UFC Ultimate Fitness Center v. Zuffa - Trademark Complaint PDF

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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 Plaintiff
UFC Ultimate Fitness Center, LLC
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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF CALIFORNIA
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UFC ULTIMATE FITNESS CENTER, ) Case No.: '14CV2870 DMS JMA
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LLC, a California limited liability
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COMPLAINT FOR DAMAGES AND
company,
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INJUNCTIVE RELIEF
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Plaintiff,
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vs.
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ZUFFA, LLC, a Nevada limited liability )
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company; and
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DOES 1 through 25;
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JURY TRIAL DEMANDED
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Defendants.
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COMES NOW, PLAINTIFF UFC ULTIMATE FITNESS CENTER, LLC, a
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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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UFC Ultimate Fitness Center, LLC v. Zuffa, LLC
Complaint
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INTRODUCTION
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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
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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.
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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
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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,
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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
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Gym mark, such use will continue to cause consumer confusion, and thus will cause
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irreparable harm to Plaintiff.
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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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Complaint
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JURISDICTION AND VENUE
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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).
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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
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derive from a common nucleus of operative fact.

6)
The Court has personal jurisdiction over Defendant because the complained-of
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acts all occurred and were committed by Defendant in this Judicial District.
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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.
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THE PARTIES
8)
Plaintiff UFC ULTIMATE FITNESS CENTER, LLC (UFC) is a local gym
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based in Chula Vista, California.

9)
Defendant, ZUFFA, LLC, (Zuffa), is a limited liability company formed under
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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
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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)
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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
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incorporated by reference, each and every Defendant was acting within the course and scope
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of this agency and employment and was acting with the consent, permission, and authorization
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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.
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FACTS COMMON TO ALL CAUSES OF ACTION

I.
The Parties
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A.
UFC Ultimate Fitness, LLC
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12)
Plaintiff, UFC ULTIMATE FITNESS CENTER, LLC, operates a gym / health
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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
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UFC, and includes this name on its advertisements, membership agreements, sponsorships,
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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
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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
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border in Mexico. UFC has sponsored body builders, boxers, and mixed martial artists on
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both sides of the border. UFC also promotes its services by sponsoring local athletic
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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
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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
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a manner that associates the mark and name with Plaintiff's goods, services, and/or business.
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In doing this, UFC has distinguished its products and services from other products and
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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
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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
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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:
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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.
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UFC ULTIMATE FITNESS
Date Filed Description of

Goods and Services
85,126,538 09/09/2010 Health club services,
CENTER THE GYM THAT
namely, providing
FITS YOUR LIFE!
instruction and
Intl
Class
041
equipment in the
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field of physical
fitness, exercise,
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boxing and mixed
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martial arts
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17)
The 538 registration featured a number of office actions and suspensions, as
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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.
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B.
Zuffa, LLC
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Zuffa, LLC owns and operates the Ultimate Fighting Championship, also known
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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
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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
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Office for the following trademarks (hereinafter the UFC Gym Registrations):
Trademark Reg. No.
UFC
3,723,920
UFC
3,723,920
UFC GYM
4,168,373
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Date
Date of
Registered First Use
6/19/2006 8/27/2007
Description of
Goods and Services
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
6/19/2006 2/21/2009 Providing health club
services, namely providing
fitness
and
exercise
facilities
12/10/2008 12/01/2009 Sweatshirts;
hooded
sweatshirts;
tee-shirts;
sports shirts; muscle shirts;
tank
tops;
shorts,
Boxing and martial arts
equipment, namely martial
arts 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 boxing
head guards, femail chest
protectors, bunch mitts,
pads, kick pads, target
pads, and shin pads for kick
boxing, and online retail
store services featuring
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Intl
Class
028
041
025,
028,
035
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UFC GYM
3,999,175
7/19/2011
12/1/2009
UFC GYM
4,106,124
2/28/2012
11/1/2009
UFC GYM
4/147712
5/22/2012
5/22/2012
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fitness related clothing,

sportswear, mixed martial
arts gear and accessories
Providing health club 041,
services, namely providing 044
fitness
and
exercise
facilities;
instruction
services, namely instruction
in the field of health and
physical
fitness
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20)
Sports bags, travel bags, 018

duffel bags, gym bags,
backpacks
Towels
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Zuffa also has applications for trademarks currently pending before the United
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States Patent and Trademark Office (hereinafter the Pending UFC Gym Marks):
Trademark
Serial No.
UFC TRAINER
PERSONAL THE
ULTIMATE FITNESS
SYSTEM
Date Filed Description of

