ufc ultimate fitness center v. zuffa - trademark complaint.pdf
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UFC Ultimate Fitness Center, LLC v. Zuffa, LLC
Complaint
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Matthew J. Faust, State Bar No. 254145
faust@shariffaust.com
Khodadad D. Sharif, State Bar No.187992
sharif@shariffaust.com
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:
///
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'14CV2870 JMADMS
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UFC Ultimate Fitness Center, LLC v. Zuffa, LLC
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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.
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UFC Ultimate Fitness Center, LLC v. Zuffa, LLC
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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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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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UFC Ultimate Fitness Center, LLC v. Zuffa, LLC
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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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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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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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UFC TRAINER 85,262,581 3/9/2011 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 game
discs; interactive game
software; and interactive
game discs
009
UFC PERSONAL
TRAINER ULTIMATE
TRAINER SYSTEM
85,246,423 2/18/2011 Prerecorded compact
discs, optical discs,
memory cards and audio
and visual recordings
featuring physical training,
exercise, mixed martial
arts, sports and
entertainment; computergame software; computer
game discs; video game
software; video game
discs; interactive game
software; and interactive
computer game discs
009
UFC PERSONALTRAINER ULTIMATE
FITNESS SYSTEM
85,246,150 2/18/2011 Prerecorded compactdiscs, optical discs,
memory cards and audio
and visual recordings
featuring physical training,
exercise, mixed martial
arts, sports and
009
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entertainment; computer
game software; computer
game discs; video game
software; video game
discs; interactive gamesoftware; and interactive
computer game discs
UFC PERSONAL
TRAINER
85,246,131 2/18/2011 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 game
discs; interactive game
software; and interactive
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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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
fully set forth herein.
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)
Plaintiff hereby incorporates by reference paragraphs 1-35 of this Complaint as if
fully set forth herein.
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)
56) Plaintiff hereby incorporates by reference paragraphs 1-24 of this Complaint as if
fully set forth herein.
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)
60) Plaintiff hereby incorporates by reference paragraphs 1-35 of this Complaint as if
fully set forth herein.
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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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))
71) Plaintiff hereby incorporates by reference paragraphs 1-70 of this Complaint as if
fully set forth herein.
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)
Plaintiff hereby incorporates by reference paragraphs 1-69 of this Complaint as if
fully set forth herein.
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
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
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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
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.
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))
88) Plaintiff hereby incorporates by reference paragraphs 1-77 of this Complaint as if
fully set forth herein.
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
between Plaintiff and Defendant, who have adverse legal interests. Defendant has made clear
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
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.
JURY DEMAND
94) Plaintiff hereby demands a jury trial in this case.
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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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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
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