Notice of Opposition Opposer Information Applicant Information

Home , Andre Ward, Ishe Smith, Mark Burnett, Sakio Bika, Sergio Mora, The Contender (season 2)

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1073981 Filing date: 08/10/2020

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 Contender Partners, LLC Granted to Date 08/09/2020 of previous ex- tension Address 9899 SANTA MONICA BLVD. BEVERLY HILLS, CA 90212 UNITED STATES

Attorney informa- JILL M. PIETRINI, ESQ. tion SHEPPARD MULLIN RICHTER & HAMPTON LLP 1901 AVENUE OF THE STARS, SUITE 1600 LOS ANGELES, CA 90067-6017 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected], [email protected], [email protected], [email protected], [email protected], [email protected] 3102283700

Docket Number 01WA-296073 Applicant Information

Application No. 88355355 Publication date 02/11/2020 Opposition Filing 08/10/2020 Opposition Peri- 08/09/2020 Date od Ends Applicant Zuffa, LLC 6650 SOUTH TORREY PINES DRIVE LAS VEGAS, NV 89118 UNITED STATES Goods/Services Affected by Opposition

Class 041. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Entertainment services, namely, providing non-downloadable audio and video recordings featuring sports and mixed martial arts via the Inter- net, television, cable and satellite; entertainment services, namely, a multimedia program series featuring sports and mixed martial arts distributed via various platforms across multiple forms of transmission media; providing information relating to sports, mixed martial arts, and sporting events Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d) Marks Cited by Opposer as Basis for Opposition

U.S. Registration 3406911 Application Date 12/02/2005 No. Registration Date 04/01/2008 Foreign Priority NONE Date Word Mark THE CONTENDER Design Mark Description of The color black appears in the wording and lining of the mark; the color red ap- Mark pears in the stylized flag design; the color white appears in the stylized boxerand the stylized flag designs; the color blue appears in the wording of the mark. Goods/Services Class 041. First use: First Use: 2005/03/07 First Use In Commerce: 2005/03/07 Entertainment services in the nature ofan on-going reality television series

U.S. Registration 3406912 Application Date 12/02/2005 No. Registration Date 04/01/2008 Foreign Priority NONE Date Word Mark THE CONTENDER Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 2005/03/07 First Use In Commerce: 2005/03/07 Entertainment services in the nature ofan on-going reality television series

U.S. Registration 5894416 Application Date 08/28/2018 No. Registration Date 10/29/2019 Foreign Priority NONE Date Word Mark THE CONTENDER Design Mark Description of The mark consists of the stylized wording "THE" with red shadowing, and filled Mark in gradations of white and grey. Two horizontal blue lines with white shadowing are set each to the left and right of the wording "THE". Below is the stylized wording "CONTENDER" with blue shadowing, outlined in white, and filled in gradations of white and grey, and with the center of the letter "O" in the word represented by a design of a boxer in white andgrey. Below the wording "CON- TENDER" is a horizontal red bar outlined in white, and with red shadowing. The color black in the mark is used for contrast purposes, represents background and/or transparent areas, and is not claimed as a feature of the mark. Goods/Services Class 041. First use: First Use: 2018/08/24 First Use In Commerce: 2018/08/24 Entertainment services in the nature ofan on-going reality television series

U.S. Registration 5721261 Application Date 08/28/2018 No. Registration Date 04/09/2019 Foreign Priority NONE Date Word Mark THE CONTENDER Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 2005/03/07 First Use In Commerce: 2005/03/07 Entertainment services in the nature ofan on-going reality television series

Attachments Notice of Opposition against Zuffa LLC re DANA WHITES CONTENDER SERIE S in Class 41.pdf(6286812 bytes )

Signature /Jill M. Pietrini/ Name JILL M. PIETRINI, ESQ. Date 08/10/2020

Docket No. 01WA-296073

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In re Matter of Application No. 88/355,355 for the mark: DANA WHITE’S CONTENDER SERIES in Class 41 Opposition No. ______

NOTICE OF OPPOSITION Contender Partners, LLC,

Opposer,

vs.

Zuffa, LLC,

Applicant.

