The U.S. Trademark Trial and Appeal Board (TTAB) recently addressed a dispute that illustrates the complexities of proving trademark intent. In El Roblar Inv. Prop. LLC v. Roe, the TTAB denied a trademark application for the mark “HOTEL EL ROBLAR” for hotel services in class 4, determining the applicant lacked genuine intent to use the mark at the time of filing. The case revolved around whether the applicant, Biance Roe, had a legitimate plan to operate a hotel under the name, despite neither party having used the mark in commerce during the proceedings.
The dispute emerged as both parties sought to revive the shuttered Oaks at Ojai resort and spa as the historic Hotel El Roblar. Roe, the applicant, acquired domain names and established social media accounts under the mark, preparing for a potential bid to acquire the property. She ultimately lost the bid to El Roblar Investment Property LLC, the opposer. When the opposer attempted to purchase Roe’s Internet Assets, they could not agree on a price, leading to a legal conflict. The opposer accused Roe of cybersquatting and trademark infringement, prompting Roe to file her trademark application shortly after.
The TTAB evaluated two central questions: Did the opposer have standing to challenge the application, and did Roe demonstrate a genuine intent to use the mark?
Standing: A Valid Interest in the Proceeding
The TTAB assessed the opposer’s standing under 15 U.S.C. §1063, which permits any person who believes they would be harmed by a mark’s registration to file an opposition. The court applied the two-part framework from Curtin v. United Trademark Holdings, Inc., requiring a real interest in the proceeding and a reasonable belief in damages.
While the opposer did not own the property, the TTAB found their economic activities and preparations to use the mark in commerce created a legitimate interest. The opposer’s potential to operate a hotel under the same name as Roe’s application posed a competitive threat, fulfilling the standing requirement.
Bona Fide Intent: A Question of Timing
The TTAB’s decision rested on whether Roe had a genuine intent to use the mark at the time of filing. The court emphasized that intent to use is an objective, fact-based inquiry, not a reservation of rights.
Roe could demonstrate she had prepared to operate a hotel under the name before the bid, but the opposer presented an email from Roe stating she had “no use for [the domains] moving forward” after losing the bid. The TTAB interpreted this as evidence she no longer intended to use the mark, concluding she lacked bona fide intent at the critical moment.
Strategic Considerations for Businesses
This case underscores the importance of documenting intent to use a mark before filing a trademark application. Businesses must ensure all evidence of preparation - such as contracts, domain purchases, or marketing plans - dates before the filing date.
Declaring a lack of intent to use a mark can compromise future registration efforts. Companies should adopt a proactive approach to trademark monitoring, especially in competitive markets where similar marks may arise.
Trademark confusability remains a key concern, particularly when brands share similar names or logos. Businesses must conduct thorough due diligence to avoid disputes and ensure their trademarks are both distinctive and defensible.
Tools like IP Defender can help businesses stay ahead of potential conflicts by monitoring national trademark databases for conflicts and infringements. IP Defender focuses solely on trademark monitoring, offering a cost-effective solution for protecting intellectual property. The service covers 50+ countries, including the EU, USA, and Australia, ensuring brands are shielded from rogue registrations.
The El Roblar case highlights the necessity of clarity, preparation, and a commitment to genuine intent in trademark law. For businesses navigating brand development, the stakes are high, and the consequences of missteps can be significant.