UFC Ultimate Fitness Center v. Zuffa - trademark complaint.pdf

8/21/2019 UFC Ultimate Fitness Center v. Zuffa - trademark complaint.pdf

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UFC Ultimate Fitness Center, LLC v. Zuffa, LLC

Complaint

1

Matthew J. Faust, State Bar No. 254145

[email protected]

Khodadad D. Sharif, State Bar No.187992

[email protected]

SHARIF | FAUST LAWYERS, LTD.1010 Second Ave, 24th Floor

San Diego, CA 92101

Telephone: (619) 233-6600

Facsimile: (619) 233-6602

Attorneys for PlaintiffUFC Ultimate Fitness Center, LLC

UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF CALIFORNIA

UFC ULTIMATE FITNESS CENTER,

LLC, a California limited liability

company,

Plaintiff,

vs.

ZUFFA, LLC, a Nevada limited liability

company; and

DOES 1 through 25;

Defendants.

))))))))))))))))))

Case No.:

COMPLAINT FOR DAMAGES ANDINJUNCTIVE RELIEF

JURY TRIAL DEMANDED

COMES NOW, PLAINTIFF UFC ULTIMATE FITNESS CENTER, LLC, a

California limited liability company which brings this action against DEFENDANT ZUFFA

LLC, a Nevada limited liability company; and DOES 1 through 25 and allege as follows:

///

Case 3:14-cv-99999 Document 2008 (Court only) Filed 12/04/14 Page 1 of 32

'14CV2870 JMADMS

Case 3:14-cv-02870-DMS-JMA Document 1 Filed 12/04/14 Page 1 of 32


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INTRODUCTION

1) Plaintiff UFC ULTIMATE FITNESS CENTER, LLC brings this lawsuit to

protect the substantial good will that it has developed since 1996 in its distinctive trademarks

Ultimate Fitness Center, UFC, UFC Ultimate Fitness Center. Plaintiff has incorporated

these marks with the tagline The Gym that Fits Your Life!. Plaintiff has further obtained a

federally-registered trademark for its logo. All of these marks have gained a reputation in the

San Diego area for Plaintiffs high quality hard core gym and health club.

2)

The good will and reputation for quality that Plaintiff has worked so hard to

cultivate is being threatened by Defendants action. Prior to 2010 Defendant had used the

trademark UFC only in connection with the staging of mixed martial arts fights. But in or

about 2010, Defendant began expanding its business in the area of hard core gyms and

health clubs. Upon opening gyms in the San Diego area under the moniker UFC Gym

Defendant has created confusion in the marketplace amongst the same consumers that Plaintiff

offers its services to. Defendant not only knows of this confusion, but is believed to be

intentionally seeking to profit from it. Unless Defendant is enjoined from using the UFC

Gym mark, such use will continue to cause consumer confusion, and thus will cause

irreparable harm to Plaintiff.

3) This action seeks injunctive relief, damages, and other appropriate relief arising

from Defendants willful acts of trademark infringement and unfair competition.

Case 3:14-cv-99999 Document 2008 (Court only) Filed 12/04/14 Page 2 of 32Case 3:14-cv-02870-DMS-JMA Document 1 Filed 12/04/14 Page 2 of 32


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Complaint

3

JURISDICTION AND VENUE

4) This Court has subject matter jurisdiction over Plaintiffs claims for infringement

pursuant to 15 U.S.C. 1121, et seq(the Lanham Act), and 28 U.S.C. 1331 and 1338 (a)

and (b).

5) This Court has supplemental jurisdiction over Plaintiffs claims arising under the

laws of California pursuant to 28 U.S.C. 1367(a) because these claims are so related to

Plaintiffs claims under Federal Law that they form part of the same case or controversy and

derive from a common nucleus of operative fact.

6) The Court has personal jurisdiction over Defendant because the complained-of

acts all occurred and were committed by Defendant in this Judicial District.

7) Venue is proper in this Court pursuant to 28 U.S.C. 1391(b) and 1400(b)

because Plaintiffs claims arose in this Judicial District.

THE PARTIES

8) Plaintiff UFC ULTIMATE FITNESS CENTER, LLC (UFC) is a local gym

based in Chula Vista, California.

