Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA776393
`10/12/2016
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Zuffa, LLC
`
`10/12/2016
`
`2960 West Sahara Avenue
`Las Vegas, NV 89102
`UNITED STATES
`
`M. Feder, J. Krieger, J. Craft, J. Myers
`Dickinson Wright PLLC
`8363 West Sunset Road, Suite 200
`Las Vegas, NV 89113
`UNITED STATES
`TRADEMARKSLV@DICKINSONWRIGHT.COM Phone:(702) 550-4400
`
`Applicant Information
`
`Application No
`
`86896278
`
`Publication date
`
`06/14/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`10/12/2016
`
`Goff, Brian
`1901 Logan Ave S.
`Minneapolis, MN 55403
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`10/12/2016
`
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Dresses; Hats; Pants; Shirts; Shorts; Bot-
`toms; Tops
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`
`86356955
`
`Application Date
`
`08/04/2014
`
`Registration Date
`
`NONE
`
`Word Mark
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a single lined octagon.
`
`Class 041. First use: First Use: 0 First Use In Commerce: 0
`Entertainment in the nature of multi-disciplined fighting competitions; organizing,
`arranging and conducting mixed martial arts fighting exhibitions and competi-
`tions; entertainment, namely, live stage shows and performances featuring
`sports and mixed martial arts; entertainment in the nature of on-going programs
`in the field of sports and mixed martial artsbroadcast over television, cable,
`satellite, Internet and audio and visual media; production of on-going entertain-
`ment shows and interactive entertainment programs for distribution via televi-
`sion, cable, satellite, Internet, audio and visual media and electronic means;
`providingnews and information in the fields of entertainment, sports and mixed
`martial arts; providing a website featuring information on the subjects of enter-
`tainment,sports and mixed martial arts; on-line electronic newsletters and news-
`letters delivered by email in the field of current events; news and information
`featuringsports, mixed martial arts and entertainment; health club services,
`namely, providing instruction and equipment in the field of physical exercise;
`providing fitness and exercise facilities; physical fitness consultation, instruction
`and training services; conducting fitness classes; physical fitness studio ser-
`vices, namely, providing exercise classes, body sculpting classes and group fit-
`ness classes; providing a web site featuring information on exercise and fitness
`
`U.S. Registration
`No.
`
`4222605
`
`Registration Date
`
`10/09/2012
`
`Word Mark
`
`NONE
`
`Application Date
`
`02/18/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of an octagon design cut in three parts diagonally.
`
`Class 025. First use: First Use: 2010/07/01 First Use In Commerce: 2010/07/01
`Belts; Bottoms; Coats; Dresses; Footwear; Gloves; Headwear; Jackets; Loun-
`gewear; Scarves; Sleepwear; Socks; Sweatbands;Swimwear; Tops; Undergar-
`ments; Warm up suits
`
`U.S. Application
`No.
`
`86417293
`
`Application Date
`
`10/07/2014
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`ULTIMATE FIGHTING CHAMPIONSHIP
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a man with right fist raised standing behind the earth with a
`banner with the text "ULTIMATE FIGHTING CHAMPIONSHIP" written across it
`waving across the earth, with three triangles pointing to the man, all in front of
`an octagon shaped cage.
`
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`Belts; Bottoms; Coats; Dresses; Footwear; Gloves; Headwear; Jackets; Loun-
`gewear; Scarves; Sleepwear; Socks; Sweatbands;Swimwear; Tops; Undergar-
`ments; Warm up suits
`
`U.S. Registration
`No.
`
`5046119
`
`Registration Date
`
`09/20/2016
`
`Application Date
`
`10/07/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`ULTIMATE FIGHTING CHAMPIONSHIP
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a man with right fist raised standing behind the earth with a
`banner with the text "ULTIMATE FIGHTING CHAMPIONSHIP" written across it
`waving across the earth, with three triangles pointing to the man, all in front of
`an octagon shaped cage.
`
`Class 041. First use: First Use: 1995/12/16 First Use In Commerce: 1995/12/16
`Entertainment in the nature of multi-disciplined fighting competitions; organizing,
`arranging and conducting mixed martial arts fighting exhibitions and competi-
`tions; entertainment, namely, live stage shows and performances featuring
`sports and mixed martial arts; entertainment in the nature of on-going programs
`in the field of sports and mixed martial artsbroadcast over television, cable,
`satellite, Internet and audio and visual media; production of on-going entertain-
`ment shows and interactive entertainment programs for distribution via televi-
`sion, cable, satellite, Internet, audio and visual media and electronic means
`
`U.S. Registration
`No.
`
`2981638
`
`Registration Date
`
`08/02/2005
`
`Application Date
`
`09/30/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`UFC ULTIMATE FIGHTING CHAMPIONSHIP
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2001/09/00 First Use In Commerce: 2001/09/00
`gloves
`
`U.S. Registration
`No.
`
`4832373
`
`Registration Date
`
`10/13/2015
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`07/25/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`The mark consists of an octagon design cut in three parts diagonally.
`
`Goods/Services
`
`Class 009. First use: First Use: 2013/08/01 First Use In Commerce: 2013/08/01
`
`

