TTAB Reverses Genericness Refusal, Finds "ULTIMATE FIGHTING" Registrable under Section 2(f)

The Board declared Applicant Zuffa, LLC the victor in its bout with the PTO over the mark ULTIMATE FIGHTING for "entertainment, namely live stage shows and performances featuring sports and mixed martial arts" in Class 41. Not only did the Board overturn the PTO's genericness refusal, but it also found the mark registrable under Section 2(f) in view of Applicant's impressive proofs. In re Zuffa, LLC, Serial No. 75982336 (August 18, 2005) [not citable].


Genericness: The Examining Attorney relied on NEXIS stories and third-party websites in support of her contention that ULTIMATE FIGHTING is generic. The Board agreed with Zuffa, however, that the "overwhelming majority" of the examples refer directly to Applicant, while numerous others are indirect references (referring to events or personalities associated with Zuffa's services). Relatively few references show generic use of ULTIMATE FIGHTING to refer to sporting events.

The Board found that there is "insufficient clear evidence" to satisfy the PTO's burden of proof. The evidence is "mixed" as to how relevant purchasers (fans who either attend or purchase pay-per-view for Zuffa's events) would perceive ULTIMATE FIGHTING. Importantly, none of the PTO's evidence predated Zuffa's first used date in November 1993.


Secondary Meaning: The PTO's evidence did establish that ULTIMATE FIGHTING is merely descriptive of Zuffa's services, and therefore it was Zuffa's burden to establish acquired distinctiveness. Applicant submitted a 5-year use declaration, a declaration from its president, 31 declarations signed by "various people in the mixed martial arts field," printouts from its website, a copy of the Nevada statute defining "mixed martial arts" and not using the words "ultimate fighting," and evidence of Zuffa's policing efforts.

Zuffa proved use of the mark since 1993, advertising and promotional expenditures of more than $10 million, $50 million in "commercial value" from its broadcast partners and licensees, $50 million in ticket sales and broadcast revenues, and several million pay-per-view purchases by "households, sports bars and similar pay-per-view distribution channels." Thus its "nationwide sales revenues and advertising expenditures are substantial."

The Board particularly noted the 31 declarations of "various people," including government officials, boxer/trainer Peter Welch [not my son], owners of competitive events, and members of the media [but not one blogger]. Each declarant averred that ULTIMATE FIGHTING and ULTIMATE FIGHTING CHAMPIONSHIP are trademarks owned by applicant, that they identify Applicant's events, and that the marks are associated 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."

Consequently, the Board overruled the PTO's rejection of Zuffa's Section 2(f) evidence, and deemed the mark registrable.

Text Copyright John L. Welch 2005.