Zuffa, LLC

Trademark Trial and Appeal Board

Aug 18, 2005

No. 75982336 (T.T.A.B. Aug. 18, 2005)

Mailed: August 18, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Zuffa, LLC
________

Serial No. 75982336
_______

Parker H. Bagley of Milbank, Tweed, Hadley & McCloy LLP for
Zuffa, LLC.

Debra Lee, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).1
_______

Before Hairston, Chapman and Drost, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
On January 7, 2002, Zuffa, LLC (a Nevada limited
liability company, located in Las Vegas, Nevada) filed an
application to register the mark ULTIMATE FIGHTING on the
Principal Register for goods and services in International
Classes 9, 25, 28 and 41. The Class 25 goods (and certain
goods and services in Classes 9, 28 and 41) were divided

1 The application was assigned to this Examining Attorney at the
time the Examining Attorney’s brief was due.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75982336
2
out pursuant to applicant’s Request to Divide filed March
8, 2002, resulting in related application Serial No.
76356163. Applicant deleted its Class 28 goods through an
amendment filed September 3, 2003 (via certificate of
mailing). The Class 9 goods remaining in this application
were divided out pursuant to applicant’s Request to Divide
filed December 14, 2004, resulting in related application
Serial No. 75983542. Thus, the application before us
currently involves only the services in International Class
41 identified as “entertainment, namely live stage shows
and performances featuring sports and mixed martial arts.”2
The application was originally based on applicant’s
assertion of a bona fide intention to use the mark in
commerce on or in connection with the identified goods and
services. Applicant filed an Amendment to Allege Use, with
a specimen and claiming a date of first use and first use
in commerce of November 1993 for the services in
International Class 41, which was accepted by the USPTO.

2 Applicant claims ownership of Registration Nos. 1939277 for the
mark THE ULTIMATE FIGHTING CHAMPIONSHIP (“fighting championship”
disclaimed) for entertainment services, namely conducting martial
arts competitions, events and personal appearances for live and
prerecorded transmission; and Registration No. 2170463 for the
mark THE ULTIMATE FIGHTING CHAMPIONSHIP and design for
prerecorded video optical disks featuring sports and
entertainment events and prerecorded audio and videotapes
featuring sports and entertainment events.
Ser. No. 75982336
3
The Examining Attorney has refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the basis that ULTIMATE FIGHTING, when used
in connection with the services of applicant, is generic of
them; and that applicant’s claim of acquired
distinctiveness under Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f), is not sufficient in view of the nature of
the proposed mark.
When the refusals were made final, applicant appealed
to the Board. Both applicant and the Examining Attorney
have filed briefs; applicant did not request an oral
hearing.
The Examining Attorney contends that the proposed mark
is generic for applicant’s identified services of live
stage shows and performances featuring sports and mixed
marital arts, and it is thus incapable of functioning as a
mark and it cannot acquire distinctiveness; and that even
if the proposed mark is held not to be generic, the word
“fighting” is generic for fighting competitions,3 making the
mark highly descriptive, and increasing applicant’s burden

3 The Examining Attorney requested in her brief (footnote 7) that
the Board take judicial notice of definitions of “fighting” she
submitted from Dictitonary.com. The request is granted to the
extent that we take judicial notice of the reference therein to
The American Heritage Dictionary (Fourth Edition 2000) definition
as “n. …3.a A physical conflict between two or more individuals.
3b. Sports. A boxing or wrestling match.”
Ser. No. 75982336
4
of proof to establish acquired distinctiveness, which
applicant has not met. That is, the Examining Attorney has
refused registration as the phrase ULTIMATE FIGHTING
describes a type of athletic competition by its common
commercial name; and that applicant’s evidence of acquired
distinctiveness is insufficient.
The Examining Attorney refers to applicant’s website
use of ULTIMATE FIGHTING to refer to the name of the sport
as follows: “The Ultimate Fighting Championship, the
world’s leading ultimate fighting sports event, will make
its debut on basic cable television… .”
The Examining Attorney submitted (i) printouts of
several excerpted stories retrieved from the Nexis
database, and (ii) printouts of pages from a few third-
party websites, all to show that “ULTIMATE FIGHTING”
describes a type of mixed martial arts. Examples of the
excerpted stories retrieved from the Nexis database are set
forth below:
Headline: Severn Gym Owners Promote
‘All-out’ Fighting Methods
…Take a little bit of kickboxing, add
some wrestling and throw in some
martial arts and adrenalin, and you’ve
got ultimate fighting. …
As Maryland law now stands, mixed
martial arts matches and tournaments
aren’t expressly allowed, said Patrick
Panola, executive director of the
commission. …
Ser. No. 75982336
5
Koblinsky and Smith know they have an
uphill battle, especially when it comes
to dispelling the notion that ultimate
fighting is a dangerous sport.
Smith is quick to point out that no one
ever has been killed in an ultimate
fighting match. … “The Maryland
Gazette,” January 17, 2004;