`

`Headphones
`
`U.S. Registration
`No.
`
`4706148
`
`Registration Date
`
`03/24/2015
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`03/07/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a three-dimensional configuration of an octagon-shaped
`cage or ring. The doors into the ring and the chain link fencing shown in broken
`lines serve to show functional elements and form no part of the mark.
`
`Class 041. First use: First Use: 1993/11/00 First Use In Commerce: 1993/11/00
`Entertainment, namely, live stage showsand performances featuring sports and
`mixed martial arts; entertainment in the nature of an on-going multimedia pro-
`gramin the field of sports and mixed martial arts; health club services, namely,
`providing fitness, personal training and exercise facilities and equipment; provid-
`ing instruction in the fields of fitness, personal training, exercise and mixed mar-
`tial arts; providing instructional programs and classes in fields of fitness,personal
`training, exercise and mixed martial arts; arranging, organizing, conducting and
`hosting mixed martial arts exhibitions; arranging, organizing, conducting and
`hosting classes, seminars, and workshops on physical fitness, sports and mixed
`martial arts
`
`U.S. Registration
`No.
`
`2098577
`
`Registration Date
`
`09/23/1997
`
`Word Mark
`
`NONE
`
`Application Date
`
`04/27/1995
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of an eight-sided competition mat.
`
`Class 041. First use: First Use: 1993/11/00 First Use In Commerce: 1993/11/00
`entertainment in the nature of multi-disciplined fighting competitions
`
`U.S. Registration
`No.
`
`4544845
`
`Registration Date
`
`06/03/2014
`
`Word Mark
`
`Design Mark
`
`THE ULTIMATES 2013
`
`Application Date
`
`04/12/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the words "THE ULTIMATES 2013" superimposed over an
`octagon design, and a smaller octagon design cut into three parts diagonally un-
`der thewording.
`
`Class 041. First use: First Use: 2013/07/05 First Use In Commerce: 2013/07/05
`Arranging, organizing, conducting, and hosting entertainment events for mixed
`martial arts and sports fans; arranging, organizing, conducting and hosting
`mixedmartial arts, martial arts, wrestling, grappling, kickboxing and boxing ex-
`hibitions, competitions and tournaments; entertainment services, namely, per-
`sonal appearances by mixed martial arts fighters,athletes, models and celebrit-
`ies; education and training services in the natureof physical fitness, sports and
`mixed martial arts; arranging, organizing, conducting and hosting classes, sem-
`inars, conferences, workshops on physical fitness, sports and mixed martial arts;
`and providing a website featuring information about sports and mixed martial
`arts
`
`U.S. Registration
`No.
`
`3650069
`
`Registration Date
`
`07/07/2009
`
`Application Date
`
`09/29/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`UFC FIGHT NIGHT LIVE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2008/07/19 First Use In Commerce: 2008/07/19
`Entertainment services, namely, arranging and conducting mixed martial arts
`competitions and events; providing information regarding mixed martial arts; pro-
`duction of programs featuring mixed martialarts competitions and events for dis-
`tribution over television, cable, satellite, audio and global computer networks
`
`U.S. Registration
`No.
`
`3052007
`
`Registration Date
`
`01/31/2006
`
`Application Date
`
`05/01/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`UFC ULTIMATE FIGHTING CHAMPIONSHIP
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`Entertainment, namely live stage shows and performances featuring mixed mar-
`tialarts; educational services, namely, providing information on the subject of
`sports and entertainment; providing a website on global computer networks fea-
`turinginformation on the subject of sports and entertainment; production of enter-
`tainment shows and interactive entertainmentprograms for distribution via televi-
`sion, cable, satellite, audio and video media cartridges, laser discs, computer
`discs and electronic means; production and distribution of entertainment shows
`and news programs via global communication networks
`
`U.S. Registration
`No.
`
`4634371
`
`Registration Date
`
`11/04/2014
`
`Word Mark
`
`Design Mark
`
`UFC
`
`Application Date
`
`09/04/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of an octagon design cut in three parts diagonally with the
`stylized letters "UFC"' to the right of the design.
`
`Class 028. First use: First Use: 2013/09/01 First Use In Commerce: 2013/09/01
`exercise weights; exercise bars; exercise and fitness equipment and accessor-
`ies, namely, personal exercise mats and exercise gloves; boxing and mixed
`martial arts equipment, namely, bag gloves, mixedmartial arts gloves, boxing
`gloves, focus mitts, punching mitts, shin guards, punching bags, heavy bags,
`free standing bags; pads for use in boxing and mixed martial arts, namely, kick
`pads, target pads, Thai pads and shin pads; head guards, chest protectors, and
`body shields for use in mixed martial arts and boxing; playing cards
`
`