9)

Defendant, ZUFFA, LLC, (Zuffa), is a limited liability company formed under

the laws of the state of Nevada. At all times alleged herein, Zuffa has knowingly and

intentionally engaged in acts in this Judicial District.



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Complaint

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10) Plaintiff is ignorant of the true names and capacities of the Defendants sued

herein under the fictitious names DOES 1 through 25, inclusive. Plaintiff is informed and

believes that each of the Defendants was responsible in some manner for the current damages

alleged in this Complaint.

11) At all times mentioned in the causes of action into which this paragraph is

incorporated by reference, each Defendant was the agent/employee of each and every other

Defendant. In doing the things alleged in the causes of action to which this paragraph is

incorporated by reference, each and every Defendant was acting within the course and scope

of this agency and employment and was acting with the consent, permission, and authorization

of each of the other Defendants. All actions of each Defendant alleged in the causes of action

into which this paragraph is incorporated by reference were ratified and approved by the

officers or managing agents of every other Defendants.

FACTS COMMON TO ALL CAUSES OF ACTION

I. The Parties

A. UFC Ultimate Fitness, LLC

12)

Plaintiff, UFC ULTIMATE FITNESS CENTER, LLC, operates a gym / health

club under the same name in Chula Vista, California. The UFC gym has been family owned

and operated since 1996. Throughout its operation, the gym has been known by its acronym



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Complaint

5

UFC, and includes this name on its advertisements, membership agreements, sponsorships

and other related marketing documentation.

13)

Throughout the nearly 20 years of its existence, UFC has advertised the gym

under the names Ultimate Fitness Center, UFC, UFC Ultimate Fitness Center, and has

often incorporated these marks with the tagline The Gym that Fits Your Life!. UFC further

operates a website under the URL www.ultimatefitnesscenterchulavista.com. UFC has

further taken steps to develop and promote its good name in this judicial district and across the

border in Mexico. UFC has sponsored body builders, boxers, and mixed martial artists on

both sides of the border. UFC also promotes its services by sponsoring local athletic

competitions and events.

14) Through these efforts, UFC has created sufficient goodwill in the purchasing

publics mind so as to create secondary meaning and brand recognition. In addition to the

above, UFC has used the UFC, Ultimate Fitness, and The Gym That Fits Your Life

trademarks (collectively, the UFC Marks) in commerce by, among other things, displaying

and affixing the mark and name to prospective purchasers in the ordinary course of business in

a manner that associates the mark and name with Plaintiff's goods, services, and/or business.

In doing this, UFC has distinguished its products and services from other products and

services, has made the mark and name well known among consumers, and otherwise results in

a protectable trademark right and name. The UFC Marks and name distinguish Plaintiffs

products and services from other products and services because the mark and name are



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inherently distinctive, and, in any event, they have acquired a secondary meaning in the

market relevant to Plaintiffs and Defendants consumers.

15)

Accordingly, UFC has registered the below trademark with the United States

Patent and Trademark Office, which includes the literal element Ultimate Fitness Center and

has been assigned Registration Number 4,600,344 with a date of first use of 20 June 1996 and

a registration date of 10 December 2013:

16) Further, UFC has applied for trademarks with the United States Patent and

Trademark Office. Currently pending is the below-described application:



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Complaint

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Trademark Serial No. Date Filed Description of

Goods and Services

Intl

Class

UFC ULTIMATE FITNESS

CENTER THE GYM THAT

FITS YOUR LIFE!

85,126,538 09/09/2010 Health club services,

namely, providing

instruction and

equipment in the

field of physical

fitness, exercise,

boxing and mixed

martial arts

041

17) The 538 registration featured a number of office actions and suspensions, as

further explained below, but the most recent was issued on 3 October 2012. In that office

action, the examiner indicated that the mark was likely to cause confusion with the trademark

bearing Registration No. 3,999,175, which is owned by Defendant.

B. Zuffa, LLC

18) Zuffa, LLC owns and operates the Ultimate Fighting Championship, also known

as UFC. According to Zuffas own trademark filings, it has utilized the UFC mark to

advertise its popular MMA-based fights since 2007. Also according to Zuffas trademark

filings, it decided to venture into the health care arena in approximately 2009.



