Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA492919
`ESTTA Tracking number:
`09/06/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92056020
`Plaintiff
`Zuffa, LLC
`MICHAEL N FEDER
`GORDON SILVER LTD
`3960 HOWARD HUGHES PARKWAY , 9TH FLOOR
`LAS VEGAS, NV 89169
`UNITED STATES
`TRADEMARKS@GORDONSILVER.COM
`Other Motions/Papers
`Michael N. Feder
`trademarks@gordonsilver.com
`/Michael N. Feder/
`09/06/2012
`Notice of Ineffective Service.pdf ( 14 pages )(54051 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA492919
`ESTTA Tracking number:
`09/06/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92056020
`Plaintiff
`Zuffa, LLC
`MICHAEL N FEDER
`GORDON SILVER LTD
`3960 HOWARD HUGHES PARKWAY , 9TH FLOOR
`LAS VEGAS, NV 89169
`UNITED STATES
`TRADEMARKS@GORDONSILVER.COM
`Other Motions/Papers
`Michael N. Feder
`trademarks@gordonsilver.com
`/Michael N. Feder/
`09/06/2012
`Notice of Ineffective Service.pdf ( 14 pages )(54051 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92056020
`
`Mark
`
`PREMIER
`CHAMPIONSHIP
`FIGHTING
`
`3539442
`
`December 2, 2008
`
`
`Reg. No.
`
`Date Registered
`
`
`
`
`
`
`
`
`Petitioner,
`
`v.
`
`
`
`Respondent.
`
`
`
`Zuffa, LLC, a Nevada limited liability
`company,
`
`
`
`
`
`
`
`
`
`
`
`
`Premier Championship Fighting, LLC, a
`Colorado Limited Liability Company,
`
`NOTICE OF INEFFECTIVE SERVICE
`
`On August 13, 2012, Petitioner, Zuffa, LLC ("Zuffa"), forwarded the Petition to Cancel
`
`attached hereto as Exhibit 1 to Registrant’s correspondence address of record. On August 27,
`
`2012, the Petition to Cancel was returned to Zuffa’s counsel as undeliverable.
`
`On August 30, 2012, the Board provided a new address for the Registrant. Zuffa is
`
`forwarding the Petition to Cancel to the new address.
`
`Dated: September 6, 2012
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`GORDON SILVER
`
`/Michael N. Feder/
`Michael N. Feder, Esq.
`Jennifer Ko Craft, Esq.
`Andrew D. Sedlock, Esq.
`3960 Howard Hughes Parkway, Ninth Floor
`Las Vegas, Nevada 89169
`trademarks@gordonsilver.com
`(702) 796-5555 (phone)
`(702) 947-9684 (fax)
`Attorneys for Petitioner,
`Zuffa, LLC
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that, on this 6th day of September, 2012, a true and complete copy of the
`
`foregoing Notice of Ineffective Service has been served by United States mail, first class postage
`
`prepaid, on the following correspondent of record for Registrant:
`
`
`
`
`
`
`
`
`
`
`_/Katie Sitto/________________
`An employee of Gordon Silver Ltd.
`
`Jeffrey Smith
`6930 South Waco Street
`Foxfield, CO 80016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Exhibit 1
`Exhibit 1
`
`
`
`Exhibit 1
`Exhibit 1
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Zuffa, LLC, a Nevada limited liability
`company,
`
`PREMIER
`CHAMPIONSHIP
`FIGHTING
`
`3539442
`
`December 2, 2008
`
`
`Mark
`
`
`Reg. No.
`
`Date Registered
`
`
`
`
`
`
`
`
`Petitioner,
`
`v.
`
`
`
`Respondent.
`
`
`
`
`
`
`
`
`
`
`
`
`Premier Championship Fighting, LLC, a
`Colorado Limited Liability Company,
`
`PETITION TO CANCEL
`
`Petitioner, Zuffa, LLC ("Zuffa"), believes that it will be damaged by Registration No.
`
`3539442 for the mark PREMIER CHAMPIONSHIP FIGHTING in International Class 41 for the
`
`goods and services that include "ultimate fighting," and hereby petitions to cancel the same. As
`
`grounds for its petition, Zuffa alleges as follows:
`
`1. Petitioner Zuffa is a Nevada limited liability company with its principal place of
`
`business at 2960 W. Sahara Avenue, Las Vegas, Nevada 89102.
`
`2. To the best of Zuffa's knowledge, the current owner of the contested
`
`registration is Premier Championship Fighting LLC, 3535 Boodel Circle, Elizabeth, CO 80107.