`

`U.S. Registration
`No.
`
`4889724
`
`Registration Date
`
`01/19/2016
`
`Word Mark
`
`Design Mark
`
`OCTAGON
`
`Application Date
`
`09/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2013/09/01 First Use In Commerce: 2013/09/01
`sports shirts; muscle shirts; bathing suits; tank tops; shorts; board shorts;
`workout and sports apparel, namely, shorts and shirts; leggings; bicycle shorts;
`shorts and tops for martial arts, mixed martial arts and submission wrestling
`
`U.S. Registration
`No.
`
`4760462
`
`Registration Date
`
`06/23/2015
`
`Word Mark
`
`Design Mark
`
`OCTAGON GIRL
`
`Application Date
`
`06/05/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2006/01/01 First Use In Commerce: 2006/01/01
`Clothing, namely, halters, tank tops, bathing suits, sports bras, underwear, and
`other shirts, shorts
`
`U.S. Registration
`No.
`
`4026333
`
`Registration Date
`
`09/13/2011
`
`Word Mark
`
`OCTAGON GIRLS
`
`Application Date
`
`04/06/2007
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2009/05/00 First Use In Commerce: 2009/05/00
`Clothing, namely, tank tops, shorts andunderwear
`
`U.S. Registration
`No.
`
`4827555
`
`Registration Date
`
`10/06/2015
`
`Word Mark
`
`Design Mark
`
`OCTAGON
`
`Application Date
`
`07/25/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of an octagon design cut in three parts diagonally with the
`stylized word "OCTAGON" to the right of the design.
`
`Class 009. First use: First Use: 2013/08/01 First Use In Commerce: 2013/08/01
`Headphones
`
`U.S. Registration
`No.
`
`4832372
`
`Registration Date
`
`10/13/2015
`
`Word Mark
`
`Design Mark
`
`OCTAGON
`
`Application Date
`
`07/25/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2013/08/01 First Use In Commerce: 2013/08/01
`Headphones
`
`

