.
`3.
`ULTIMATE FIGHTING and ULTIMATE FIGHTING
`
`CHAMPIONSHIP are not generic terms and for many years have been used to identify
`
`the specific mixed martial arts competitions promoted by Zuffa.
`
`4.
`
`Due to the long and extensive use of the trademarks ULTIMATE
`
`FIGHTING and ULTIMATE FIGHTING CHAMPIONSHIP by Zuffa, I believe that
`
`those in the industry, as well as fans of mixed martial arts, have come to associate those
`
`trademarks exclusively with Zuffa.
`
`5.
`
`I hereby declare, under penalty of perjury, that the foregoing is true
`
`

`
`36784-05700
`
`75/982336
`
`‘ Applicant
`Mark
`
`:
`:
`
`Zuffa, LLC
`ULTIMATE FIGHTING
`
`:
`Serial No.
`:
`Filing Date
`Examining Attorney :
`Office Action
`:
`
`75/982,336
`January 7