Commissioner for Trademarks ATTN: Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451

Dear Commissioner: Opposer, Contender Partners, LLC, a California limited liability company, having its principal place of business at 9899 Santa Monica Blvd., Beverly Hills, CA 90212 (“Opposer”), believes that it will be harmed by the registration of the mark DANA WHITE'S CONTENDER SERIES, as shown in Application Serial No. 88/355,355 (the “Application”), and hereby opposes its registration on the following grounds:

FACTUAL BACKGROUND REGARDING OPPOSER’S THE CONTENDER MARK 1. Opposer is the entity responsible for producing the highly successful and popular reality television series The Contender. The Contender is the pioneering boxing competition series produced by Mark Burnett and his longtime executive producer Eric Van Wagenen. In their emotionally compelling journeys, sixteen boxers push themselves to the limit, telling stories

of their families and hardships, as well as testing their strength and endurance all while vying for a six-figure purse and the title of the ultimate boxer. Debuting March 7, 2005, The Contender aired on NBC in its first season, before subsequently airing on ESPN (2006-2007) and Versus (2008-2009) over its next four seasons. The Contender was hosted by celebrities Sylvester Stallone, Sugar Ray Leonard, and Tony Danza, and launched theareers c of some of boxing’s biggest names, including Sergio Mora, Sakio Bika, and Peter ManfredoJr. On January 22, 2018, it was announced that the series was being renewed by premiumable cnetwork Epix for a fifth season, which premiered on August 24, 2018. Attached hereto Exhibit as A are true and correct printouts from the informational website Wikipedia describingThe Contender. Attached hereto as Exhibit B are true and correct printouts from the Epix website regarding the current season of The Contender. The Contender has received considerable media attention. Attached hereto as

Exhibit C are true and correct printouts of examples of media attentionreceived for The Contender.

2. Opposer has developed strong rights in its THE CONTENDER trademarks based on the foregoing activities.

3. Opposer also is the owner of three registrations of THE CONTENDER & Design (Reg. No. 3,406,912 issued April 1, 2008, Reg. No. 3,406,911 issued April 1, 2008, and Reg. No. 5,894,416 issued October 29, 2019), and one registration of THE CONTENDER (Reg. No.

5,721,261 issued April 9, 2019). Attached hereto as Exhibit D are true and correct copies of the registration certificates for Reg. No. 3,406,912, Reg. No. 3,406,911, Reg. No. 5,721,261, and Reg. No. 5,894,416, together with the TSDR pages from the Office’s website showing status and title. Opposer’s trademarks THE CONTENDER and the three design marks, THE CONTENDER & Design, are collectively referred to herein as “THE CONTENDER Marks.”

FACTUAL BACKGROUND REGARDING THE APPLICATION 4. On March 25, 2019, Applicant Zuffa, LLC, a Nevada limited liability company, having a business address of 6650 South Torrey Pines Drive, Las Vegas, Nevada 89118

(hereinafter “Applicant”), filed the Application in the Office on an intent-to-use basis, to register DANA WHITE’S CONTENDER SERIES for entertainment services, namely, providing non- downloadable audio and video recordings featuring sports and mixed martial arts via the Internet, television, cable and satellite; entertainment services, namely, a multimedia program series featuring sports and mixed martial arts distributed via various platforms across multiple forms of transmission media; providing information relating to sports, mixed martial arts, and sporting events in International Class 41, assigned Serial No. 88/355,355. 5. The Application was published for opposition in the Official Gazette on February 11, 2020, and Opposer requested and was granted extensions of time until Sunday, August 9, 2020 to oppose the Application.

FIRST GROUND – LIKELIHOOD OF CONFUSION 6. Opposer incorporates the allegations contained in Paragraphs 1to 5 herein. 7. Opposer has priority over Applicant for its DANA WHITE’S CONTENDER SERIES mark. The filing date of the Application, March 25,201 9, is after Opposer’s first use of THE CONTENDER Marks and after the filing dates and registration dates for Reg. No. 3,406,912 and Reg. No. 3,406,911.

8. Applicant’s proposed mark DANA WHITE’S CONTENDER SERIES is confusingly similar to Opposer’s THE CONTENDER Marks.

9. Applicant’s mark is likely to cause confusion, mistake, or deception as to the source, origin, affiliation, association, connection, or sponsorship of Applicant’s services offered or to be offered under the DANA WHITE’S CONTENDER SERIES mark with Opposer’s THE CONTENDER Marks and/or with Opposer or Opposer’s activities.