`

`U.S. Registration
`No.
`
`4037431
`
`Registration Date
`
`10/11/2011
`
`Application Date
`
`09/14/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`OCTAGON
`
`NONE
`
`Class 028. First use: First Use: 2009/07/10 First Use In Commerce: 2009/07/10
`Toys, consisting of toy action figures,mechanical action toys, electronic action
`toys, action figures and accessories therefor; Toys, namely, play sets and action
`figures associated with the field of mixed martial arts
`
`U.S. Registration
`No.
`
`4372981
`
`Registration Date
`
`07/23/2013
`
`Word Mark
`
`Design Mark
`
`OCTAGON
`
`Application Date
`
`05/11/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1993/11/12 First Use In Commerce: 1993/11/12
`Entertainment in the nature of multi-disciplined fighting competitions; organizing,
`arranging and conducting mixed martial arts fighting exhibitions and competi-
`tions; entertainment, namely, live stage shows and performances featuring
`sports and mixed martial arts; entertainment in the nature of on-going programs
`in the field of sports and mixed martial artsbroadcast over television, cable,
`satellite, Internet and audio and visual media; production of on-going entertain-
`ment shows and interactive entertainment programs for distribution via televi-
`sion, cable, satellite, Internet, audio and visual media and electronic means;
`providingnews and information in the fields of entertainment, sports and mixed
`martial arts; providing a website featuring information on the subjects of enter-
`tainment,sports and mixed martial arts; on-line electronic newsletters and news-
`letters delivered by email in the field of current events; news and information
`featuringsports, mixed martial arts and entertainment; health club services,
`namely, providing instruction and equipment in the field of physical exercise;
`providing fitness and exercise facilities; physical fitness consultation, instruction
`and training services; conducting fitness classes; physical fitness studio ser-
`vices, namely, providing exercise classes, body sculpting classes and group fit-
`ness classes; providing a web site featuring information on exercise and fitness
`
`U.S. Registration
`No.
`
`3787078
`
`Application Date
`
`08/27/2009
`
`Registration Date
`
`05/11/2010
`
`Foreign Priority
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`OCTAGON
`
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2009/02/21 First Use In Commerce: 2009/02/21
`Providing health club services, namely,providing fitness and exercise facilities;
`instruction services, namely, instruction in the field of health and physical fitness;
`educational services, namely,instruction and training in the fields of fitness and
`nutrition; instruction programs in the field of health and physical fitness, namely,
`providing exercise classes for groups of individuals
`
`U.S. Registration
`No.
`
`4400446
`
`Registration Date
`
`09/10/2013
`
`Word Mark
`
`Design Mark
`
`OCTAGON GIRL
`
`Application Date
`
`06/05/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2008/06/05 First Use In Commerce: 2008/06/05
`Event programs, trading cards, calendars, greeting cards, photographs
`Class 035. First use: First Use: 2005/01/18 First Use In Commerce: 2005/01/18
`online retail store featuring clothing,calendars, greeting cards, trading cards, and
`other mixed martial arts merchandise; promoting the night club and party ser-
`vices of others and modeling for marketing and sales promotion
`Class 041. First use: First Use: 2002/11/22 First Use In Commerce: 2002/11/22
`Entertainment services, namely, professional ring card girls and models that dis-
`play ring cards at live mixed martial arts events and provide interviews; nightclub
`services and entertainment services, namely, party services including parties as-
`sociated with mixed martial arts entertainment events; and fan club services
`
`U.S. Registration
`
`3931260
`
`Application Date
`
`04/06/2007
`
`