Goods and Services
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 game
discs; interactive game
software; and interactive
computer game discs
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Complaint
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Intl
Class
009
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UFC GYM
85,288,367 4/6/2011
Providing information in
the fields of nutrition,
health and wellness
UFC GYM
85,2883,61 4/6/2011
Health club services,

041
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; Providing
instruction in the fields of
nutrition, health and
wellness
UFC GYM
85,288,352 4/6/2011
Towels
024
UFC GYM
85,288,344 4/6/2011
021
UFC GYM
85,288,337 4/6/2011
Beverageware; sports
bottles sold empty; bottles
sold empty; shaker cups
sold empty
All purpose sport bags, all
purpose athletic bags, all
purpose carrying bags,
duffle bags and backpacks
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044
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UFC TRAINER
85,262,581 3/9/2011
Prerecorded compact
arts, sports and
game discs
009
UFC PERSONAL
TRAINER ULTIMATE
TRAINER SYSTEM

arts, sports and
computer game discs
009
UFC PERSONAL
TRAINER ULTIMATE
FITNESS SYSTEM

arts, sports and
009
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computer game discs
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UFC PERSONAL
TRAINER
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arts, sports and
computer game discs
009
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21)
The applications for these marks have been suspended by the United States
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Patent and Trademark Office as a result of the proceedings currently pending before the
Trademark Trial and Appeal Board described below.
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The UFC Gym Registrations and the Pending UFC Gym Marks will be
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collectively referred to as the Junior UFC Marks.
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III.
The Defendants Infringing Actions
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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.
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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
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health club during episodes of The Ultimate Fighter during the year 2005 without objection
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from Zuffa. Additionally, several of Zuffas fighters have visited and trained at UFCs gym in
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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,
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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
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complied with local zoning requirements. Such documentation is conclusive proof that
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Zuffas use of the UFC Marks is likely to cause confusion.
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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
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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
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filings in an effort to dissuade Plaintiff from continuing its proceeding. In 2013, nearly three
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years after the Petition to Cancel had been filed, the matter was finally set to be determined.
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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
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rules governing petitions to cancel would delay determination of the Petition to Cancel
because they would be stayed while the Nevada Proceedings were pending.
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V.
The Nevada District Court Matter and Appeal

30)
In the Nevada Proceedings, Zuffa filed documentation which falsely suggested
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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
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jurisdiction.
31)
When UFC brought these contentions to Zuffas attention, Zuffa was recalcitrant
and refused to dismiss its case. Accordingly, UFC filed a motion to dismiss the claim
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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.
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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
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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.
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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
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the UFC Trademarks.
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FIRST CAUSE OF ACTION
(Federal Trademark Infringement 15 U.S.C. 1114, et seq)
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36)
Plaintiff hereby incorporates by reference paragraphs 1-35 of this Complaint as if
fully set forth herein.
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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.
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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
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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
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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
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secondary meaning in the market relevant to Plaintiffs and Defendants consumers.

39)
Defendants wrongful use of the UFC Marks for the advertisement and branding
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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
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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
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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.
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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,
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compensatory damages, treble damages, disgorgement of profits, costs, and attorney fees.
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SECOND CAUSE OF ACTION
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(Federal Unfair Competition:
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False Designation of Origin, Passing Off, and False Advertising)

43)
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44)
The 344 Marks and UFC Marks, as used by Plaintiff in connection with
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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
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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
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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
10
11
origin, passing off, and false advertising in connection with products and services distributed
12
in interstate commerce, in violation of the Lanham Act, 15 U.S.C. 1125, subd. (a).
13
14
15
16
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
17
18
19
20
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,
21
22
treble damages, disgorgement of profits, costs, and attorney fees.
23
24
25
26
27
28
Complaint
18
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THIRD CAUSE OF ACTION
(California Common Law Trademark Infringement)
3
4
5
49)
6
7
8
9
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,
10
11
distinguishes Plaintiffs products and services from other products and services, has made the
12
mark and name well known among consumers, and otherwise results in a protectable
13
14
15
16
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
17
18
19
20
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
21
22
distinguishing Plaintiffs services and products from other products and services, after
23
Plaintiff made the mark and name well known among consumers, and after Plaintiff had
24
25
26
27
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
28
Complaint
19
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affiliation, connection, or association with Defendants goods or services in a manner that
2
3
4
5
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.
6
7
8
9
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.
10
11
12
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
13
14
15
Plaintiffs business and for financial gain, thereby entitling Plaintiff to exemplary damages
and/or attorneys fees to be proved at trial.
16
17
FOURTH CAUSE OF ACTION
18
19
20
(California Unfair Competition Bus. & Prof. Code 17200, et seq)