Headline: Kickboxing’s ‘Wrath’
Unleashed
…Eric Bentz, a black belt instructor at
Apollo’s Karate, will make his pro
debut under ultimate fighting rules
against Daryan Wilkerson of Houston. …
“Tulsa World (Oklahoma),” September 12,
2003;

Headline: Five Earn 1st, 2nd Places in
National Jiu-Jitsu
…Memphis Karate Institute is sponsoring
Fight Night 2 on Sept. 21 at Denim &
Diamonds, 5353 Mendenhall Mall.
Fighters in mixed martial arts and from
Ultimate Fighting-style championship
and the Memphis Gracie Jui-Jitsu
Training Association will participate.
“The Commercial Appeal (Memphis, TN),”
August 30, 2001; and

Headline: Kickboxer Smith in K-1 World
Semis
…K-1 incorporates all disciplines of
martial arts in an ultimate fighting
sport.
Smith, a West Seattle High School
graduate who operates his own
kickboxing school in Bellvue, qualified
for the semifinals by winning the North
American K-1 Championship on May 5,
also in Las Vegas.
Smith’s title credentials include WKA,
ISKA and WKC world kickboxing titles,
Battlecades Extreme Fighting
heavyweight champion, UFC Ultimate
Fighting world champion, and World
Martial Arts Council champion. … “The
Ser. No. 75982336
6
Seattle Post-Intelligencer,” June 28,
2001.