`

`No.
`
`Registration Date
`
`03/15/2011
`
`Word Mark
`
`Design Mark
`
`OCTAGON GIRLS
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1994/03/11 First Use In Commerce: 1994/03/11
`Entertainment services in the nature ofmodeling performances during martial
`arts competitions
`
`U.S. Registration
`No.
`
`4396410
`
`Registration Date
`
`09/03/2013
`
`Application Date
`
`08/10/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`THE OCTAGON OF POKER
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2013/04/13 First Use In Commerce: 2013/04/13
`Entertainment and gaming services, namely, arranging, organizing and provid-
`ing online games of chance and online card games and providing live games of
`chance and live card games; entertainment services, namely, conducting gam-
`ing contests and tournaments; entertainment services,namely, arranging, organ-
`izing and conducting online gaming contests and tournaments
`
`U.S. Registration
`No.
`
`4396411
`
`Registration Date
`
`09/03/2013
`
`Application Date
`
`08/10/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`THE OCTAGON OF POKER
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2013/04/13 First Use In Commerce: 2013/04/13
`Computer services, namely, creating andmaintaining an online community for
`registered users to participate in contests, tournaments, games of chance and
`card games, showcase their skills, get feedback from peers and participate in
`discussions, form virtual communities, engage in social networking and improve
`their skills
`
`U.S. Registration
`No.
`
`4396414
`
`Registration Date
`
`09/03/2013
`
`Word Mark
`
`Design Mark
`
`POKER OCTAGON
`
`Application Date
`
`08/21/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2013/04/13 First Use In Commerce: 2013/04/13
`Entertainment and gaming services, namely, arranging, organizing and provid-
`ing online games of chance and online card games and providing live games of
`chance and live card games; entertainment services, namely, conducting gam-
`ing contests and tournaments; entertainment services,namely, arranging, organ-
`izing and conducting online gaming contests and tournaments
`
`U.S. Registration
`No.
`
`4396415
`
`Registration Date
`
`09/03/2013
`
`Word Mark
`
`POKER OCTAGON
`
`Application Date
`
`08/21/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2013/04/13 First Use In Commerce: 2013/04/13
`Computer services, namely, creating andmaintaining an online community for
`registered users to participate in contests, tournaments, games of chance and
`card games, showcase their skills, get feedback from peers and participate in
`discussions, form virtual communities, engage in social networking and improve
`their skills
`
`U.S. Registration
`No.
`
`3598929
`
`Registration Date
`
`03/31/2009
`
`Application Date
`
`06/18/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`IF IT'S NOT IN THE OCTAGON IT'S NOT REAL
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2005/05/31 First Use In Commerce: 2005/05/31
`Entertainment services, namely, arranging and conducting mixed martial arts
`competitions and events; providing information regarding mixed martial arts; pro-
`duction of programs featuring mixed martialarts competitions and events for tele-
`vision, cable, satellite, audio and globalcomputer networks
`
`U.S. Registration
`No.
`
`3431804
`
`Registration Date
`
`05/20/2008
`
`Application Date
`
`06/18/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`IF IT'S NOT IN THE OCTAGON IT'S NOT REAL
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 009. First use: First Use: 2006/12/12 First Use In Commerce: 2006/12/12
`digital video discs and digital versatile discs featuring mixed martial arts compet-
`itions, events and programs
`
`86356955#TMSN.png( bytes )
`85246463#TMSN.png( bytes )
`86417293#TMSN.png( bytes )
`86417316#TMSN.png( bytes )
`76977283#TMSN.png( bytes )
`86019719#TMSN.png( bytes )
`85870001#TMSN.png( bytes )
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`76402817#TMSN.png( bytes )
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`77819022#TMSN.png( bytes )
`77753015#TMSN.png( bytes )
`77150645#TMSN.png( bytes )
`86019710#TMSN.png( bytes )
`86019701#TMSN.png( bytes )
`85318709#TMSN.png( bytes )
`77814508#TMSN.png( bytes )
`77983490#TMSN.png( bytes )
`77150655#TMSN.png( bytes )
`77800948#TMSN.png( bytes )
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`77810566#TMSN.png( bytes )
`77810571#TMSN.png( bytes )
`76978943#TMSN.png( bytes )
`76978761#TMSN.png( bytes )
`FINAL_Notice_of_Opposition_to_Octagon_Shape.pdf(158617 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`
`/Michael N. Feder/
`
`Name
`
`Date
`
`Michael N. Feder
`
`10/12/2016
`
`

