Zuffa TMs BMF for future use

September 18, 2019

Last week Zuffa filed several trademarks with the United States Patent and Trademark Office for “BMF” and Bad Motherfucker in anticipation of its showdown in New York this November between Jorge Masvidal and Nick Diaz.

Diaz used the term during his post-fight interview at UFC 241 in which he called out Jorge Masvidal.  From there, the phrase and fight for the BMF belt became a thing.

Zuffa filed for the trademarks under Section 1(b) of the Trademark Act which the applicant intends to use the proposed mark but is not currently using it.  Of course, Zuffa intends to use the mark for UFC 244.

Zuffa filed for several uses of the term including Entertainment services, namely live stage shows and performances featuring sports and mixed martial arts, toy championship belts, toy mixed martial arts belts, jewelry, key chains and championship belts.

Additionally, it filed similar applications for Baddest Motherfucker.  Notably, the registration of this mark would not have happened but for a U.S. Supreme Court ruling which struck down portion of the Lanham Act precluding the registration of marks that were deemed “immoral or scandalous.”  Obviously, Motherfucker seems like an immoral or scandalous term.

Notably, there has been another application for Bad Motherfucker prior to Zuffa, but that application has been suspended.

Payout Perspective:

Some have questioned the UFC for securing these marks.  One of the reasons they did this was to ensure that another did not register the marks creating a legal issue.  Think how people used to squat on domain names.  There is also question that Donald Cerrone used the term before.  Well, that may be true but he never filed for the trademark.  And, if you ask if he has any rights, he’d have to prove that he created the term and it became so famous that he has a right to it.  Likely, a fruitless task which would only require Cerrone to payout a lot of money for no reason.

There are instances in which companies file for trademarks used by its independent contractors.  A day after Brock Lesnar coined the term “Suplex City” during a match at Wrestlemania,  The day after, WWE filed for the trademark and did well in selling merchandise with Lesnar’s phrase.

Thus comes the question of ownership.  Who owns “BMF” and “Baddest Motherfucker”?  Usually, under an employer/employee relationship, the employer would own the mark and its associated rights.  Diaz is an independent contractor as we are all well-aware.  The mark would belong to Diaz if there was a valid work-made-for-hire agreement or another written assignment agreement between the parties.  Assume there was no such thing.  In that case, in boils down to who filed for the trademark first.  Thus, that would be Zuffa.

 

The world of trademarks is an interesting thing and if you’d like to learn more or want to register something you can always talk to this guy. The application is still pending, so there is always a chance the application could get denied.  As far as timelines go, the November fight would have already passed before a decision would likely be made.

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