Precedential No. 8: TTAB Shuts Down "THE HOTEL EL ROBLAR" Application Due to Lack of Bona Fide Intent

In an exhaustive and rather exhausting 71-page decision, the Board sustained this opposition to registration of the mark THE HOTEL EL ROBLAR for hotel services, finding that Applicant Bianca Roe lacked a bona fide intention to use the mark in commerce for hotel services when she filed the opposed application on June 9, 2020. Instead, the Board concluded, she filed the application "merely to reserve a right in the mark." El Roblar Investment Property LLC v. Bianca Roe, 2025 USPQ2d 1210 (TTAB 2025) [precedential] (Opinion by Judge Christopher C. Larkin).

This case is about a hotel in [Ojai,] California. It is not the infamous Hotel California, where “you can check out any time you like, but you can never leave,” but like that fantasized lodging, the Hotel El Roblar in this case existed only in the parties’ imaginations at all relevant times.

The Board observed that the two main issues in this case - Opposer’s entitlement to statutory cause of action (a/k/a statutory standing) and the bona fides of Applicant’s claimed intention to use the mark THE HOTEL EL ROBLAR in commerce for hotel services when she filed the opposed application - are "extremely fact-intensive."

Statutory Standing: A plaintiff may oppose registration of a mark when "(1) [its] interests are within the zone of interests protected by the statute [(i.e., it has a 'real interest' in the outcome of the proceeding)] and (2) [it] has a reasonable belief in damage that would be proximately caused by registration of the mark in violation of the opposition statute.” Curtin v. United Trademark Holdings, Inc., 137 F.4th 1359, 1367 (Fed. Cir. 2025).

"The real interest requirement is meant to prevent litigation where there is no real controversy between the parties, ‘where a plaintiff, petitioner or opposer, is no more than an intermeddler.'" Australian Therapeutic Supplies, 965 F.3d at 1376 (quoting Jewelers Vigilance Comm., 823 F.2d at 492). At the time the opposition was filed, "Opposer had taken multiple steps to enable it to offer hotel services under the mark the Hotel El Roblar in the near future in Ojai, the same place where Applicant claims that she intends to offer the same services under the same mark."

The Board pointed out that the Opposer need not have a proprietary interest in the mark THE HOTEL EL ROBLAR to have statutory standing. “An absence of proprietary rights does not in itself negate an interest in the proceeding or a reasonable belief of damage.” Australian Therapeutic Supplies, 965 F.3d at 1372. The Board found that Opposer "has a real interest in the proceeding, beyond that of an intermeddler, in preventing Applicant’s registration of THE HOTEL EL ROBLAR."

Opposer also established “damage proximately caused by the proposed registration (i.e., a reasonable basis for its belief in damage),” Tequila Cuadra, 2025 WL 1431504, at *4, in the event that Applicant registers the mark THE HOTEL EL ROBLAR for hotel services."

It is self-evident that if Applicant obtains the exclusive nationwide right to use the mark THE HOTEL EL ROBLAR for hotel services based on what Applicant claims will be use of the mark in Ojai, Opposer’s use of the same mark for the same services in the same city would be at risk, especially against the backdrop of the parties’ litigation history.

Bona Fide Intent: The Board's opinion sets forth in detail the parties' arguments, along with descriptions of the evidence and excerpts of testimony. Applicant Roe took no steps between January 21, 2019 (when her bid to buy a certain property in Ojai was rejected) and June 9, 2020 (her application filind date) directed toward operating a hotel in Ojai, and there was no evidence that she was even considering it. l important was an email dated May 12, 2020 in which Ms. Roe offered to sell the domain names and social media handles concerning the HOTEL EL ROBLAR name, stating "we have no use for them moving forward." Thus, she "effectively admitted" that she no longer intended to use the subject mark for hotel services.

On the basis of the “objective evidence of intent” and “the totality of the circumstances,” Tiger Lily Ventures, 35 F.4th at 1365, we find that Opposer proved, by a preponderance of the evidence, that Applicant did not have a bona fide intention to use the mark THE HOTEL EL ROBLAR for hotel services in connection with the property at 1725 Maricopa Highway, or at any other location, as of the June 9, 2020 application filing date, and that Applicant filed the application "merely to reserve a right in the mark, and not [with] a bona fide intent to use the mark in commerce." M.Z. Berger, 787 F.3d at 1378.

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TTABlogger comment: Why deem this fact-intensive opinion precedential? If cited, it will be readily distinguishable based on the facts.

P.S.: The hotel is now open [Hollywood Reporter article here].

Text Copyright John L. Welch 2025.