The inquiry as to bona fide intent is “not into Applicant’s subjective state of mind alone.” Rather, the determination must be made objectively, based on evidence in the form of “real life facts” and “the actions of the applicant.” There must be “a good faith intention to eventually use the mark in a real and legitimate commercial sense.”
The Board noted Rosalie Gabriel’s testimony that she was unaware of any efforts she herself made with regard to MEZQUILA at any time. The Board found it unnecessary to decide whether the lack of bona fide intent by one of two joint applicants renders the application invalid, because it concluded that her co-applicant and husband, Johnny D. Gabriel, also lacked a bona fide intent to use the mark in commerce.
Lack of Documentary Evidence: An opposer may establish a prima facie case of lack of bona fide intent by establishing that the applicant has no documentary evidence to support its claim. The burden of production then shifts to the applicant to come forward with evidence “adequately explaining or outweighing the failure to provide such documentary evidence.”
The subject application was filed on January 29, 2015. The earliest documents provided by applicants were dated November 2015. The fact that these documents were created well after the filing date is not dispositive of the issue, since such documentation may corroborate the claim of a bona fide intent to use the mark as of the filing date.
Here, however, no documents preceded the filing date of the notice of opposition (August 31, 2015). Moreover, regarding the application, Mr. Gabriel testified that “I thought that it would be a good idea to have it [MEZQUILA] trademarked as a brand name in case I wanted to bring in my own Tequila” [to his retail stores]. And applicants filed an I-T-U application in 2000 for the same mark, which application went abandoned after they failed to file a statement of use, suggesting that “Applicants had the idea to use the term for many years but had not done so.” [In a footnote, the Board quoted Mr. Gabriel: “I have never distilled or produced tequila in my life.”].
Under the circumstances, the Board concluded that “no documentary evidence supports an objective bona fide intent to use the mark in commerce as of the application filing date.” The burden of production therefore shifted to applicants to provide evidence overcoming opposer’s prima facie case.
Applicant’s evidence of bona fide intent: Applicant’s argued that Mr.Gabriel 82 years old) does business “the old fashioned way:” over the phone or in person, without texts of emails. Mr. Gabriel testified that he met with two distilleries in February 2015 and traveled to Mexico in September 2015 to visit another distillery, regarding the MEZQUILA product. Not good enough, said the Board.
This record at most supports a finding that Applicants had two meetings within seven months after the application was filed in which inquiries concerning distillation of a MEZQUILA product were raised and immediately dropped. Considering all the record evidence, we find that these meetings do not explain or outweigh Applicant’ failure to provide persuasive documentary evidence of an objective intent to use the mark MEZQUILA in commerce as of the application filing date in January 2015.
In November 2015, applicants took steps that resulted in their offering MEZQUILA brand tequila in retail liquor stores in 2017. The Board, however, found that “these goods were offered in an attempt merely to reserve a right in the MEZQUILA mark rather than in the ordinary course of trade.”
These sales produced no income for applicants or their business partners. Johnny Gabriel received no royalties from the distillery or the importer/distributor. The distiller testified that he entered into the agreement as a favor to Gabriel because the latter wanted “to be sure that the trademark belongs to him.”
Conclusion: The Board found that opposer had established by a preponderance of the evidence that applicants lacked a bona fide intent to use the MEZQUILA mark as of the application filing date, and so it sustained the opposition.
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TTABlog comment: Opposer sells its product under the SANTO mark, and its application to register SANTO MEZQUILA was blocked by the application here challenged. The Board declined to reach opposer’s claims of genericness, mere descriptiveness, geographically deceptive misdescriptiveness, and deceptive misdescriptiveness.
Text Copyright John L. Welch 2019.