10. As a result of all of the foregoing, the maturation of the Application into a registration would cause a likelihood of confusion, mistake, or deception as to Applicant’s association, connection or affiliation with Opposer, Opposer’s THE CONTENDER Marks, and

the goods and services offered by Opposer under THE CONTENDER Marks, or as to the origin, or Opposer’s sponsorship or approval, of Applicant’s products or commercial activities.

DAMAGE TO OPPOSER 11. Opposer would be damaged by the registration of the mark shown in the Application in that such registration would give Applicant a prima facie exclusive right to the use of DANA WHITE’S CONTENDER SERIES, despite the likelihood of confusion, mistake, or deception with Opposer and Opposer’s THE CONTENDER Marks.

PRAYER WHEREFORE, Opposer prays that this Opposition be sustained in favor ofOpposer and that registration of the Application be refused. The required fee of $400 for this Notice of Opposition has been charged to Deposit Account No. 50-4561.

Respectfully submitted,

Dated: August 10, 2020 /Jill M. Pietrini/ Jill M. Pietrini Paul A. Bost SHEPPARD MULLIN RICHTER & HAMPTON LLP 1901 Avenue of the Stars, Suite 1600 Los Angeles, California 90067-6017 (310) 228-3700 Attorneys for Opposer Contender Partners, LLC

CERTIFICATE OF E-FILING

I hereby certify that this NOTICE OF OPPOSITION is being transmitted electronically to Commissioner of Trademarks, Attn: Trademark Trial and Appeal Board through ESTTA pursuant to 37 C.F.R. §2.195(a), on this 10th day of August, 2020.

/LaTrina A. Glenn/ LaTrina A. Glenn

SMRH:4834-7987-0919.1

Exhibit A

The Contender (TV series) - Wikipedia 8/7/2020, 4:08 PM

https://en.wikipedia.org/wiki/The_Contender_(TV_series) The Contender (TV series) - Wikipedia 8/7/2020, 4:08 PM

https://en.wikipedia.org/wiki/The_Contender_(TV_series)

Exhibit B

EPIX | Hit Movies, TV Series and More 8/7/2020, 4:11 PM

https://www.epix.com/series/the-contender EPIX | Hit Movies, TV Series and More 8/7/2020, 4:11 PM

https://www.epix.com/series/the-contender

Exhibit C

Mark Burnett Revives Boxing Series 'The Contender' With Epix, Paramo... 8/7/2020, 4:22 PM

https://variety.com/2018/tv/news/mark-burnett-the-contender-boxing-epix-reality-series-1202672240/ Mark Burnett Revives Boxing Series 'The Contender' With Epix, Paramo... 8/7/2020, 4:22 PM

https://variety.com/2018/tv/news/mark-burnett-the-contender-boxing-epix-reality-series-1202672240/ Epix Reviving Mark Burnett's 'The Contender' | Hollywood Reporter 8/7/2020, 4:23 PM

https://www.hollywoodreporter.com/live-feed/epix-reviving-mark-burnetts-contender-1076927 Epix To Launch New Version Of Boxing Competition ‘The Contender’ ... 8/7/2020, 4:25 PM

https://deadline.com/2018/01/epix-the-contender-mark-burnett-boxing-competition-launch-1202265388/ Epix To Launch New Version Of Boxing Competition ‘The Contender’ ... 8/7/2020, 4:25 PM

https://deadline.com/2018/01/epix-the-contender-mark-burnett-boxing-competition-launch-1202265388/ ‘The Contender’: Mark Burnett Boxing Series Revival For Epix Sets Hos... 8/7/2020, 4:28 PM

https://deadline.com/2018/04/the-contender-host-andre-ward-trainer-freddie-roach-naazim-richardson-epix-mark-burnett-1202361699/ ‘The Contender’: Mark Burnett Boxing Series Revival For Epix Sets Hos... 8/7/2020, 4:28 PM

https://deadline.com/2018/04/the-contender-host-andre-ward-trainer-freddie-roach-naazim-richardson-epix-mark-burnett-1202361699/ ‘The Contender’ Premiere Date: Epix & Mark Burnett’s Boxing Competi... 8/7/2020, 4:30 PM

https://deadline.com/2018/06/the-contender-premiere-date-epix-mark-burnett-boxing-competition-series-1202418208/ ‘The Contender’ Premiere Date: Epix & Mark Burnett’s Boxing Competi... 8/7/2020, 4:30 PM

