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Zuffa and Cage Rage in trademark dispute
By Zach Arnold | June 19, 2007
There is news today that the London law office of McDermott, Will, and Emery (hired by Zuffa LLC) is in a trademark dispute with Cage Rage. What makes the article containing this information difficult to understand is exactly what the dispute is about. The article claims the following:
Zuffa alleges that UK company Cage Rage infringed its trademark by organising fights using the Ultimate Fighting name.
Since then the company has sought to crack down on any other organisations using the Ultimate Fighting name.
Cohen said: “We wrote to Cage Rage and they failed to respond adequately, so we sued them. It’s a passing off and trademark infringement action.”
To top it all off, the article at the end uses Zuffa’s proprietary term of ‘ultimate fighting’ to describe MMA as… ultimate fighting. For those with knowledge of the situation — when did Cage Rage use the term ‘ultimate fighting’?
Long-term legal question: With so many mainstream media outlets using the term ‘ultimate fighting’ and not MMA, at what point does the value of trademark enforcement for UFC become an issue (i.e. similar to Apple and the term ‘podcasting’)?
Topics: Media, MMA, UFC, UK, Zach Arnold | 21 Comments » | Permalink | Trackback |
I dont really know if Cage Rage did this. I think I may have seen an Cage Rage advert on tv which may have been described as ultimate fighting but cant really remember. Either way its stupidity to see Zuffa try and sue over this!!!
from cagerage.tv news section
Grant Waterman – Loyalty …22th March
“We heard on the grapevine that our very own referee, Grant Waterman had been asked to referee the UFC event on 21st April. Grant has met with the UFC, but fortunately for UK MMA , Grant has decided to remain loyal to Cage Rage, the show that will yet again take Ultimate Fighting to a New level on 21st April at Wembley Arena.”
The UFC also thinks that it owns the rights to the word “submission.” I don’t think that one would hold up in court.
The thing is the majority of the uneducated media will refer to any MMA as ultimate fighting. Whether its UFC, Cage Rage, Strikeforce, WEC etc etc.
For info: Cage Rage have used the term in TV commercials for quite some time, before the UFC came back to the UK.
It will be interesting to see how this plays out as laws in the UK are quite different to the US and I think that Cage Rage have a good chanc of winning this one.
DROC
If you cringe any time the media calls it “ultimate fighting” instead of “MMA”, you should be rooting for Zuffa.
Thats the thing Cage Rage were selling out shows long before the UFC came to the UK. Its not as if Cage Rage are trying to cash in on the success of the UFC at all.
The trademark becomes unenforceable when Zuffa has a break in it’s attempts to enforce the trademark, or when it enters common parlance.
However, just becoming a generic name for something isn’t always the end of the line. Xerox successfully managed to preserve it’s name by using a pretty widespread media campaign to get people to start saying “photocopy” instead of xerox copy, which was the preferred generic name for quite a while.
Basically, it’s a catch-22. If you enforce it, then it remains enforceable. I guess the question would be whether Zuffa allowed their trademark to lapse in the UK because they basically didn’t do business there for a while, and ignored their trademarks, and now that they’re back in the UK, they of course want to enforce their trademark again. The court may let Cage Rage loose with a slap on the wrist for that reason.
I don’t know what kind of impact this has on the lawsuit, but it doesn’t seem like Zuffa actually has registered “Ultimate Fighting” with the UK IPO Office.
They have “The Ultimate Fighting Championship” registered from a while back, but only recently applied for “Ultimate Fighting” and “Ultimate Fighting Championship” on 2/23/2007. Both of the latter are only in the “Examined” status.
Click here for Zuffa’s filings with the UK IPO Office:
http://www.ipo.gov.uk/tm/t-find/t-find-adp?propnum=0803643001
The advert is something along the lines of (in a typical cockerney accent) “Ultimate Fighting hits the UK. Bla bla fighters from around the world, bla bla” maybe something about seeing other imitations and this is the best, although I think that might have been the UFC advert (or it might have been both of them).
Anyway, I think the action from Zuffa is fine. If they asked pre-law suit and didn’t get a satisfactory response then Cage Rage only have themselves to blame if they do end up losing a suit.
They also call their cage the “Octagon”, they’ve been doing little slick moves for a while now.
UFC should trademark the phrase “He’s really fighting defensively and not doing much”.
I don’t know how many times a commentator said that during the last PPV, but I bet they were thinking it.
A lot.
I’m curious what goes through rival promoters minds. If you know Zuffa has a history of aggressively protecting their trademarks, why would you go ahead and used trademarked terms anyway? It is like they’re begging to be sued.
Just like with the no drug testing at UFC 70, this has everything to do with the lawyers and nothing to do with Dana White and the people running the fights.
I remember after the no drug testing at UFC 70, people were blaming White for ducking drug testing. Yet when Ratner was questioned, he admitted that they were going to drug tests and it was the lawyers who said no at the last minute.
The same thing goes for this copyright stuff. The lawyers know that they need to defend these things in court, or they could lose their rights.
As for the term “submission”, the UFC isn’t trying to sue other companies for saying a fighter was caught in a submission. It is more as a logo type of brand name.
And rival promoters are just scum a lot of times. They know they are breaking the law and do it anyways.
MMA Game, if your rendering of the ad is correct, then that’s a pretty much open and shut case of introducing brand confusion. The only question would be whether UFC had a valid trademark at the time the ads ran. I think that the fact that UFC had held an event in the UK previously, combined with the generally cordial legal relationship between the US and the UK would tend to influence the court even if they hadn’t successfully applied for their trademark in the UK.
You cannot trademark/copyright/brand name a word that is of common use and for that matter was in common use far before you started using it.
How could you trademark “submission” as a “logo type brand name”?? It’s like me trying to get rights to “high kick” – it’s not going to happen.
As for the “ultimate fighting” thing, you guys are right…if it can be shown in the future that they didn’t try to enforce their brand name/trademark of “ultimate fighting” they’d be estopped from doing so afterwards.
MMA Game is correct. I remember seeing that ad too, thinking how strange it was that they used the term “ultimate fighting”.
Thanks to the wonders of the Internet, you can check it out yourself: http://youtube.com/watch?v=45n0mafdmV8
Can Cage Rage just refer to their brand as penultimate fighting?
Does everyone remember when Bill Gates tried to copyright the year 1995?
I work in an industry where a brand name is also a reference term, and the plaintiff lost that case.
It happened with Zippers, it happened with Xerox, and in every single case, the plaintiff if there was one lost the case.
Sorry Zuffa. That’s historical.
The latest adverts don’t mention or show “ultimate fighting”, and AFAIK nor did the last Contenders show advert. See here >
http://youtube.com/watch?v=8B_o_szmEPQ&mode=related&search=
PS: IIRC the last Contenders show advert on TV described it as “mixed martial arts”.