Applicant argues that the mark ULTIMATE FIGHTING is
not the generic term for applicant’s identified services;
that the Examining Attorney has not established either that
ULTIMATE FIGHTING names the genus or class of services at
issue here or that the relevant public understands the term
to refer to that class of services; that the generic names
for applicant’s services include “mixed martial arts
fighting,” “no holds barred fighting” and “cage fighting”
but that ULTIMATE FIGHTING is applicant’s mark identifying
its goods and services; that the relevant public for the
purchase of applicant’s services consists of sports fans;
that the evidence of record does not meet the Examining
Attorney’s burden necessary to establish genericness,
particularly as the Examining Attorney’s Nexis and Internet
evidence shows a mixture of usages, including recognition
of ULTIMATE FIGHTING as applicant’s mark; that some misuses
by media writers, and even a failure of applicant to
capitalize the words “Ultimate Fighting” in a place on its
website are sporadic and do not destroy applicant’s use of
the phrase as a mark recognized by the public; that doubt
on the issue of genericness is resolved in favor of
Ser. No. 75982336
7
applicant; and that applicant has established acquired
distinctiveness in its mark ULTIMATE FIGHTING.
The Examining Attorney bears the burden of proving
that the proposed mark is generic, and genericness must be
demonstrated through “clear evidence.” See In re Merrill
Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987); and In re Analog
Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d, unpubl’d,
but appearing at 10 USPQ2d 1879 (Fed. Cir. 1989). The
evidence of the relevant public’s perception of a term may
be acquired from any competent source, including
newspapers, magazines, dictionaries, catalogs and other
publications. See Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551 (Fed. Cir. 1991); and In re Leatherman
Tool Group, Inc., 32 USPQ2d 1443 (TTAB 1994), citing In re
Northland Aluminum Products, Inc., 777 F.2d 1566, 227 USPQ
961 (Fed. Cir. 1985).
The test for determining whether a designation is
generic, as used in connection with the services in an
application, turns upon how the term or phrase is perceived
by the relevant public. See Loglan Institute Inc. v.
Logical Language Group, Inc., 962 F.2d 1038, 22 USPQ2d 1531
(Fed. Cir. 1992). Determining whether an alleged mark is
generic involves a two-step analysis: (1) what is the
Ser. No. 75982336
8
genus of the goods or services in question? and (2) is the
term sought to be registered understood by the relevant
public primarily to refer to that genus of goods or
services? See In re The American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); and H. Marvin
Ginn Corporation v. International Association of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
As noted earlier, “the correct legal test for genericness,
as set forth in Marvin Ginn, supra, requires evidence of
‘the genus of goods or services at issue’ and the
understanding by the general public that the mark refers
primarily to ‘that genus of goods or services.’” American
Fertility Society, supra.
In this case, the Examining Attorney has submitted
some evidence of generic use of the words “ultimate
fighting” to refer to a sporting competition. However, it
is clear from the record that the overwhelming majority of
the examples are direct references to applicant and, as
applicant has explained, numerous other uses are indirect
references to applicant inasmuch as they refer to events or
personalities associated with applicant’s services. There
are relatively few references that simply show generic use
of the phrase to refer to sporting events. Applicant
contends that these are simply sporadic misuses of
Ser. No. 75982336
9
applicant’s mark ULTIMATE FIGHTING by the media, and that
applicant cannot realistically take action against all
journalists and their uses/misuses of applicant’s mark.
As explained previously, our primary reviewing Court,
the Court of Appeals for the Federal Circuit, has held that
the burden of establishing genericness of a term or a whole
phrase rests with the Office and that the showing must be
based on clear evidence. See In re Merrill Lynch, supra, 4
USPQ2d at 1143; and In re The American Fertility Society,
supra, 51 USPQ2d at 1835. Because the record before us
shows varied uses of the phrase “ULTIMATE FIGHTING,” we
find that there is insufficient clear evidence that the
phrase ULTIMATE FIGHTING is the generic or common
descriptive term for the live stage shows and performances
featuring sports and mixed martial arts to which applicant
first applied the phrase. Although the Nexis and Internet
evidence support a finding of mere descriptiveness, it
simply does not establish that the phrase ULTIMATE FIGHTING
is generic for the genus of applicant’s involved services.
With regard to the second prong of the genericness
test, the evidence of record as to how the relevant
Ser. No. 75982336
10
purchasers4 would perceive this term in relation to
applicant’s identified services involving entertainment
services is mixed. There is significant evidence of
ULTIMATE FIGHTING clearly referring to applicant and its
entertainment services offered under the mark ULTIMATE
FIGHTING. Further, many of the examples of generic use
actually refer to applicant (either applicant’s events or
individuals/fighters associated with applicant) and are
apparent misuses by journalists. Moreover, none of the
evidence submitted by the Examining Attorney predates
applicant’s first use in November 1993. Thus, the
Examining Attorney has not established that the relevant
purchasing public would perceive the phrase ULTIMATE
FIGHTING as the name of the genus of the services.
We find that the Examining Attorney has not
established a prima facie showing that the phrase ULTIMATE
FIGHTING is generic for applicant’s identified
entertainment services.
We turn to the question of whether applicant has met
its burden to establish that the phrase ULTIMATE FIGHTING
has acquired distinctiveness under Section 2(f) of the

4 The Board finds that the relevant purchasers are fans who
either attend or purchase pay-per-view for the live stage shows
and performances of this mixed martial arts medium.
Ser. No. 75982336
11
Trademark Act. Because applicant stated in its reply brief
(p. 2) that it contends that its mark is inherently
distinctive, we address the issue of mere descriptiveness
of the phrase “ULTIMATE FIGHTING.” There is sufficient
evidence regarding use of the phrase “ULTIMATE FIGHTING” in
connection with sporting events and competitions to
establish that the phrase is merely descriptive thereof.
See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564
(Fed. Cir. 2001). Thus, we will now determine whether
applicant has submitted sufficient evidence of acquired
distinctiveness under Section 2(f) to overcome the mere
descriptiveness of the phrase.
Applicant has the burden of establishing that its mark
has become distinctive. See Yamaha International Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006
(Fed. Cir. 1988). The question of acquired distinctiveness
is one of fact which must be determined on the evidence of
record. As the Board stated in the case of Hunter
Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996,
1999 (TTAB 1986):
[e]valuation of the evidence requires a
subjective judgment as to its sufficiency
based on the nature of the mark and the
conditions surrounding its use.