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19) Zuffa has received registrations from the United States Patent and Trademark

Office for the following trademarks (hereinafter the UFC Gym Registrations):

Trademark Reg. No. DateRegistered

Date ofFirst Use

Description ofGoods and Services

IntlClass

UFC 3,723,920 6/19/2006 8/27/2007 Weight lifting gloves;

martial arts equipment,

namely bag gloves, shin

guards, punch mitts, pads,

namely kick pads, target

pads and shin pads; focus

mitts, mouth guards, free

standing bags

028

UFC 3,723,920 6/19/2006 2/21/2009 Providing health club

services, namely providing

fitness and exercise

facilities

041

UFC GYM 4,168,373 12/10/2008 12/01/2009 Sweatshirts; hooded

sweatshirts; tee-shirts;

sports shirts; muscle shirts;

tank tops; shorts,

Boxing and martial arts

equipment, namely martialarts gloves, wrestling

gloves, boxing gloves,

striking bag gloves,

competition gloves,

grappling gloves, knuckle

guards; Boxing and martial

arts equipment, namely,

kicking shields, kick boxing

shing guards, kick boxinghead guards, femail chest

protectors, bunch mitts,

pads, kick pads, target

pads, and shin pads for kick

boxing, and online retail

store services featuring

025,

028,

035



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fitness related clothing,

sportswear, mixed martial

arts gear and accessories

UFC GYM 3,999,175 7/19/2011 12/1/2009 Providing health club

services, namely providingfitness and exercise

facilities; instruction

services, namely instruction

in the field of health and

physical fitness

041,

044

UFC GYM 4,106,124 2/28/2012 11/1/2009 Sports bags, travel bags,

duffel bags, gym bags,

backpacks

018

UFC GYM 4/147712 5/22/2012 5/22/2012 Towels 024

20) Zuffa also has applications for trademarks currently pending before the United

States Patent and Trademark Office (hereinafter the Pending UFC Gym Marks):

Trademark Serial No. Date Filed Description of

Goods and Services

Intl

Class

UFC TRAINER

PERSONAL THE

ULTIMATE FITNESS

SYSTEM

85,294,702 4/13/2011 Prerecorded compact

discs, optical discs,

memory cards and audio

and visual recordings

featuring physical training,

exercise, mixed martial

arts, sports and

entertainment; computer

game software; computer

game discs; video game

software; video gamediscs; interactive game

software; and interactive

computer game discs

009



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Complaint

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UFC GYM 85,288,367 4/6/2011 Providing information in

the fields of nutrition,

health and wellness

044

UFC GYM 85,2883,61 4/6/2011 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; Providinginstruction in the fields of

nutrition, health and

wellness

041

UFC GYM 85,288,352 4/6/2011 Towels 024

UFC GYM 85,288,344 4/6/2011 Beverageware; sports

bottles sold empty; bottlessold empty; shaker cups

sold empty

021

UFC GYM 85,288,337 4/6/2011 All purpose sport bags, all

purpose athletic bags, all

purpose carrying bags,

duffle bags and backpacks

018



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Complaint

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UFC TRAINER 85,262,581 3/9/2011 Prerecorded compact




featuring physical training,exercise, mixed martial

arts, sports and




software; video game

discs; interactive game


game discs

009

UFC PERSONAL

TRAINER ULTIMATE

TRAINER SYSTEM







arts, sports and

entertainment; computergame software; computer





computer game discs

009

UFC PERSONALTRAINER ULTIMATE

FITNESS SYSTEM

85,246,150 2/18/2011 Prerecorded compactdiscs, optical discs,





arts, sports and

009



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discs; interactive gamesoftware; and interactive

computer game discs

UFC PERSONAL

TRAINER







arts, sports and







computer game discs

009

21) The applications for these marks have been suspended by the United States

Patent and Trademark Office as a result of the proceedings currently pending before the

Trademark Trial and Appeal Board described below.

22)

The UFC Gym Registrations and the Pending UFC Gym Marks will be

collectively referred to as the Junior UFC Marks.



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Complaint

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III. The Defendants Infringing Actions

23) Zuffa contends that it began advertising its UFC brand in conjunction with gym

and health care services in or about 2009, although this information was unknown to Plaintiff

UFC until 2012 when office actions were issued on the 538 Application.

