Ferguson TM application, Champ Sh*t Only, preliminary denied but he gets another chance

November 26, 2019

According to reports from multiple MMA media outlets, it looks like Tony Ferguson and Khabib Nurmogomedov will once again try to fight one another barring injury in April in Brooklyn, New York.  Ferguson has been branding his tweets with a Champ Shit Only TM for which he’s applied for the mark but has yet to obtain.  Currently, the USPTO has denied its use as the examiner believes it should not be registered.

According to an Office Action issued on November 15, 2019, the attorney examiner noted that the proposed mark, Champ Shit Only, has failed to function as a service mark for purposes of registration as a trademark.  The examiner notes that the specimen (below) does not “identify and distinguish applicant’s services.”  A specimen is used for trademark applications to show evidence on how a mark will be used.  For instance, if you have an apparel line named Nike, you would use as a specimen a picture of a t-shirt with a Nike symbol on it to reflect how the mark would be used (there are exceptions to this rule but we are giving generalities here).

Ferguson’s attorney stated the description of the mark, Champ Shit Only, would be used for the following:

Entertainment in the nature of competitions in the field of mixed martial arts; Entertainment services, namely, live, televised and movie appearances by a professional entertainer; Entertainment services, namely, providing a web site featuring photographic, video and prose presentations featuring mixed martial arts; Entertainment services in the nature of professional athletes competing in mixed martial arts; Entertainment services, namely, live appearances by a sports celebrity; Entertainment services, namely, televised appearances by a sports celebrity

The attorney examiner states in denying the mark application:

Here, the specimen shows that applied-for mark in a tweet above a photo of a fighter. The applied-for mark, as shown on the specimen, does not function as a service mark because purchasers are likely to perceive the mark merely as a caption for the photo, rather than identifying the source of entertainment services in the field of mixed martial arts. It is unclear from the services whether applicant is offering any services in connection with the mark CHAMP SHIT ONLY. Moreover. The source of the tweet the applicant, Tony Ferguson, which suggests that the source of any of the offered services is “Tony Ferguson,” not CHAMP SHIT ONLY. Accordingly, the mark, as used in the specimen, fails to function as a source indicator for the identified services.

Notably, the application states that Ferguson has been using the mark since May 10, 2019, which is the date of the picture.

However, on November 19th, Ferguson’s attorney changed the designation from 1(a) to 1(b).  Essentially, what that means is that the application has changed from currently using the mark to an intention to use the mark.  The latter means that the mark has yet to be used although it is the applicant’s intent to use in the near future.

What is significant in this change is that it allows time for Ferguson to use the mark as it is described.  He does have to submit evidence of use.  Alternatively, he could also submit another specimen.

Payout Perspective:

Interesting enough, what not is identified, is the sale of merchandise or apparel which would make sense with Ferguson’s “catch phrase.”  As for the use in the “entertainment” sense as described, I’m not sure if there’s a plan to show how Ferguson’s saying will be utilized to show his entertainment services.  Certainly, there could be a cryptic reason for the use of Champ Shit Only for entertainment services, but that would have to be described for an attorney examiner at the USPTO to understand.

To conclude, it’s entirely possible that Ferguson ends up with the trademark, but he’d have to show his use of the mark for the reason identified.  But, at this point, the original application was preliminary denied.  So, the mark is not for the Champ…yet.

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