https://deadline.com/2018/06/the-contender-premiere-date-epix-mark-burnett-boxing-competition-series-1202418208/ Fighters revealed for newest The Contender series 8/7/2020, 4:33 PM

https://www.espn.com/boxing/story/_/id/23928091/fighters-revealed-newest-contender-series Fighters revealed for newest The Contender series 8/7/2020, 4:33 PM

https://www.espn.com/boxing/story/_/id/23928091/fighters-revealed-newest-contender-series EPIX Revives 'The Contender' With A Fifth Season Hosted By Andre Ward 8/7/2020, 4:37 PM

https://www.forbes.com/sites/setheverett/2018/08/24/andre-ward-hosts-season-five-of-the-contender-premieres-on-epix/#416951391bb9 EPIX Revives 'The Contender' With A Fifth Season Hosted By Andre Ward 8/7/2020, 4:37 PM

https://www.forbes.com/sites/setheverett/2018/08/24/andre-ward-hosts-season-five-of-the-contender-premieres-on-epix/#416951391bb9 'The Contender' Season 5 Host Andre Ward Says Boxing Competition Se... 8/7/2020, 4:39 PM

https://www.thewrap.com/the-contender-revival-host-andre-ward-says-season-5-of-boxing-competition-is-as-real-as-gets/ 'The Contender' Season 5 Host Andre Ward Says Boxing Competition Se... 8/7/2020, 4:39 PM

https://www.thewrap.com/the-contender-revival-host-andre-ward-says-season-5-of-boxing-competition-is-as-real-as-gets/ » 41 Things You Forgot About ‘The Contender’: Looking Back at NBC’... 8/7/2020, 4:41 PM

https://grantland.com/the-triangle/the-contender-nbc-reality-tv-boxing-sylvester-stallone-sergio-mora-peter-manfredo-sugar-ray-leonard-alberto-gomez-ishe-smith/ » 41 Things You Forgot About ‘The Contender’: Looking Back at NBC’... 8/7/2020, 4:41 PM

https://grantland.com/the-triangle/the-contender-nbc-reality-tv-boxing-sylvester-stallone-sergio-mora-peter-manfredo-sugar-ray-leonard-alberto-gomez-ishe-smith/

Exhibit D

Trademark Status & Document Retrieval 1

For assistance with TSDR, email [email protected] and include your serial number, the document you are looking for, and a screenshot of any error messages you have received.

STATUS DOCUMENTS MAINTENANCE Back to Search Print

Generated on: This page was generated by TSDR on 2020-08-07 15:46:17 EDT

Mark: THE CONTENDER

US Serial Number: 78765917 Application Filing Date: Dec. 02, 2005

US Registration Number: 3406911 Registration Date: Apr. 01, 2008

Mark Type: Service Mark

TM5 Common Status LIVE/REGISTRATION/Issued and Active Descriptor: The trademark application has been registered with th

Status: The registration has been renewed.

Status Date: Mar. 22, 2018

Publication Date: Sep. 19, 2006 Notice of Allowance Date: Dec. 12, 2006

Mark Information

Goods and Services

Basis Information (Case Level)

Current Owner(s) Information

Attorney/Correspondence Information

Prosecution History

TM Staff and Location Information

Assignment Abstract Of Title Information - Click to Load

Proceedings - Click to Load

https://tsdr.uspto.gov/ 8/7/2020

Trademark Status & Document Retrieval 1

For assistance with TSDR, email [email protected] and include your serial number, the document you are looking for, and a screenshot of any error messages you have received.

STATUS DOCUMENTS MAINTENANCE Back to Search Print

Generated on: This page was generated by TSDR on 2020-08-07 15:44:46 EDT

Mark: THE CONTENDER

US Serial Number: 78765928 Application Filing Date: Dec. 02, 2005

US Registration Number: 3406912 Registration Date: Apr. 01, 2008

Mark Type: Service Mark

TM5 Common Status LIVE/REGISTRATION/Issued and Active Descriptor: The trademark application has been registered with th

Status: The registration has been renewed.