24) At all relevant times, Zuffa has known of UFCs senior use of the UFC

Trademarks. As a part of its operations, Zuffa oversees the production of a reality television

show entitled The Ultimate Fighter. In building its brand, Plaintiff UFC has advertised its

health club during episodes of The Ultimate Fighter during the year 2005 without objection

from Zuffa. Additionally, several of Zuffas fighters have visited and trained at UFCs gym in

Chula Vista, California.

25) Moreover, despite receiving notice of the TTAB proceedings identified below

(and UFCs pre-existing use of the UFC Marks), Zuffa began opening gyms in San Diego,

California.

26) Since Zuffa began operating its gyms, UFC has received notifications from

Zuffas creditors of unpaid bills and governmental agencies complaining that Zuffa has not

complied with local zoning requirements. Such documentation is conclusive proof that

Zuffas use of the UFC Marks is likely to cause confusion.

27) As a result of Defendants acts, Plaintiff has been injured in an amount of no less

than the minimum jurisdiction of this Court ($ 75,000).



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IV. The TTAB Proceedings

28) As a result of the office actions that were issued on the 538 Application, UFCs

principal, Rob Hueso, caused to be filed a petition for cancellation with the U.S.P.T.O.s

Trademark Trial and Appeal Board (the Petition to Cancel). The Petition to Cancel, as

amended, sought to cancel U.S. Trademark Registration No. 3,723,920 (for UFC in

International Class 041).

29) Throughout the Petition to Cancel, Zuffa utilized stall tactics and filed abusive

filings in an effort to dissuade Plaintiff from continuing its proceeding. In 2013, nearly three

years after the Petition to Cancel had been filed, the matter was finally set to be determined

But when Zuffa was to file its evidence in defense to UFCs Petition to Cancel, Zuffa reversed

course and filed a lawsuit in the Federal District Court for the District of Nevada under case

number 2:13-cv-01927 (the Nevada Proceedings). Zuffa knew that a technicality in the

rules governing petitions to cancel would delay determination of the Petition to Cancel

because they would be stayed while the Nevada Proceedings were pending.

V. The Nevada District Court Matter and Appeal

30)

In the Nevada Proceedings, Zuffa filed documentation which falsely suggested

that UFC had done business in Nevada and that UFC had intended to harm Zuffa in Nevada.

Zuffa further and wrongfully filed a motion for preliminary injunction and sought default



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against UFC while knowing full well that UFC was not subject to the Nevada Courts

jurisdiction.

31)

When UFC brought these contentions to Zuffas attention, Zuffa was recalcitran

and refused to dismiss its case. Accordingly, UFC filed a motion to dismiss the claim

pursuant to F.R.C.P. 12(b)(2).

32) After a hearing on the matter, the District Court agreed with UFC and dismissed

the Nevada Proceedings.

33)

However, just as UFC sought to reopen the Petition to Cancel and lift the stay

Zuffa filed a notice of appeal contesting the Nevada Courts fair and just determination of

jurisdiction. That appeal has been assigned case number 14-16724 by the Court of Appeals

for the Ninth Circuit. Zuffa again knew that filing the appeal would result in a prolonged stay

of the Petition to Cancel.

34) While all of these matters were pending, Zuffa went about its business of

building competing gyms in San Diego utilizing the trade name UFC Gym.

35) Zuffa has at all times known that its use of the UFC Gym trade name infringed on

the UFC Trademarks.



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FIRST CAUSE OF ACTION

(Federal Trademark Infringement 15 U.S.C. 1114, et seq)

36)

Plaintiff hereby incorporates by reference paragraphs 1-35 of this Complaint as if

fully set forth herein.

37) Plaintiffs federal registrations on the Principal Register for the 344 Mark is

conclusive evidence of Plaintiffs exclusive right to use that mark, pursuant to the Lanham

Act, 15 U.S.C. 1115.

38)

Further, Plaintiff has used the UFC Trademarks and tagline in commerce by,

among other things, displaying and affixing the mark and name to prospective purchasers in

the ordinary course of business in a manner that associates the mark and name with Plaintiff's

goods, services, and/or business. In doing this, Plaintiff has distinguished its products and

services from other products and services, has made the mark and name well known among

consumers, and otherwise results in a protectable trademark right and name. The UFC

Trademarks distinguish Plaintiffs products and services from other products and services

because the mark and name are inherently distinctive, and, in any event, they have acquired a

secondary meaning in the market relevant to Plaintiffs and Defendants consumers.

