On December 8, 2010, Zuffa, LLC filed a complaint against Ubisoft, Inc. in the United States District Court for the District of Nevada alleging trademark infringement based on the packaging for the Ubisoft video game, “Fighters Uncaged.” (hat tip Robert Joyner).
According to Zuffa, the “UFC® names and logos are trademarks that are owned by Plaintiff and registered on the Principal Register of the United States Patent and Trademark Office, including, among others:
ULTIMATE FIGHTING: Registration No. 2,925,669 for goods and services, namely, compact discs, laser video discs, digital video discs, digital versatile discs and CD-ROM discs, all featuring sports events and mixed martial arts; computer software for programming video games in the field of sports and entertainment; video game cartridges and discs; computer game cartridges;
Zuffa alleges that since 1993 it, and its predecessors, made continuous use of the UFC® marks, including the Ultimate Fighting name and mark:
As a result of the extensive advertising and promotion of the ULTIMATE FIGHTING CHAMPIONSHIP® brand, ‘ULTIMATE FIGHTING,’ either standing alone or in conjunction with the word ‘CHAMPIONSHIP,’ has become and is distinctive and famous for mixed martial arts.” “‘ULTIMATE FIGHTING’ and ‘ULTIMATE FIGHTING CHAMPIONSHIP’ have acquired a special significance and meaning to the consuming public as identifying Zuffa and the UFC® as the source of origin of goods and services, and mixed martial arts in particular, which bear the ‘ULTIMATE FIGHTING’® name and mark.
Specifically, as to video games, Zuffa alleges that it “has entered into license agreements with certain video game manufacturers that have produced numerous mixed martial arts video games lawfully using UFC® fighters, which, in turn, use the UFC® and the ULTIMATE FIGHTING® names and marks,” including, inter alia, “‘Undisputed 2009’ for XBox 360 and Playstation 3 was released for sale to the public on May 19, 2009; and ‘Undisputed 2010,’ the sequel, for XBox 360, Playstation 3, and Playstation Portable, was released for sale to the public on May 25, 2010.”
Zuffa alleges that “‘Undisputed 2009’ and ‘Undisputed 2010’ both note on their respective back covers that the UL TIMATE FIGHTING® name and mark is a registered trademark.”
Zuffa alleges upon information and belief that Ubisoft “recently released for sale to the public ‘Fighters Uncaged,’ a mixed martial arts video game about illegal street fighting for XBox 360.”
The crux of the complaint is Zuffa’s allegation that “[o]n the back cover of the video game, Defendant invites players to ‘Become the ULTIMATE FIGHTING weapon!’, setting the words ‘ULTIMATE FIGHTING’ apart from the other text by depicting the words in bolded capital letters.”
Zuffa attached a copy of the back of the “Fighters Uncaged” box to its papers, which includes, in part the following:
Zuffa alleges that Ubisoft’s “use of the ULTIMATE FIGHTING name and mark is identical or confusingly similar to the use of the UFC® Marks, including the ULTIMATE FIGHTING® name and mark on Zuffa’s licensed video games.”
Zuffa asserts claims for “trademark infringement, trademark dilution and unfair competition under federal statutes, with pendent state and/or common law claims for trademark infringement, and deceptive trade practices.”
Zuffa seeks “damages, attorneys’ fees, costs, and preliminary and permanent injunctive relief.”
Payout Perspective:
My quick take on the complaint is as follows. Plaintiff does have a registration for the mark for video games and this video game is directly competitive. I do not think that the fact that Fighters Uncaged involves illegal street fighting – as opposed to the sport of MMA — is determinative.
While the Zuffa mark is weak, i.e. it registered 2(f), there is an argument given the large bold (all capitalized) font for “Ultimate Fighting” that Ubisoft’s alleged use is not purely descriptive and may be infringing. Moreover, Zuffa clearly has an interest in protecting its mark so the lawsuit makes sense from a practical standpoint.
Justin Klein is an attorney at Satterlee Stephens Burke & Burke LLP in New York City where he concentrates his practice in commercial litigation and represents clients in the fight industry. He regularly addresses current legal issues that pertain to combat sports, including efforts to legalize MMA in New York, at his Fight Lawyer website. He is a licensed boxing manager with the New York State Athletic Commission as well as the founder and Chairman of the Board of the New York Mixed Martial Arts Initiative, a non-profit organization that gives inner city youth the opportunity to experience the emotional and physical benefits of martial arts training. Justin lives in New York City where he trains in jiu jitsu and boxing.
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Zuffa has done this before. Ubisoft will settle.
Settlement seems likely as there really isn’t much here that UBI needs. It isn’t like those two words will make or break the game.
But trade marks in the US just seem stupid. Microsoft being the king. When you can trade mark Windows, Word, Money or in Zuffas case “The Octagon” some thing is deeply wrong. “The Oktagon” I could see but “The Octagon”? Hello Bruce Lee. How long until they start trade marking single letters. No wonder the courts are clogged to the point of collapse down there.
Jv, but if you were the one that made any of those things that mentioned and made millions and peeps were trying to take that from you..i am sure you would be singing a different tune, just MO!
Zuffa has every right to go after these people. They used the term Ultimate Fighting simply to boost sales because it relates to the UFC. Everyone know it. Zuffa isnt in the business of making other people money who are unassociated or without compensation. Furthermore they have the right to pretect there brand from being associated with a street fighting game. a few years ago letting something like this out would have really hurt the sport. Now not sure it has an effect but the UFC did spend years cleaning up its image and shouldn’t rest on their laurels.
Remember the first rule in the Octagon. “Protect yourself at all times”.