I had always wondered how the TTAB could know whether someone had a sufficient intent, and that question was answered in a case called Tequila Cuadra S. de RL de CV v. Manufacturera de Botas Cuadra, S.A. de C.V. The presumption that the applicant intended to use the trademark CUADRA was toppled by another company named Cuadra opposing the application on different grounds: likelihood of confusion with its mark.
The decision hinged on whether the applicant intended to use the mark or merely intended to reserve rights in the mark. It was the opposer’s job to bear the initial burden to demonstrate the applicant lacked a bona fide intent. Here, by starting the proceeding to oppose the application, the opposer demanded discovery about any steps the applicant had taken to use CUADRA, effectively saying “Show me proof of what you’ve done to commence use of your trademark in U.S. commerce.” The applicant failed to produce any such evidence. So, the absence of any documentary evidence regarding the applicant’s intent was objective proof that the applicant lacked that intent.
- Applicant indeed had ads online, but the TTAB determined that the branded bottles in the ads were mere props, and that no tequila had been produced;
- There was no certification mark in Mexico from the regulatory group that promotes genuine Mexican tequila; and
- There were no applications to do business in the United States or from any liquor authorities.
Even four years after the opposition had been filed, applicant failed to produce any of those things that opposer had demanded in discovery. That lack of documentary evidence doomed the application.
The opposer did not successfully exclude ads that were in English and Spanish, but did convince the TTAB that the ads entirely in Spanish were not targeting US consumers.
The opposer also objected to various internet materials as inadmissible hearsay, but the TTAB ruled out those objections because opposer didn’t object on time. The TTAB reminded the opposer that objections had to be made promptly so that the other side could timely respond with admissible evidence. The Board also noted that it did not need to be protected from “bad evidence” like lay jurors because it had significant expertise, and that it would give whatever evidentiary credibility was appropriate. (Basically, “Don’t tell us how to do our jobs.”)
In what was perhaps a desperate play, the applicant claimed that one of the affidavits provided by the opposer was not properly signed. The TTAB responded by saying the applicant was pointing out a mere informality, and one that they raised the first time in the trial brief, so that was rejected.
The Board found that the evidence did not support a finding of bona fide intent to use the mark in the United States, even if applicant had an intent to use it in Mexico. Without that intent, the TTAB did not have to visit the obvious question of whether there was a likelihood of confusion.
“Who knows what evil lurks in the hearts of men?” The Trademark Trial and Appeal Board (TTAB) apparently does, and has no patience for other, less important evidentiary issues.