`
`3. The grounds for cancellation are as follows:
`
`(a)
`
`(b)
`
`(c)
`
`The registration at issue was obtained contrary to the provisions of 15 U.S.C. §
`1052(d), in that it is likely to cause confusion, or to cause mistake, or to deceive;
`
`The registration at issue was obtained contrary to the provisions of 15 U.S.C. §
`1125(c), in that it dilutes the famous and distinctive quality of Zuffa’s marks; and
`
`The registration at issue was obtained contrary to the provisions of 15 U.S.C. §
`1052(a), in that it falsely suggests a connection with Zuffa.
`
`102800-005/1299867
`
`
`
`4. Zuffa owns the ULTIMATE FIGHTING CHAMPIONSHIP brand and is one of the
`
`world’s leading promoters of mixed martial arts ("MMA") competitions and events.
`
`5. Zuffa offers a wide variety of goods and services under Zuffa's ULTIMATE
`
`FIGHTING, THE ULTIMATE FIGHTING CHAMPIONSHIP, ULTIMATE FIGHTING
`
`CHAMPIONSHIP, UFC ULTIMATE FIGHTING CHAMPIONSHIP, THE ULTIMATE
`
`FIGHTER, ULTIMATE FIGHT NIGHT, and other ULTIMATE-formative marks (collectively,
`
`the "ULTIMATE Formative Marks"), including, but not limited to, sports and entertainment
`
`services (such as MMA competitions, events, promotions and television programs), CDs, DVDs,
`
`computer programs and other pre-recorded media featuring sports and entertainment content,
`
`publications and printed materials, apparel and apparel accessories, souvenir items, sports,
`
`exercise and fitness equipment and accessories, energy drinks, nutritional supplements and
`
`drinks, vitamins and credit cards.
`
`6. Zuffa owns numerous federal trademark registrations for the ULTIMATE Formative
`
`Marks in International Classes 41, 9, 16, 25, 28, 44 and others, including the following:
`
`(a) ULTIMATE FIGHTING in International Class 41 for entertainment, namely
`
`live stage shows and performances featuring sports and mixed martial arts
`
`(U.S. Reg. No. 3047189);
`
`(b) ULTIMATE FIGHTING in International Class 9 for compact discs, laser
`
`video discs, digital video discs, digital versatile discs and CD-ROM discs, all
`
`featuring sports events and mixed martial arts; computer software for
`
`programming video games in the fields of sports and entertainment; video
`
`game cartridges and discs; computer game cartridges (U.S. Reg. No.
`
`2925669);
`
`102800-005/1299867
`
`
`
`(c) ULTIMATE FIGHTING in International Class 9 for pre-recorded video
`
`cassettes featuring sports events and mixed martial arts; computer game
`
`programs (U.S. Reg. No. 3226285);
`
`(d) ULTIMATE FIGHTING in International Class 16 for souvenir event
`
`programs featuring sports events and mixed martial arts; posters (U.S. Reg.
`
`No. 3022840);
`
`(e) ULTIMATE FIGHTING in Class 16 for trading cards; decals and windshield
`
`decal strips (U.S. Reg. No. 2960665);
`
`(f) THE ULTIMATE FIGHTING CHAMPIONSHIP in International Class 41 for
`
`entertainment services, namely conducting martial arts competitions, events
`
`and personal appearances for live and prerecorded transmission by means of
`
`cable, broadcast, satellite and other media (U.S. Reg. No. 1939277);
`
`(g) ULTIMATE FIGHTING CHAMPIONSHIP in International Class 41 for
`
`providing health club services, namely, providing fitness and exercise
`
`facilities (U.S. Reg. No. 4099296);
`
`(h) THE ULTIMATE FIGHTER in International Class 41 for entertainment in the
`
`nature of an on-going television program in the field of sports and mixed
`
`martial arts (U.S. Reg. No. 3038488);
`
`(i) ULTIMATE FIGHT NIGHT in International Class 41 for entertainment,
`
`namely live stage shows and performances featuring sports and mixed martial
`
`arts; entertainment in the nature of an on-going television program in the field
`
`of sports and mixed martial arts (U.S. Reg. No. 3140717);
`
`102800-005/1299867
`
`
`
`(j)
`
`in International Class 41 for entertainment, namely live
`
`stage shows and performances featuring mixed martial arts; educational
`
`services, namely, providing information on the subject of sports and
`
`entertainment; providing a website on global computer networks featuring
`
`information on the subject of sports and entertainment; production of
`
`entertainment shows and interactive entertainment programs for distribution
`
`via television, cable, satellite, audio and video media cartridges, laser discs,
`
`computer discs and electronic means; production and distribution of
`
`entertainment shows and news programs via global communication networks
`
`(U.S. Reg. No. 3052007);
`
`(k) ULTIMATE FIGHTING CHAMPIONSHIP in International Class 28 for
`
`exercise and fitness equipment and accessories, namely, personal exercise
`
`mats; weight lifting gloves; martial arts equipment, namely, bag gloves, focus
`
`mitts, punching mitts, shin guards, punching bags, heavy bags, free standing
`
`bags; pads for use in boxing and martial arts, namely, kick pads, target pads,
`
`thai pads and shin pads; karate target pads (U.S. Reg. No. 3792144);
`
`(l)
`
`in International Class 28 for martial arts gloves; karate
`
`gloves; wrestling gloves; and boxing gloves (U.S. Reg. No. 3044208);
`
`(m) THE ULTIMATE FIGHTING CHAMPIONSHIP in International Class 9 for
`
`prerecorded compact disks; audio
`
`tapes featuring music, sports and
`
`102800-005/1299867
`
`
`
`entertainment; computer hardware and computer software programs for
`
`database management in the field of sports and entertainment; prerecorded
`
`audio tapes featuring sports and entertainment events (U.S. Reg. No.