39)

Defendants wrongful use of the UFC Marks for the advertisement and branding

of its own gyms is likely to cause confusion as to sponsorship or authorization by UFC, or

alternatively, destroy the origin-identifying function of the UFC Marks. Defendants actions

constitute trademark infringement in violation of the Lanham Act, 15 U.S.C. 1114.



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40) As a proximate result of Defendants actions, Plaintiff has suffered and will

continue to suffer great damage to its business, goodwill, reputation, profits, and the strength

of its trademarks. The injury to Plaintiff is and continues to be ongoing and irreparable. An

award of monetary damages alone cannot fully compensate Plaintiff for its injuries and

Plaintiff lacks an adequate remedy at law.

41) The foregoing acts of infringement have been and continue to be deliberate,

willful and wanton, making this an exceptional case within the meaning of 15 U.S.C. 1117

42)

Plaintiff is entitled to a preliminary and permanent injunction against Defendants

as well as all other remedies available under the Lanham Act, including, but not limited to,

compensatory damages, treble damages, disgorgement of profits, costs, and attorney fees.

SECOND CAUSE OF ACTION

(Federal Unfair Competition:

False Designation of Origin, Passing Off, and False Advertising)

43) Plaintiff hereby incorporates by reference paragraphs 1-35 of this Complaint as if


44)

The 344 Marks and UFC Marks, as used by Plaintiff in connection with

providing Plaintiffs goods and services are distinctive marks and have become associated

with Plaintiff and thus exclusively identify Plaintiffs business, products, and services.



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45) Because of Defendants wrongful use of the Junior UFC Marks, consumers are

and have been deceptively led to believe that Defendants services originates with or are

sponsored or otherwise approved by Plaintiff, in violation of the Lanham Act, 15 U.S.C.

1125, subd. (a), or alternatively will cause patrons to believe that the Plaintiffs marks are

generic, thus destroying the goodwill and value Plaintiff has built with the 344 Mark and

UFC Marks.

46) The foregoing acts and conduct by Defendants constitutes false designation of

origin, passing off, and false advertising in connection with products and services distributed

in interstate commerce, in violation of the Lanham Act, 15 U.S.C. 1125, subd. (a).

47) Defendants acts, as set forth above, have caused irreparable injury to Plaintiffs

goodwill and reputation. The injury to Plaintiff is and continues to be ongoing and irreparable

An award of monetary damages alone cannot fully compensate Plaintiff for its injuries and

Plaintiff lacks an adequate remedy at law.

48) Plaintiff is entitled to a permanent injunction against Defendants, as well as all

other remedies under the Lanham Act, including, but not limited to compensatory damages

treble damages, disgorgement of profits, costs, and attorney fees.



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THIRD CAUSE OF ACTION

(California Common Law Trademark Infringement)

49)



50) Plaintiff has used the UFC Marks in commerce by, among other thing, displaying

and affixing the mark and name to prospective purchasers in the ordinary course of business in

a manner that associates the mark and name with Plaintiff's goods, services, and/or business,

distinguishes Plaintiffs products and services from other products and services, has made the

mark and name well known among consumers, and otherwise results in a protectable

trademark right and name. The UFC Marks and name distinguish Plaintiffs products and

services from other products and services because the mark and name are inherently

distinctive, and, in any event, they have acquired a secondary meaning in the market

relevant to Plaintiffs and Defendants consumers.

51) Defendants began using the Junior UFC Marks and name after Plaintiff had

used the 344 Mark and the UFC Marks in commerce, after the marks had begun

distinguishing Plaintiffs services and products from other products and services, after

Plaintiff made the mark and name well known among consumers, and after Plaintiff had

obtained a protectable trademark right in the marks.

52) Defendants, without the consent of Plaintiff, used in commerce, the Junior

UFC Marks, and/or a designation confusingly similar to the344 Mark and UFC Marks, in



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affiliation, connection, or association with Defendants goods or services in a manner that

creates a likelihood of confusion, mistake and/or deception with the consuming public.

53)

Defendants acts complained of herein constitute trademark infringement

under the common law of the State of California.

