UFC Sues Ubisoft Over "Fighters Uncaged"

[RumbleCard]

Quote: Originally Posted by aholbert32

You guys arent using the law to analyze this suit. Under Trademark law, the case is pretty clear.

To define Trademark

"A name, symbol, or other device identifying a product"

Their not identifying their product by using those words. Their describing it. Its not a reference of property its a description of it.

You do not trademark adjectives or verbs you trademark nouns.

To further expand my point when working with trademarks you would think along these lines of thought to protect yourself from infringing.

Quote:

NEVER use a trademark as a noun. Always use a trademark as an adjective modifying a noun. NEVER modify a trademark to the plural form. Instead, change the generic word from singular to plural.

So in the legal sense of it all this case has no merit because the trademark words are only used as adjectives for a completely different trademark product. They're not taking another companies trademark property and representing it as their own. Which would be where the infringement occurs.

Infringement might occur had they said "Take these Ultimate Fighters to the street" or something along those lines.

[aholbert32]

Quote: Originally Posted by RumbleCard

To define Trademark "A name, symbol, or other device identifying a product" Their not identifying their product by using those words. Their describing it. Its not a reference of property its a description of it. You do not trademark adjectives or verbs you trademark nouns. To further expand my point when working with trademarks you would think along these lines of thought to protect yourself from infringing. So in the legal sense of it all this case has no merit because the trademark words are only used as adjectives for a completely different trademark product. They're not taking another companies trademark property and representing it as their own. Which would be where the infringement occurs. Infringement might occur had they said "Take these Ultimate Fighters to the street" or something along those lines.

They are identifying a product. The mark "Ultimate Fighting" identifies and is synonomous with the UFC promotion.

You couldnt be more wrong about trademarking adjectives or verbs. If that was true, no one would have adjectives or verbs as registered trademarks. There is a review process used by the USPTO to approve registered trademarks. "Ultimate Fighting" is a registered trademark (not just a in use mark) so its cleared the USPTO registration process and was approved as a mark. The company Xerox has the mark 'xeroxing" trademarked. The term "xeroxing" is considered an adjective.

No offense but your analysis of this claim is extremely basic. You arent even considering likelihood of confusion or passing off which is considered different forms of infringement also. I'm an Intellectual Property attorney for a media company and I handle trademark claims and lawsuits every day. We have sued, threatened to sued and been sued over marks that were considered adjectives or verbs. We've won cases over marks that were adjectives or verbs.

The only argument that Ubi may make is that the use was purely descriptive but thats BS. The use of the mark was clearly to make a consumer think of the UFC and to use the UFC's notoriety to entice someone to purchase the game.

[RumbleCard]

Quote: Originally Posted by aholbert32

They are identifying a product. The mark "Ultimate Fighting" identifies and is synonomous with the UFC promotion. You couldnt be more wrong about trademarking adjectives or verbs. If that was true, no one would have adjectives or verbs as registered trademarks. There is a review process used by the USPTO to approve registered trademarks. "Ultimate Fighting" is a registered trademark (not just a in use mark) so its cleared the USPTO registration process and was approved as a mark. The company Xerox has the mark 'xeroxing" trademarked. The term "xeroxing" is considered an adjective. No offense but your analysis of this claim is extremely basic. You arent even considering likelihood of confusion or passing off which is considered different forms of infringement also. I'm an Intellectual Property attorney for a media company and I handle trademark claims and lawsuits every day. We have sued, threatened to sued and been sued over marks that were considered adjectives or verbs. We've won cases over marks that were adjectives or verbs. The only argument that Ubi may make is that the use was purely descriptive but thats BS. The use of the mark was clearly to make a consumer think of the UFC and to use the UFC's notoriety to entice someone to purchase the game.

I don't think your point and my point are far off from each other. We aren't entirely disagreeing here.

Xerox is a good example I'm glad you used it. By identifying xerox as property the adjective "xeroxing" becomes a direct reference of the property...it's not a simple descriptive word anymore...or never really was. The verb somewhat becomes a noun or direct reference of trademark property. Replace xerox with the word coping and the game changes.

There is a difference. Example. Lets say there is a company named Fascinating Cakes. That doesn't mean that I can't describe my cakes as fascinating unless I'm using the word in a way that implies it's my intended property not a simple description of one.

Product confusion or intent to confuse is a whole additional can of worms and I agree that if the intent was there to confuse consumers the case is a lot more relevant. So point taken there.

The way you're describing Trademark infringement implies that since UFC has trademarked Ultimate Fighting that no one else can use the word Ultimate to describe their property. Which I'm sure you'll agree is simply not true.

The only red flag here is that it's a fighting game using the word Ultimate as an adjective in describing their game. Did they intend to confuse the public in to thinking their fight roster was that of "Ultimate Fighting Championship"? If that's your only point then I agree with you that it could be a case. What I don't agree with (if it's what you meant) is that descriptive words are off limits if they're trademarked.

again going back to this....

Quote:

NEVER use a trademark as a noun. Always use a trademark as an adjective modifying a noun. NEVER modify a trademark to the plural form. Instead, change the generic word from singular to plural.

Somewhat off point but its why a company like Stanley Steemer uses the word Steem instead of Steam. They have recourse with Steem but it's a lot more difficult to have a handle on Steam.

[RumbleCard]

I'm just not sold that

"Become the ULTIMATE FIGHTING weapon!"

is intended to identify their property vs. simply describing their fighters as top notch fighting weapons.