56)
21
22
23

57)
Through the actions alleged above, Defendant has willfully copied Plaintiffs
24
25
26
27
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.
28
Complaint
20
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58)
Plaintiff is informed and believes, and thereon alleges, that Defendants has
2
3
4
5
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
6
7
8
9
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.
10
11
12
FIFTH CAUSE OF ACTION
13
(Federal Trademark Counterfeiting 15 U.S.C. 1125)
14
15
16
60)
17
18
19
20
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
21
22
20 June 1996 for its gym and health club services. Plaintiff has invested substantial time,
23
effort and financial resources promoting the 344 Mark in connection with the marketing and
24
25
26
sale of its goods and services in commerce. The consuming public recognizes the 344 Mark
and associates it with Plaintiff.
27
28
Complaint
21
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63)
Plaintiffs 344 Mark is registered on the Principle Register of the United States
2
3
4
5
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
6
7
8
9
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
10
11
confusion or mistake or to deceive consumers into believing that Plaintiff is the source of
12
Defendants services.
13
14
15
16
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.
17
18
19
20
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
21
22
23
described constitutes trademark infringement under 15 U.S.C. 1114(1).

69)
As a direct and proximate result of Defendants trademark counterfeiting and
24
25
26
27
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.
28
Complaint
22
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70)
Defendants acts of counterfeiting and infringement will cause further irreparable
2
3
4
injury to Plaintiff if Defendant is not restrained by this Court from further violation of
Plaintiffs rights. Plaintiff has no adequate remedy at law.
5
6
SIXTH CAUSE OF ACTION
(Declaratory Judgment (No infringement))
8
9
71)
10
11
12

72)
On or about 21 October 2013, Defendant filed the Nevada Action, alleging that
13
14
15
16
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.
17
73)
Plaintiff did not infringe on Defendants marks.
74)
Plaintiff did not counterfeit Defendants marks.
75)
Plaintiff has not diluted Defendants marks.
22
76)
Plaintiff has not engaged in unfair competition.
23
77)
Defendant has had actual notice of Plaintiffs rights in the 344 Mark and the
18
19
20
21
24
25
26
27
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
28
Complaint
23
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UFC Marks. Defendant is thus barred by the equitable doctrines of laches, acquiescence and
2
3
4
5
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
6
7
8
9
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
10
11
between Plaintiff and Defendant, who have adverse legal interests. Defendant has made clear
12
to Plaintiff its belief that its trademark is currently being infringed by Plaintiffs use of its own
13
14
15
16
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
17
18
19
20
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.
21
22
23
24
25
26
27
28
Complaint
24
Case
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SEVENTH CAUSE OF ACTION
(Declaratory Judgment (Federal Trademark Cancellation))
3
4
5
81)
6
7
8
9
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
10
11
engaged in unfair competition. Defendant based its claims upon the Lanham Act and
12
comparable Nevada state laws.
13
14
15
16
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
17
18
19
20
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
21
22
23
prevented by this Court.

85)
24
25
26
to Plaintiff its belief that its trademark is currently being infringed by Plaintiffs use of its own
27
28
Complaint
25
Case
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trademark, and Plaintiff has denied any wrongdoing. The dispute between Plaintiff and
2
3
4
5
Defendant is substantial, definite and immediate, and not hypothetical.

86)
6
7
8
9

2201-02.
87)
Based on the foregoing, Plaintiff believes that it will be damaged by the above-
10
11
identified UFC Gym Registrations, and hereby petitions to cancel the same.
12
13
EIGHTH CAUSE OF ACTION
14
(Declaratory Judgment (Deny Registration))
15
16
88)
17
18
19
20

89)
On the dates listed above, Defendant filed with the United States Patent and
Trademark Office the Pending UFC Gym Marks.
21
22
90)
The Pending UFC Gym Marks are confusingly similar to Plaintiffs 344 Mark
23
and UFC Marks.
24
25
26
27
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
28
Complaint
26
Case
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attendant good will. These assertions will continue to adversely affect Plaintiffs business
2
3
4
5
unless prevented by this Court.

92)
6
7
8
9
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.
10
11
12
93)
13
14
15