54) Defendants trademark infringement under the common law of California has

damaged and will continue to damage Plaintiff's goodwill and reputation and has resulted

in a loss of revenue to Plaintiff in an amount to be determined.

55)

Plaintiff is informed and believes and on that basis alleges these acts by

Defendants were done willfully and maliciously, with the deliberate intent to injure

Plaintiffs business and for financial gain, thereby entitling Plaintiff to exemplary damages

and/or attorneys fees to be proved at trial.

FOURTH CAUSE OF ACTION

(California Unfair Competition Bus. & Prof. Code 17200, et seq)



57)

Through the actions alleged above, Defendant has willfully copied Plaintiffs

products and trademarks in an effort to profit from Plaintiffs good name. The acts of

Defendant constitutes unfair competition in violation of California Business & Professions

Code 1700, et seq.



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58) Plaintiff is informed and believes, and thereon alleges, that Defendants has

profited through these unfair business practices.

59)

As a proximate result of Defendants actions, Plaintiff has suffered and will

continue to suffer great damage to its business, goodwill, reputation, and profits, entitling

Plaintiff to an order disgorging Defendant of its ill-gotten gains. The injury to Plaintiff is and

continues to be ongoing and irreparable. An award of monetary damages alone cannot fully

compensate Plaintiff for its injuries and Plaintiff lacks an adequate remedy at law.

FIFTH CAUSE OF ACTION

(Federal Trademark Counterfeiting 15 U.S.C. 1125)



61) Plaintiff further alleges counterfeiting and infringement of a federally-registered

trademark in violation of Section 32(1) of the Lanham Act, 15 U.S.C. 1114(1).

62) Plaintiff has used the 344 Mark continuously in United States commerce since

20 June 1996 for its gym and health club services. Plaintiff has invested substantial time

effort and financial resources promoting the 344 Mark in connection with the marketing and

sale of its goods and services in commerce. The consuming public recognizes the 344 Mark

and associates it with Plaintiff.



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Complaint

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63) Plaintiffs 344 Mark is registered on the Principle Register of the United States

Patent and Trademark Office for: providing a website featuring online sports training and

training advice and the recording of training and workouts, in class 41.

64) The UFC Gym marks appearing on Defendants advertisements for its related

services are identical to or substantially indistinguishable from Plaintiffs genuine registered

trademark.

65) Defendants use of Plaintiffs 344 Mark on its advertisements is likely to cause

confusion or mistake or to deceive consumers into believing that Plaintiff is the source of

Defendants services.

66) Upon information and belief, Defendant has advertised its services for sale using

the 344 Mark with the intention of misleading, deceiving, or confusing consumers as to the

origin of its services and of trading on Plaintiffs reputation and good will.

67) Defendants unauthorized use of Plaintiffs 344 Mark in interstate commerce as

described constitutes trademark counterfeiting under 15 U.S.C. 1114(1).

68) Defendants unauthorized use of Plaintiffs 344 Mark in interstate commerce as

described constitutes trademark infringement under 15 U.S.C. 1114(1).

69)

As a direct and proximate result of Defendants trademark counterfeiting and

infringement, Plaintiff has suffered and will continue to suffer loss of income, profits and good

will, and Defendant has acquired and will continue to unfairly acquire income, profits, and

good will.



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70) Defendants acts of counterfeiting and infringement will cause further irreparable

injury to Plaintiff if Defendant is not restrained by this Court from further violation of

Plaintiffs rights. Plaintiff has no adequate remedy at law.

SIXTH CAUSE OF ACTION

(Declaratory Judgment (No infringement))



72) On or about 21 October 2013, Defendant filed the Nevada Action, alleging that

UFC had counterfeited, infringed, and diluted Defendants registered and unregistered

trademarks. Defendant further alleged that Plaintiff engaged in unfair competition. Defendant

based its claims upon the Lanham Act and comparable Nevada state laws.

73) Plaintiff did not infringe on Defendants marks.

74) Plaintiff did not counterfeit Defendants marks.

75) Plaintiff has not diluted Defendants marks.

76) Plaintiff has not engaged in unfair competition.