`

`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Zuffa, LLC, a Nevada limited liability
`company,
`
`
`
`
`
`Brian Goff, an individual,
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`Opposer,
`
`Applicant.
`
`
`Mark:
`
`
`
`
`Ser. No.: 86/896,278
`Published: June 14, 2016
`Class: 25
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Pursuant to 15 U.S.C. § 1063 and 37 C.F.R. §§ 2.101 and 2.104(a), Opposer Zuffa, LLC
`
`(“Zuffa”), a Nevada limited liability company with its principal place of business at 2960 W.
`
`Sahara Avenue, Las Vegas, Nevada 89102, believes it will be damaged by registration of the
`
`above referenced mark in International Class 25 for “[d]resses; [h]ats; [p]ants; [s]hirts; [s]horts;
`
`[b]ottoms; [t]ops (Serial No. 86/896,278) (“Opposed Mark”), which was published on June 14,
`
`2016, and hereby opposes the same.
`
`
`
`As grounds for its opposition, Zuffa alleges as follows:
`
`1.
`
`Zuffa is informed and believes and thereupon alleges, that Brian Goff
`
`(“Applicant”) is an individual, having an address of 1901 Logan Ave S., Minneapolis, Minnesota
`
`55403.
`
`2.
`
`Zuffa owns the Ultimate Fighting Championship brand and is one of the world’s
`
`leading promoters of mixed martial arts (“MMA”) competitions and events.
`
`3.
`
`Zuffa and/or Zuffa’s predecessor-in-interest first began using the
`
`trademark in connection with MMA and sports-related goods and services since at least as early
`
`as November 1993.
`
`

`

`4.
`
`Zuffa and/or Zuffa’s predecessor-in-interest first began using the OCTAGON
`
`Marks in connection with clothing goods at least as early as September 2001.
`
`5.
`
`Zuffa organizes and produces live and televised fights featuring mixed martial
`
`arts competitions, provides instruction in field of physical fitness and exercise and sells
`
`merchandise, including clothing, under its
`
` mark, other OCTAGON design marks,
`
`OCTAGON word marks, and numerous other OCTAGON-formative marks (collectively,
`
`“OCTAGON Marks”).
`
`6.
`
`Television content containing one or more of Zuffa’s OCTAGON Marks is
`
`broadcast in over 149 countries/territories, in 20 different languages, reaching over a half-a-
`
`billion households.
`
`7.
`
`Zuffa’s Pay-Per-View events, which contain the OCTAGON Marks, are viewed
`
`by millions of people each year around the world.
`
`8.
`
`Between 2010 and 2016, Zuffa’s global sales for goods and services, which
`
`contain the UFC and OCTAGON Marks, totaled in excess of 3.3 Billion Dollars.
`
`9.
`
`Zuffa has spent, and continues to invest, a substantial amount of time, resources
`
`and money in protecting, advertising and promoting the OCTAGON Marks.
`
`10.
`
`Zuffa’s OCTAGON Marks are advertised and promoted not only in the U.S., but
`
`also internationally, using a wide range of methods and forums including television, radio, print
`
`media, billboards, publicity tours, expos, shows, the Internet, social media, cross-promotions,
`
`celebrity endorsement, e-newsletters and more.
`
`11.
`
`Between 2010 and 2016, Zuffa expended over Two Hundred Thirty Five Million
`
`Dollars ($235,000,000) in advertising its UFC and OCTAGON Marks in the U.S. alone.
`
`12.
`
`Zuffa has a prominent online presence. Its website, www.ufc.com, which
`
`provides for online shopping, including the sale of OCTAGON branded merchandise and
`
`clothing, attracts more than 8 million visits monthly.
`
`13.
`
`Between 2006 and 2016, Zuffa generated over Thirty Seven Million Dollars
`
`($37,000,000) in profits from e-commerce product sales worldwide for goods bearing its UFC
`
`