2201-02.
16
17
JURY DEMAND
18
19
94)
Plaintiff hereby demands a jury trial in this case.
20
21
22
23
24
25
26
27
28
Complaint
27
Case
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PRAYER
2
3
4
5
WHEREFORE Plaintiff prays judgment against Defendants, and each of them, as

follows:
95)
On the First through Fifth Causes of Action:
6
7
8
9
(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
10
11
permanently enjoined from:
12
(i) using the 344 Mark, the UFC Marks, alone or in combination with any
13
14
15
16
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
17
18
19
20
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;
21
22
(ii) blurring, passing off or falsely designating the origin of Defendants
23
products and services, and from injuring Plaintiffs goodwill and
24
reputation;
25
26
27
(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
28
Complaint
28
Case
Case
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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,
3
4
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
8
9
with this court and serve upon Plaintiff within thirty days after service of the
10
11
permanent injunction a report in writing and under oath, setting forth in detail
12
the manner and form in which Defendant has complied with the permanent
13
injunction;
14
(c) For general, special, actual, treble, and/or exemplary damages caused by
15
16
Defendants wrongful actions;
17
(d) For disgorgement of ill-gotten gains;
18
19
(e) That this case be deemed an exceptional case under 15 U.S.C. 1117,
20
subds. (a) and (b), and that Defendant be deemed liable for and ordered to
21
reimburse Plaintiff for its reasonable attorney fees;
22
23
96)
On the Sixth Cause of Action:
24
25
26
27
(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;
28
Complaint
29
Case
Case
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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;
3
4
(iii)
Defendant is barred by laches, acquiescence, and estoppel from

asserting any likelihood of confusion between the trademarks of
Plaintiff and Defendant
7
8
(iv)
Plaintiff has the right to use the 344 Mark and the UFC Marks in
connection with Plaintiffs business, free from interference by
10
11
Defendant, its officers, agents, employees, attorneys, privies,
12
representatives, successors and assigns, and from any and all persons
13
acting in active concert or participation with or under authority from
14
Defendant;
15
16
(v)
Defendant, its officers, agents, employees, attorneys, privies,
17
18
19
20
representatives, successors and assigns, and any and all persons in

active concert or participation with or under authority from
Defendants, be enjoined permanently from:
21
22
a. interfering with or threatening to interfere with use of the 344
23
Mark or the UFC Marks by Plaintiff, its related companies,
24
25
26
27
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
28
Complaint
30
Case
Case
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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.
4
5
1117, this case being exceptional;
6
7
97)
On the Seventh Cause of Action:

(a) Plaintiff requests that the Court declare and that a judgment be entered
that:
10
11
(i) Declare, adjudge, and decree that the purported marks depicted in the
12
UFC Gym Registrations are not valid trademarks under federal or
13
California state law;
14
(ii) Order cancellation of the UFC Gym Registrations pursuant to 15 U.S.C.
15
16
1119;
17
18
19
20
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
21
22
23
the trademark laws of the United States and the state of California;
(ii) Defendants Pending UFC Gym Marks are confusingly similar to
24
25
26
27
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;
28
Complaint
31
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99)
On All Causes of Action:
2
3
(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.
7
8
9
10
11
Dated: 4 December 2014
By:
/s/ Matthew J. Faust

MATTHEW J. FAUST
Attorneys for Plaintiff
UFC Ultimate Fitness Center, LLC
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Complaint
32

UFC Ultimate Fitness Center v. Zuffa - Trademark Complaint PDF

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Case

Matthew J. Faust, State Bar No. 254145

UNITED STATES DISTRICT COURT

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

Plaintiff UFC ULTIMATE FITNESS CENTER, LLC brings this lawsuit to

irreparable harm to Plaintiff.

from Defendants willful acts of trademark infringement and unfair competition.

JURISDICTION AND VENUE

derive from a common nucleus of operative fact.

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.

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

based in Chula Vista, California.

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

alleged in this Complaint.

FACTS COMMON TO ALL CAUSES OF ACTION

UFC Ultimate Fitness, LLC

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

and other related marketing documentation.

competitions and events.

market relevant to Plaintiffs and Defendants consumers.

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

UFC ULTIMATE FITNESS

Date Filed Description of

CENTER THE GYM THAT

FITS YOUR LIFE!

boxing and mixed

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

fitness related clothing,

Sports bags, travel bags, 018

Date Filed Description of

Health club services,

85,246,423 2/18/2011 Prerecorded compact

85,246,150 2/18/2011 Prerecorded compact

UFC Ultimate Fitness Center, LLC v. Zuffa, LLC

85,246,131 2/18/2011 Prerecorded compact

collectively referred to as the Junior UFC Marks.

The Defendants Infringing Actions

Chula Vista, California.

Moreover, despite receiving notice of the TTAB proceedings identified below

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

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).

The TTAB Proceedings

The Nevada District Court Matter and Appeal

In the Nevada Proceedings, Zuffa filed documentation which falsely suggested

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

the Nevada Proceedings.

the UFC Trademarks.

FIRST CAUSE OF ACTION

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

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

fully set forth herein.

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

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

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

Plaintiff lacks an adequate remedy at law.

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

Plaintiff is entitled to a preliminary and permanent injunction against Defendants,

SECOND CAUSE OF ACTION

(Federal Unfair Competition:

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