77)

Defendant has had actual notice of Plaintiffs rights in the 344 Mark and the

UFC Marks since at least 2005 but has taken no legal action to prevent Plaintiffs further use

of the 344 Mark and the UFC Marks. Since that date, in part reliance on Defendants

silence, Plaintiff has continued to build its business and good will under its 344 Mark and the



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UFC Marks. Defendant is thus barred by the equitable doctrines of laches, acquiescence and

estoppel from asserting violation of its rights.

78)

Defendants assertions that Plaintiff is violating its legal rights irreparably injures

Plaintiff and adversely affects its business and the large investment it has made in its mark and

attendant good will. These assertions will continue to adversely affect Plaintiffs business

unless prevented by this Court.

79) Based on the allegations above, there is an actual and substantial controversy

between Plaintiff and Defendant, who have adverse legal interests. Defendant has made clear

to Plaintiff its belief that its trademark is currently being infringed by Plaintiffs use of its own

trademark, and Plaintiff has denied any wrongdoing. The dispute between Plaintiff and

Defendant is substantial, definite and immediate, and not hypothetical.

80) In order to resolve the legal and factual questions raised by Defendant and to

afford relief from the uncertainty and controversy which Defendants assertions have

precipitated, Plaintiff is entitled to a declaratory judgment of its rights under 28 U.S.C.

2201-02.



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SEVENTH CAUSE OF ACTION

(Declaratory Judgment (Federal Trademark Cancellation))

81)



82) On or about 21 October 2013, Defendant filed the Nevada Action, alleging that

UFC had counterfeited, infringed, and diluted Defendants registered and unregistered

trademarks, including the UFC Gym Registrations. Defendant further alleged that Plaintiff

engaged in unfair competition. Defendant based its claims upon the Lanham Act and

comparable Nevada state laws.

83) Plaintiff denies that Defendant had used the UFC Gym Registrations in

commerce before Plaintiff.

84) Defendants assertions that it used the UFC Gym Registrations in commerce

prior to Plaintiffs use of the 344 Mark and UFC Marks irreparably injures Plaintiff and

adversely affects its business and the large investment it has made in its mark and attendant

good will. These assertions will continue to adversely affect Plaintiffs business unless

prevented by this Court.

85)

Based on the allegations above, there is an actual and substantial controversy


to Plaintiff its belief that its trademark is currently being infringed by Plaintiffs use of its own



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trademark, and Plaintiff has denied any wrongdoing. The dispute between Plaintiff and

Defendant is substantial, definite and immediate, and not hypothetical.

86)

In order to resolve the legal and factual questions raised by Defendant and to



2201-02.

87) Based on the foregoing, Plaintiff believes that it will be damaged by the above-

identified UFC Gym Registrations, and hereby petitions to cancel the same.

EIGHTH CAUSE OF ACTION

(Declaratory Judgment (Deny Registration))



89) On the dates listed above, Defendant filed with the United States Patent and

Trademark Office the Pending UFC Gym Marks.

90) The Pending UFC Gym Marks are confusingly similar to Plaintiffs 344 Mark

and UFC Marks.

91) Defendants assertions that it is entitled to obtain registration of the Pending UFC

Gym Marks from the United States Patent and Trademark Office irreparably injures Plaintiff

and adversely affects its business and the large investment it has made in its mark and



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attendant good will. These assertions will continue to adversely affect Plaintiffs business

unless prevented by this Court.

92)

Based on the allegations above, there is an actual and substantial controversy


to Plaintiff its belief that its Pending UFC Gym Marks are not confusingly similar to Plaintiffs

344 Mark and UFC Marks. The dispute between Plaintiff and Defendant is substantial

definite and immediate, and not hypothetical.

93)

In order to resolve the legal and factual questions raised by Defendant and to



2201-02.

JURY DEMAND

94) Plaintiff hereby demands a jury trial in this case.