`

`and OCTAGON Marks.
`
`14.
`
`Between 2010 and 2014, Zuffa generated over 1.4 Billion Dollars in revenues
`
`from the U.S. sales of Zuffa’s products and services sold in connection with its UFC and
`
`OCTAGON Marks.
`
`15.
`
`As a result of Zuffa’s long-time use of its OCTAGON Marks, the OCTAGON
`
`Marks have become exclusively associated with Zuffa’s goods and services, bearing the
`
`OCTAGON Marks, which are immediately identified by consumers as originating from Zuffa.
`
`16.
`
`Zuffa’s rights in and to the OCTAGON Marks are evidenced by its ownership of
`
`numerous trademark registrations prior-filed trademark applications for its OCTAGON Marks,
`
`including a registration for
`
` in Class 25 for “[b]elts; [b]ottoms; [c]oats; [d]resses; gloves;
`
`headwear; jackets; loungewear; scarves; sleepwear; socks; sweatbands; swimwear; tops;
`
`undergarments; warm up suits” (Reg. No. 4,372,982).
`
`17.
`
`Zuffa also owns numerous additional trademark registrations and applications for
`
`its famous and distinctive Octagon Design and marks incorporating the Octagon Design for
`
`clothing and a wide variety of other sports and fitness-related goods and services, including the
`
`following:
`
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`, Class 41, Ser. No. 86/356,955, Filed August 4, 2014;
`
`, Class 25, Reg. No. 4,222,605, Registered October 9, 2012;
`
`, Class 25, Ser. No. 86/417,293, Filed October 7, 2014;
`
`, Class 41, Ser. No. 86/417,316, Filed October 7, 2014;
`
`, Class 25, Reg. No. 2,981,638, Registered August 2, 2005;
`
`, Class 9 , Reg. No. 4,832,373, Registered October 13, 2015;
`
`

`

`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`, Class 41, Reg. No. 4,706,148, Registered March 24, 2015;
`
`, Class 41, Reg. No. 2,098,577, Registered September 23, 1997;
`
`, Class 41 , Reg. No. 4,544,845, Registered June 3, 2014;
`
`, Class 41, Reg. No. 3,650,069, Registered July 7, 2009; and
`
`, Class 41, Reg. No. 3,052,007, Registered January 31, 2006.
`
` in Class 28 for exercise weights; exercise bars; exercise and
`
`fitness equipment and accessories, namely, personal exercise mats and exercise
`
`gloves; boxing and mixed martial arts equipment, namely, bag gloves, mixed
`
`martial arts gloves, boxing gloves, focus mitts, punching mitts, shin guards,
`
`punching bags, heavy bags, free standing bags; pads for use in boxing and mixed
`
`martial arts, namely, kick pads, target pads, Thai pads and shin pads; head guards,
`
`chest protectors, and body shields for use in mixed martial arts and boxing;
`
`playing cards (Reg. No. 4,634,371)
`
`18.
`
`Zuffa also owns numerous registrations and prior-filed applications for its
`
`OCTAGON Marks, in standard character and stylized format, for clothing and a variety of sports
`
`and fitness-related goods and services including:
`
`• OCTAGON, Class 25, Reg. No. 4,889,724, Registered September 2, 2009;
`
`• OCTAGON GIRL, Class 25, Reg. No. 4,760,462, Registered June 23, 2015;
`
`• OCTAGON GIRLS, Class 25, Reg. No. 4,026,333, Registered September 13,
`
`2011;
`
`•
`
`October 6, 2015;
`
`, Class 9, Reg. No. 4,827,555, Registered
`
`