Status Date: Mar. 22, 2018

Publication Date: Sep. 19, 2006 Notice of Allowance Date: Dec. 12, 2006

Mark Information

Goods and Services

Basis Information (Case Level)

Current Owner(s) Information

Attorney/Correspondence Information

Prosecution History

TM Staff and Location Information

Assignment Abstract Of Title Information - Click to Load

Proceedings - Click to Load

https://tsdr.uspto.gov/ 8/7/2020 Reg. No. 5,894,416 Contender Partners, LLC (CALIFORNIA LIMITED LIABILITY COMPANY) 9899 Santa Monica Blvd Registered Oct. 29, 2019 Beverly Hills, CALIFORNIA 90212 Int. Cl.: 41 CLASS 41: Entertainment services in the nature of an on-going reality television series FIRST USE 8-24-2018; IN COMMERCE 8-24-2018 Service Mark The color(s) white, red, blue, and grey is/are claimed as a feature of the mark. Principal Register The mark consists of the stylized wording "THE" with red shadowing, and filled in gradations of white and grey. Two horizontal blue lines with white shadowing are set each to the left and right of the wording "THE". Below is the stylized wording "CONTENDER" with blue shadowing, outlined in white, and filled in gradations of white and grey, and with the center of the letter "O" in the word represented by a design of a boxer in white and grey. Below the wording "CONTENDER" is a horizontal red bar outlined in white, and with red shadowing. The color black in the mark is used for contrast purposes, represents background and/or transparent areas, and is not claimed as a feature of the mark.

The portrait or likeness shown in the mark does not identify a particular living individual.

SER. NO. 88-096,376, FILED 08-28-2018 Trademark Status & Document Retrieval 1

For assistance with TSDR, email [email protected] and include your serial number, the document you are looking for, and a screenshot of any error messages you have received.

STATUS DOCUMENTS MAINTENANCE Back to Search Print

Generated on: This page was generated by TSDR on 2020-08-07 15:42:50 EDT

Mark: THE CONTENDER

US Serial Number: 88096376 Application Filing Date: Aug. 28, 2018

US Registration Number: 5894416 Registration Date: Oct. 29, 2019

Filed as TEAS RF: Yes Currently TEAS RF: Yes

Mark Type: Service Mark

TM5 Common Status LIVE/REGISTRATION/Issued and Active Descriptor: The trademark application has been registered with th

Status: Registered. The registration date is used to determine when post-registration maintenance document

Status Date: Oct. 29, 2019

Publication Date: Aug. 13, 2019

Mark Information

Goods and Services

Basis Information (Case Level)

Current Owner(s) Information

Attorney/Correspondence Information

Prosecution History

TM Staff and Location Information

Assignment Abstract Of Title Information - Click to Load

Proceedings - Click to Load

https://tsdr.uspto.gov/ 8/7/2020 Reg. No. 5,721,261 Contender Partners, LLC (CALIFORNIA LIMITED LIABILITY COMPANY) 9899 Santa Monica Blvd Registered Apr. 09, 2019 Beverly Hills, CALIFORNIA 90212 Int. Cl.: 41 CLASS 41: Entertainment services in the nature of an on-going reality television series FIRST USE 3-7-2005; IN COMMERCE 3-7-2005 Service Mark THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY Principal Register PARTICULAR FONT STYLE, SIZE OR COLOR SER. NO. 88-096,345, FILED 08-28-2018 Trademark Status & Document Retrieval 1

For assistance with TSDR, email [email protected] and include your serial number, the document you are looking for, and a screenshot of any error messages you have received.

STATUS DOCUMENTS MAINTENANCE Back to Search Print

Generated on: This page was generated by TSDR on 2020-08-07 15:35:10 EDT

Mark: THE CONTENDER

US Serial Number: 88096345 Application Filing Date: Aug. 28, 2018

US Registration Number: 5721261 Registration Date: Apr. 09, 2019

Filed as TEAS RF: Yes Currently TEAS RF: Yes

Mark Type: Service Mark

TM5 Common Status LIVE/REGISTRATION/Issued and Active Descriptor: The trademark application has been registered with th

Status: Registered. The registration date is used to determine when post-registration maintenance document

Status Date: Apr. 09, 2019

Publication Date: Jan. 22, 2019

Mark Information

Goods and Services

Basis Information (Case Level)

Current Owner(s) Information

Attorney/Correspondence Information

Prosecution History

TM Staff and Location Information

Assignment Abstract Of Title Information - Click to Load

Proceedings - Click to Load

https://tsdr.uspto.gov/ 8/7/2020