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Complaint

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PRAYER

WHEREFORE Plaintiff prays judgment against Defendants, and each of them, as

follows:

95) On the First through Fifth Causes of Action:

(a)That Defendant, its officers, agents, servants, employees, and attorneys, and

those persons in active concert or participation with Defendant who receive

actual notice of the courts order by personal service or otherwise, be

permanently enjoined from:

(i)using the 344 Mark, the UFC Marks, alone or in combination with any

other words or symbols which so resemble the marks and name of

Plaintiffs as to be likely to cause confusion, deception or mistake,

including the Junior UFC Marks, on or in connection with the

advertising, offering for sale, or sale of any product or service which is

not Plaintiffs or not authorized by Plaintiff to be sold in connection with

each of said marks and name;

(ii)blurring, passing off or falsely designating the origin of Defendants

products and services, and from injuring Plaintiffs goodwill and

reputation;

(iii) using the 344 Mark, the UFC Marks, alone or in combination

with any other words or symbols which so resemble the marks and name



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of Plaintiffs as to be likely to cause confusion, deception or mistake,

including the Junior UFC Marks, for goods or services, or on the Internet

or as domain names, email addresses, meta tags, invisible data, or

otherwise engaging in acts or conduct that would cause confusion as to

the source, sponsorship, or affiliation of Defendants with Plaintiff;

(b)That Defendant, in accordance with 15 U.S.C. 1116(a), be directed to file

with this court and serve upon Plaintiff within thirty days after service of the

permanent injunction a report in writing and under oath, setting forth in detai

the manner and form in which Defendant has complied with the permanent

injunction;

(c)For general, special, actual, treble, and/or exemplary damages caused by

Defendants wrongful actions;

(d)For disgorgement of ill-gotten gains;

(e)That this case be deemed an exceptional case under 15 U.S.C. 1117,

subds. (a) and (b), and that Defendant be deemed liable for and ordered to

reimburse Plaintiff for its reasonable attorney fees;

96)

On the Sixth Cause of Action:

(a)Plaintiff requests that the Court declare and that a judgment be entered that:

(i) Plaintiffs 344 Mark and UFC Marks do not violate Defendants

rights under the trademark laws of the United States or any other laws



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(ii) Plaintiffs 344 Mark and UFC Marks as used in its business is not

dilutive of Defendants marks as used in its business;

(iii)

Defendant is barred by laches, acquiescence, and estoppel from

asserting any likelihood of confusion between the trademarks of

Plaintiff and Defendant

(iv) Plaintiff has the right to use the 344 Mark and the UFC Marks in

connection with Plaintiffs business, free from interference by

Defendant, its officers, agents, employees, attorneys, privies

representatives, successors and assigns, and from any and all persons

acting in active concert or participation with or under authority from

Defendant;

(v) Defendant, its officers, agents, employees, attorneys, privies

representatives, successors and assigns, and any and all persons in

active concert or participation with or under authority from

Defendants, be enjoined permanently from:

a. interfering with or threatening to interfere with use of the 344

Mark or the UFC Marks by Plaintiff, its related companies

successors or assigns, in connection with its or their business; and

b. Instituting or prosecuting any suit or other proceeding placing in

issue the right of Plaintiff or said related companies, successors or



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Complaint

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assigns, into register or use the 344 Mark or the UFC Marks with

or without logo in connection with Plaintiffs business;

(b)

Plaintiff awarded its attorneys fees against Defendant under 15 U.S.C.

1117, this case being exceptional;

97) On the Seventh Cause of Action:

(a)Plaintiff requests that the Court declare and that a judgment be entered

that:

(i)

Declare, adjudge, and decree that the purported marks depicted in the

UFC Gym Registrations are not valid trademarks under federal or

California state law;

(ii)Order cancellation of the UFC Gym Registrations pursuant to 15 U.S.C.

1119;

98) On the Eighth Cause of Action:

(a)Plaintiff requests that the Court declare and that a judgment be entered that:

(i) Defendants Pending UFC Gym Marks violate Plaintiffs rights under

the trademark laws of the United States and the state of California;

(ii)

Defendants Pending UFC Gym Marks are confusingly similar to

Plaintiffs 344 Mark and UFC Marks as used in its business;

(b)That Plaintiff be awarded its attorneys fees against Defendant under 15

U.S.C. 1117, this case being exceptional;



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99)

On All Causes of Action:

(a)For interest;

(b)

For cost of suit incurred herein; and

(c)For such other relief as the Court may deem proper.

Respectfully submitted,

SHARIF | FAUST LAWYERS, LTD.

Dated: 4 December 2014 By: /s/ Matthew J. Faust

MATTHEW J. FAUST

Attorneys for Plaintiff

UFC Ultimate Fitness Center, LLC


Documents

UFC Ultimate Fitness Center v. Zuffa - trademark complaint.pdf