Notice of Opposition Opposer Information Applicant Information
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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 fea- turing sports and mixed martial arts distributed via various platforms across multiple forms of trans- mission 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 1 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 2 (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 3 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.