`
`2576367);
`
`(n)
`
`in International Class 9 for prerecorded video optical
`
`disks featuring sports and entertainment events; prerecorded audio and
`
`videotapes featuring sports and entertainment events (U.S. Reg. No.
`
`2170463);
`
`(o) THE ULTIMATE FIGHTER in International Class 9 for laser video discs,
`
`digital video discs, digital versatile discs and CD-ROM discs, all featuring
`
`sports events and mixed martial arts (U.S. Reg. No. 3122194); and
`
`(p) THE ULTIMATE FIGHTER in International Classes 9 and 25 for motion
`
`picture films featuring sports events, mixed martial arts and profiles of
`
`athletes (in Class 9); and shorts and tops for martial arts, wrestling, mixed
`
`martial arts; tank tops; warm-up suits, sweatshirts, hooded sweatshirts, sweat
`
`pants; shirts; athletic uniforms; jerseys (in Class 25) (U.S. Registration No.
`
`4129014).
`
`7. Zuffa’s above-referenced federal trademark registrations for ULTIMATE
`
`FIGHTING, THE ULTIMATE FIGHTING CHAMPIONSHIP and UFC ULTIMATE
`
`102800-005/1299867
`
`
`
`FIGHTING CHAMPIONSHIP& Design, corresponding to U.S. Reg. Nos. 3022840; 2960665;
`
`2925669; 1939277; 2576367; 2170463; and 3052007 are incontestable.
`
`8. Zuffa also owns applications for federal trademark registrations of:
`
`(a) ULTIMATE FIGHTING in International Class 41 for health club services,
`
`namely, providing fitness, personal training and exercise facilities; providing
`
`instruction in the fields of fitness, personal training, exercise and mixed
`
`martial arts; providing instructional programs and classes in fields of fitness,
`
`personal training, exercise and mixed martial arts; providing information in
`
`the fields of fitness, personal training, exercise and mixed martial arts via a
`
`global computer network; Providing instruction in the fields of nutrition,
`
`health and wellness (Serial No. 85/367120);
`
`(b) ULTIMATE FIGHTING in International Class 44 for providing information
`
`in the fields of nutrition, health and wellness (Serial No. 85/367123);
`
`(c) THE ULTIMATE FIGHTER in International Class 41 for entertainment in the
`
`nature of an on-going program in the field of sports and mixed martial arts
`
`broadcast over television, cable, satellite, Internet and audio and visual media;
`
`providing on-line newsletters in the fields of current events, news and
`
`information featuring sports, mixed martial arts and entertainment; providing
`
`electronic newsletters delivered by email in the fields of current events, news
`
`and information featuring sports, mixed martial arts and entertainment; and
`
`information services, namely, providing a web site featuring audio, video,
`
`photographic and prose presentations featuring sports, mixed martial arts and
`
`entertainment (Serial No. 85/575140);
`
`102800-005/1299867
`
`
`
`(d) THE ULTIMATE FIGHTER BRASIL in International Class 41 for
`
`entertainment in the nature of an on-going program in the field of sports and
`
`mixed martial arts broadcast over television, cable, satellite, Internet and
`
`audio and visual media; providing on-line newsletters in the fields of current
`
`events, news and information featuring sports, mixed martial arts and
`
`entertainment; providing electronic newsletters delivered by email in the
`
`fields of current events, news and information featuring sports, mixed martial
`
`arts and entertainment; and information services, namely, providing a web site
`
`featuring audio, video, photographic and prose presentations featuring sports,
`
`mixed martial arts and entertainment (Serial No. 85/537061);
`
`(e) ULTIMATE FIGHTING CHAMPIONSHIP in International Class 28 for
`
`exercise and fitness equipment and accessories, namely, ankle and wrist
`
`weights; exercise bars; exercise benches; exercise doorway gym bars; rowing
`
`machines; stair-stepping machines; stationary cycles; abdominal boards; chest
`
`expanders; chest pulls; exercise platforms; trampolines; treadmills; weight
`
`cuffs; weights; manually-operated exercise equipment; stress relief balls for
`
`hand exercise; bar bells for athletic use; weight lifting belts; weight lifting
`
`benches and bench accessories; elliptical machines; jump ropes; fixed-gear
`
`stationary bikes; protective pads for cycling; stationary bicycles for indoor
`
`cycling; group exercise platforms; and hiking machines; martial arts
`
`equipment, namely, kicking shields, head guards, female chest protectors,
`
`groin cups, karate targets, body shields; sparring vests, ankle and hand wraps,
`
`jump ropes, mouth guards, knee pads, and elbow pads (Serial No. 77/727510);
`
`102800-005/1299867
`
`
`
`(f)
`
` in International Class 16 for encyclopedias; publications,
`
`namely, books in the fields of mixed martial arts, sports, entertainment, and
`
`pop culture (Serial No. 85/351672); and
`
`(g)
`
` in International Class 28 for martial arts gloves; karate
`
`gloves; wrestling gloves; boxing gloves (Serial No. 85/531199).
