IP Law Daily, TRADEMARK—TTAB: Opposition to THE HOTEL EL ROBLAR trademark application for hotel services sustained, (Sep 26, 2025)

By Carolin Dennis, B.Sc., LL.B., LL.M.

The TTAB found that the applicant did not have a bona fide intention to use the mark in commerce when she filed the opposed application.

In a precedential decision, the Trademark Trial and Appeal Board (TTAB) sustained the opposition to registration of the mark THE HOTEL EL ROBLAR for hotel services on the ground that the applicant did not have a bona fide intention to use the mark in commerce as of the June 9, 2020 application filing date. The TTAB determined that the applicant filed the application merely to reserve a right in the mark (El Roblar Investment Property LLC v. Roe, No. 91272200 (T.T.A.B. Sept. 22, 2025)).

Background. The applicant, Bianca Roe and her husband operated a boutique retail store in Ojai, California called In the Field for a number of years. The applicant sought registration on the Principal Register of the standard-character mark THE HOTEL EL ROBLAR (HOTEL disclaimed) for hotel services in International Class 43 based on her claim under Section 1(b) of the Trademark Act that she had a bona fide intention to use that mark in commerce for hotel services when she filed her application Serial No. 88956269 on June 9, 2020. El Roblar Investment Property LLC (opposer) opposed the registration of the applicant’s mark on two grounds: (1) the applicant lacked a bona fide intention to use THE HOTEL EL ROBLAR in commerce for hotel services when she filed the opposed application; and (2) the applicant’s mark falsely suggests a connection with the opposer, in violation of Section 2(a) of the Trademark Act.

Entitlement to a statutory cause of action. The TTAB noted that a plaintiff may oppose the registration of a mark when 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 it has a reasonable belief in damage that would be proximately caused by registration of the mark in violation of the opposition statute. The TTAB found that the record showed that at the time the notice of opposition was filed, the opposer’s trade name included the words “El Roblar,” that the opposer had registered multiple domain names containing those words, and that the opposer intended to use the Hotel El Roblar as the name of its new hotel.

Further, by the time of trial, the opposer was operating a website bearing the words “the hotel el roblar” in script and the words “Hotel El Roblar” in typed font, stating that “we are opening our doors soon,” and 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 the applicant claims that she intends to offer the same services under the same mark. The TTAB found that the opposer’s website has been available to the public since at least 2023 and the opposer has already received inquiries regarding the availability of its hotel services under the mark the Hotel El Roblar. Therefore, the opposer has a real interest in the proceeding, beyond that of an intermeddler, in preventing the applicant’s registration of THE HOTEL EL ROBLAR.

Additionally, the opposer has also shown damage proximately caused by the proposed registration i.e., a reasonable basis for its belief in damage, in the event that the applicant registers the mark THE HOTEL EL ROBLAR for hotel services. The TTAB found that it is self-evident that if the applicant obtains the exclusive nationwide right to use the mark THE HOTEL EL ROBLAR for hotel services based on what the applicant claims will be use of the mark in Ojai, the 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. Thus, the opposer demonstrated a statutory entitlement to oppose.

Bona fide intention to use the mark. The TTAB then turned to the opposer’s claim that the applicant lacked a bona fide intention to use the mark THE HOTEL EL ROBLAR for hotel services when she filed the opposed application. The TTAB found that there is no question that applicant intended to use the mark THE HOTEL EL ROBLAR in connection with a hotel on the property at 122 East Ojai Avenue, but she no longer had a bona fide intent to use the mark for hotel services after the January 21, 2019 rejection of her bid to buy the property, as she effectively admitted in her May 12, 2020 email.

The TTAB noted that the issue here is not the applicant’s intent on January 21, 2019, but rather her intent almost a year-and-a-half later, when she filed the opposed application on June 9, 2020. The TTAB found that the applicant’s May 12, 2020, email is powerful evidence that she did not have a bona fide intent to use the mark THE HOTEL EL ROBLAR in commerce in connection with hotel services when she filed the opposed application less than a month later. Mr. Shamshiri’s previous email to the applicant offered to buy a single domain name, thehotelelroblar.com, but she responded by offering to sell all of her domain names, as well as the entire Social Media platform that we had the foresight to secure, covering a multitude of channels which Mr. Shamshiri had not requested. Additionally, the circumstances immediately prior to the filing of the opposed application confirm the applicant’s lack of a bona fide intent to use the mark.

Thus, the opposer proved by a preponderance of the evidence that the 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 the 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.

Accordingly, the opposition to the application registration was sustained.

The Case is Opposition No. 91272200.

Judge: Larkin, C.

Attorneys: Wesley M. Mullen (Mullen P.C.) for El Roblar Investment Property LLC. Curtis W. Herron (Law Office of Curtis W. Herron) for Bianca Roe.

Companies: El Roblar Investment Property LLC

Cases: Trademark USPTO