`

`• OCTAGON, Class 9, Reg. No. 4,832,372, Registered October 13, 2015;
`
`• OCTAGON, Class 28, Reg. No. 4,037,431, Registered October 11, 2011;
`
`• OCTAGON, Class 41, Reg. No. 4,372,981, Registered July 23, 2013;
`
`• OCTAGON, Class 41, Reg. No. 3,787,078, Registered May 11, 2010;
`
`• OCTAGON GIRL, Classes 16, 35, and 41, Reg. No. 4,400,446, Registered
`
`September 10, 2013;
`
`• OCTAGON GIRLS, Class 41, Reg. No. 3,931,260, Registered March 15, 2011;
`
`• THE OCTAGON OF POKER, Class 41, Reg. No. 4,396,410, Registered
`
`September 3, 2013;
`
`• THE OCTAGON OF POKER, Class 42, Reg. No. 4,396,411, Registered
`
`September 3, 2013;
`
`• POKER OCTAGON, Class 41, Reg. No. 4,396,414, Registered September 3,
`
`2013;
`
`• POKER OCTAGON, Class 42, Reg. No. 4,396,415, Registered September 3,
`
`2013;
`
`• IF IT’S NOT IN THE OCTAGON IT’S NOT REAL, Class 41, Reg. No.
`
`3,598,929, Registered March 31, 2009; and
`
`• IF IT’S NOT IN THE OCTAGON IT’S NOT REAL, Class 9, Reg. No.
`
`3,431,804, Registered May 20, 2008.
`
`19.
`
`Because of Zuffa’s significant investment in its OCTAGON Marks, the
`
`OCTAGON Marks have acquired fame, distinctiveness and tremendous goodwill in the United
`
`States and throughout the world.
`
`20.
`
`On or about February 3, 2016, Applicant filed an intent-to-use trademark
`
`application for the Opposed Mark for clothing, namely, “[d]resses; [h]ats; [s]hirts; [s]horts;
`
`[b]ottoms; [t]ops;” the application was assigned Serial No. 86/896,278.
`
`Applicant’s Mark is Likely to Cause Consumer Confusion
`
`21.
`
`Zuffa hereby re-adopts and re-alleges the allegations contained in the preceding
`
`

`

`paragraphs as though fully set forth herein.
`
`22.
`
`Applicant filed the application for the Opposed Mark more than two decades after
`
`Zuffa’s rights in the OCTAGON Marks first arose, which was at least as early as 1993.
`
`23.
`
`As a result of Zuffa’s extensive use of the OCTAGON Marks in interstate
`
`commerce in the United States and throughout the world, the public has come to associate goods
`
`and services bearing the OCTAGON Marks with Zuffa alone.
`
`24.
`
`The Opposed Mark is highly similar to and incorporates Zuffa’s
`
` mark.
`
`25.
`
`The Opposed Mark conveys the same commercial impression as Zuffa’s
`
`
`
`mark.
`
`26.
`
`The Opposed Mark is identical and/or confusingly similar to Zuffa’s other
`
`OCTAGON Marks.
`
`27.
`
`Zuffa currently offers clothing under its OCTAGON Marks.
`
`28.
`
`The clothing identified in the application for the Opposed Mark, namely, dresses,
`
`hats, pants, shirts, shorts, bottoms and tops, is identical or substantially similar to the goods
`
`offered in connection with Zuffa’s OCTAGON Marks and which are identified in Zuffa’s
`
`registration for its
`
` in Class 25 (Reg. No. 4,372,982).
`
`29.
`
`The Applicant is seeking registration for the Opposed Mark in connection with
`
`goods that are marketed and sold in the same or similar channels of trade, and are purchased by
`
`the same or substantially similar classes of consumers as the goods and services offered by Zuffa
`
`under the OCTAGON Marks.
`
`30.
`
`Zuffa is informed and believes, and thereupon alleges, Applicant is deliberately
`
`seeking to profit from the goodwill and popularity of Zuffa’s OCTAGON Marks
`
`31.
`
`Because: (1) Zuffa is the senior user; (2) the Opposed Mark is identical and/or
`
`confusingly similar to Zuffa’s OCTAGON Marks; (3) Applicant seeks registration for the
`
`Opposed Mark for goods that are identical and/or highly related to Zuffa’s goods and services;
`
`and (4) the channels of trade and customer base for Zuffa’s goods and services and Applicant’s
`
`

`

`goods are the same and/or overlap, the Opposed Mark is likely to cause confusion, or to cause
`
`mistake, or to deceive consumers.
`
`32.
`
`Zuffa will be damaged by the regi