Is ULTIMATE FIGHTING in caps on the back of the box or was that put in caps to emphasize the point of the article. I could see if the verbiage on the back of the box could be confusing if its all in 8 font and then we see a giant "ULTIMATE FIGHTING" in 30 font smack dab in the middle.

Do we have an actual shot of the back of the box?

[aholbert32]

Quote: Originally Posted by RumbleCard

I don't think your point and my point are far off from each other. We aren't entirely disagreeing here. Xerox is a good example I'm glad you used it. By identifying xerox as property the adjective "xeroxing" becomes a direct reference of the property...it's not a simple descriptive word anymore...or never really was. The verb becomes a noun or direct reference of trademark property. Replace xerox with the word coping and the game changes. There is a difference. Example. Lets say there is a company named Fascinating Cakes. That doesn't mean that I can't describe my cakes as fascinating unless I'm using the word in a way that implies it's my intended property not a simple description of one. Product confusion or intent to confuse is a whole additional can of worms and I agree that if the intent was there to confuse consumers the case is a lot more relevant. So point taken there. The way you're describing Trademark infringement implies that since UFC has trademarked Ultimate Fighting that no one else can use the word Ultimate to describe their property. Which I'm sure you'll agree is simply not true. The only red flag here is that it's a fighting game using the word Ultimate as an adjective in describing their game. Did they intend to confuse the public in to thinking their fight roster was that of "Ultimate Fighting Championship"? If that's your only point then I agree with you that it could be a case. What I don't agree with (if it's what you meant) is that descriptive words are off limits if they're trademarked. again going back to this....

The issue was never the use of the term "Ultimate". The UFC is objecting to the use of the mark "Ultimate Fighting". The UFC doesnt even own the mark "Ultimate". Ubi could have the sentence "Create the ultimate weapon by learning different fighting styles" and the UFC would have no leg to stand on here. Ubi chose to use the term "Ultimate Fighting".

To use your "Fascinating Cakes" example, lets say you own that mark and have made it world famous. Everyone in the world knows your cakes by that mark. Lets say I have a cake shop called "Aaron's Cakes" and I make similar cakes. Now on one of my promotional ads I have the slogan "Aaron's Cakes - Where you can find the most fascinating cakes in the world!"

My argument would be that I'm using the word "fascinating" to describe my cakes. Your argument would be that I'm using your mark to either associate my shop with your shop and I'm purposely creating consumer confusion. You would have the stronger argument. 1) Your mark is world famous especially in the cake world so I cant claim that I had no knowledge of your mark. 2) Proving customer confusion wont be difficult, all I need is one or two examples of people thinking that my shop was affiliated with yours because of the mark. 3. There are several other words I could have used to describe my cakes without referencing a world famous mark.

I never said descriptive words were off limits. I'm not claiming the UFC can prevent anyone from using the word ultimate. I'm stating that they can prevent anyone from using the mark "Ultimate Fighting" in a trademark manner. Its pretty clear that Ubi intended to use those to have customers believe that the game was affiliated with the UFC (Doesnt mean the game has to have its roster, just that its connected in some way to the UFC).

[RumbleCard]

Quote: Originally Posted by aholbert32

The issue was never the use of the term "Ultimate". The UFC is objecting to the use of the mark "Ultimate Fighting". The UFC doesnt even own the mark "Ultimate". Ubi could have the sentence "Create the ultimate weapon by learning different fighting styles" and the UFC would have no leg to stand on here. Ubi chose to use the term "Ultimate Fighting". To use your "Fascinating Cakes" example, lets say you own that mark and have made it world famous. Everyone in the world knows your cakes by that mark. Lets say I have a cake shop called "Aaron's Cakes" and I make similar cakes. Now on one of my promotional ads I have the slogan "Aaron's Cakes - Where you can find the most fascinating cakes in the world!" My argument would be that I'm using the word "fascinating" to describe my cakes. Your argument would be that I'm using your mark to either associate my shop with your shop and I'm purposely creating consumer confusion. You would have the stronger argument. 1) Your mark is world famous especially in the cake world so I cant claim that I had no knowledge of your mark. 2) Proving customer confusion wont be difficult, all I need is one or two examples of people thinking that my shop was affiliated with yours because of the mark. 3. There are several other words I could have used to describe my cakes without referencing a world famous mark. I never said descriptive words were off limits. I'm not claiming the UFC can prevent anyone from using the word ultimate. I'm stating that they can prevent anyone from using the mark "Ultimate Fighting" in a trademark manner. Its pretty clear that Ubi intended to use those to have customers believe that the game was affiliated with the UFC (Doesnt mean the game has to have its roster, just that its connected in some way to the UFC).

Well I agree with everything you posted here with the exception that they intended to confuse the public in to thinking there was a UFC connection. It just doesn't read that way to me.

But hey everything is marketing these days so I could see where there would be an issue here. Just not sold yet that its a legit issue.

[BOSsTOwN]

this is rediculous. so they are saying no one can use the term "ultimate fighter"

[mgoblue]

Quote: Originally Posted by aholbert32

You are 100 percent wrong. The UFC owns the "Ultimate Fighting" trademark. The Ubisoft game clearly uses the mark in that description and it is clearly trading off the fame and familiarity of the mark and the UFC name. Its pretty clear trademark infringement.

Yeah, and if the UFC doesn't defend their trademark then (I believe, I may be wrong) they could lose the exclusivity of it....that's why so many companies defend patents, trademarks, copyrights, etc...