Ser. No. 75982336
12
There is no specific rule as to the exact amount or
type of evidence necessary at a minimum to prove acquired
distinctiveness, but generally, the more descriptive the
term, the greater the evidentiary burden to establish
acquired distinctiveness. See In re Bongrain International
(American) Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir.
1990); and Yamaha International Corp. v. Hoshino Gakki Co.
Ltd., supra 6 USPQ2d at 1008. See also, 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§§11:17 and 15:66 and 15:70 (4th ed. 2005).
Having carefully reviewed the evidence of record, we
find that applicant’s evidence of acquired distinctiveness
is sufficient to establish a prima facie showing thereof.5
Applicant has submitted a declaration of over 5 years use
of the mark ULTIMATE FIGHTING; the declaration of
applicant’s president, Dana White; 31 declarations by
various people in the mixed martial arts field; printouts
of applicant’s website pages showing the list of
applicant’s fighters; a photocopy of the State of Nevada
statute defining “mixed martial arts” (not using the words
“ultimate fighting”); and evidence of applicant’s policing

5 In this case, the Examining Attorney contends that the phrase
is highly descriptive thereby carrying a high threshold of proof
from applicant. Even assuming that the phrase is highly
descriptive of the identified services, we find that applicant’s
evidence of acquired distinctiveness is sufficient.
Ser. No. 75982336
13
of its mark, ULTIMATE FIGHTING, including photocopies of
(i) a court decision and (ii) a settlement agreement
whereby applicant stopped two different entities from using
the mark.
Specifically, the record shows that applicant (and its
predecessor in interest) have used the mark ULTIMATE
FIGHTING for applicant’s entertainment services since
November 1993; and that the use has been substantially
exclusive and continuous for a period well exceeding the
five years prior to the filing of applicant’s application
in January 2002. Applicant has spent over $10 million on
advertising and promotion of the mark through national
media including television, radio, magazines, newspapers
and internet advertisements; that since September 2001,
applicant has been the beneficiary of $50 million in
commercial value from its partners and licensees pursuant
to applicant’s pay-per-view and broadcasting agreement with
major national and regional cable and satellite pay-per-
view providers (e.g., DISH Network, DirecTV); that
applicant has generated over $50 million dollars in ticket
sales, pay-per-view and broadcast licensing revenues for
its ULTIMATE FIGHTING mixed martial arts events held in
major sports arenas around the United States (e.g., New
Jersey, Nevada, Florida); and that applicant’s pay-per-view
Ser. No. 75982336
14
live events have been purchased by several million pay-per-
view subscribers and thereby were distributed to
households, sports bars and similar pay-per-view
distribution channels throughout the United States.
Applicant’s use of the mark for over 10 years, and its
nationwide sales revenues and advertising expenditures are
substantial.
Importantly, applicant has submitted 31 declarations
of various people in the mixed martial arts field including
Dr. Tony Alamo, Vice-chairman of the Nevada State Athletic
Commission; Keith Kizer, Chief Deputy Attorney General,
Gaming Division for the state of Nevada, and chief legal
counsel for the Commission; Marcos Rosale Jr., a judge for
the Nevada State Athletic Commission; A. L. Embanato, Jr.,
Vice-chairman of the Louisiana State Boxing & Wrestling
Commission; managers and trainers of mixed martial arts
fighters -- Peter Welch, boxer/trainer, and Donald House,
trainer; owners of competing mixed martial arts events --
Reed Harris, VP World Extreme Cagefighting, and Dan
Lambert, president Absolute Fighting Championship; and
members of the media -- Ryan Bennett, NBC sports anchor,
and Loretta Hart, journalist. In each of the 31
declarations, the declarant avers that within the industry
ULTIMATE FIGHTING and ULTIMATE FIGHTING CHAMPIONSHIP are
Ser. No. 75982336
15
each trademarks owned by applicant; that the marks are used
to identify the specific mixed martial arts competitions
promoted by applicant; and that due to applicant’s long and
extensive use of those trademarks, those in the industry as
well as the fans of mixed martial arts associate the marks
exclusively with applicant.
These declarations are significant direct evidence of
purchaser and user recognition of the phrase ULTIMATE
FIGHTING as applicant’s mark for its entertainment
services.
Here applicant has enjoyed considerable success in the
sale of its entertainment services offered under the mark
ULTIMATE FIGHTING. Applicant has consistently used the
phrase as a service mark (with perhaps a misuse on its
website at one time); and applicant has established that it
polices its mark. There has been substantial exposure to
the relevant public with significant nationwide sales and
advertising figures.
We find that applicant’s evidence is sufficient to
establish acquired distinctiveness in ULTIMATE FIGHTING as
its mark for the identified services. See In re Mine
Safety Appliances Company, 66 USPQ2d 1694 (TTAB 2002).
Decision: The refusal to register on the Principal
Register on the basis that applicant’s mark is generic
Ser. No. 75982336
16
under Section 2(e)(1) of the Trademark Act is reversed; and
the refusal to register the mark under Section 2(f) of the
Trademark Act is reversed. Accordingly, the application
will proceed to publication with a notation of applicant’s
claim of acquired distinctiveness under Section 2(f).