`
`9. Zuffa has made substantial and continuous use of the ULTIMATE Formative Marks
`
`for several years and has expended considerable resources in the protection, enforcement,
`
`advertising and marketing of such marks.
`
`10. By virtue of this continuous and extensive use of the ULTIMATE Formative Marks,
`
`such marks have become invested with substantial goodwill and worldwide recognition and
`
`fame.
`
`11. Premier Championship Fighting LLC ("Registrant" or "Premier") was granted
`
`a registration on December 2, 2008 for PREMIER CHAMPIONSHIP FIGHTING in
`
`International Class 41 for "Entertainment in the nature of competitions in the field of
`
`mixed martial arts, ultimate fighting, cage fighting, and thai fighting" (emphasis added).
`
`12. Premier's use of "ultimate fighting" in the description of the services associated with
`
`the PREMIER CHAMPIONSHIP FIGHTING mark (as shown above) constitutes an improper
`
`use of Zuffa's ULTIMATE Formative Marks as a noun.
`
`13. Premier's registration of the PREMIER CHAMPIONSHIP FIGHTING mark for the
`
`current recitation of the goods and services that includes "ultimate fighting" is likely to cause
`
`102800-005/1299867
`
`
`
`confusion, to cause mistake or to deceive consumers. Premier's recitation of services are the
`
`same as, or similar to, the ULTIMATE Formative Marks.
`
`14. Zuffa’s ULTIMATE Formative Marks were famous before Premier filed its
`
`application for the PREMIER CHAMPIONSHIP FIGHTING mark on August 10, 2007, as
`
`shown in Registration No: 3539442.
`
`15. Premier's registration of the PREMIER CHAMPIONSHIP FIGHTING mark for the
`
`current recitation of goods and services that includes "ultimate fighting" is likely to dilute the
`
`distinctiveness of Zuffa’s ULTIMATE Formative Marks.
`
`16. Zuffa will suffer damage including irreparable injury to its reputation and goodwill if
`
`Premier is permitted to maintain the registration of the PREMIER CHAMPIONSHIP
`
`FIGHTING mark for the current recitation of goods and services that includes "ultimate
`
`fighting."
`
`[Remainder of page intentionally left blank]
`
`102800-005/1299867
`
`
`
`REQUESTED RELIEF
`
`WHEREFORE, Petitioner believes that it will be damaged and has been damaged by the
`
`Registration No. 3539442 for PREMIER CHAMPIONSHIP FIGHTING and prays that it be
`
`canceled.
`
`Petitioner submits this Petition to Cancel via the e-filing procedure of the Trademark
`
`Trial and Appeal Board, and hereby authorizes the charge for the appropriate filing fee of
`
`$300.00 to the firm credit card of the undersigned. Please direct all notices, pleadings, orders,
`
`and correspondence in this matter to the undersigned counsel.
`
`
`
`Dated: August 13, 2012
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`GORDON SILVER
`
`/Michael N. Feder/
`Michael N. Feder, Esq.
`Jennifer Ko Craft, Esq.
`Andrew D. Sedlock, Esq.
`3960 Howard Hughes Parkway, Ninth Floor
`Las Vegas, Nevada 89169
`trademarks@gordonsilver.com
`(702) 796-5555 (phone)
`(702) 947-9684 (fax)
`Attorneys for Petitioner,
`Zuffa, LLC
`
`102800-005/1299867
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that, on this 13th day of August, 2012, a true and complete copy of the
`
`foregoing Notice of Cancellation has been served by United States mail, first class postage
`
`prepaid, on the following correspondent of record for Applicant:
`
`Mr. Jeffery Smith
`Premier Championship Fighting, LLC
`3535 Boodel Cir
`Elizabeth, CO 80107-8221
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`_/Katie Sitto/________________
`An employee of Gordon Silver Ltd.
`
`
`
`102800-005/1299867
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
