El Roblar Investment Property LLC v. Bianca Roe

This Opinion is a

Precedent of the TTAB

Hearing: May 22, 2025 Mailed: September 22, 2025

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

_____

El Roblar Investment Property LLC

v.

Bianca Roe

_____

Opposition No. 91272200

_____

Wesley M. Mullen, Martin J.E. Arms, and Vincent R. FitzPatrick III of Mullen P.C.

for El Roblar Investment Property LLC.

Curtis W. Herron of Law Office of Curtis W. Herron and Danielle N. Byford of The

Byford Law Firm for Bianca Roe.

_____

Before Larkin, Dunn, and Stanley,

Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:

This case is about a hotel in California. It is not the infamous Hotel California,

where “you can check out any time you like, but you can never leave,”1 but like that

fantasized lodging, the Hotel El Roblar in this case existed only in the parties’

imaginations at all relevant times.

1 THE EAGLES, Hotel California, on HOTEL CALIFORNIA (Asylum Records 1976).

Opposition No. 91272200

Bianca Roe (“Applicant”) seeks 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, 15 U.S.C. § 1051(b), 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”) opposes registration of

Applicant’s mark on two grounds: (1) 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) Applicant’s mark falsely suggests a connection with Opposer, in

violation of Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a).2

The case is fully briefed,3 and counsel for the parties appeared at an oral hearing

before the panel on May 22, 2025.4 We sustain the opposition on Opposer’s first

ground and do not reach Opposer’s second ground.

2 As explained below in note 5, Opposer also pleaded, but did not pursue at trial, a claim of

likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).

3 Citations in this opinion to the briefs and other case materials refer to TTABVUE, the

Board’s online docketing system. The number preceding TTABVUE corresponds to the docket

entry number, and any numbers following TTABVUE refer to the page(s) of the docket entry

where the cited materials appear. Opposer’s main brief appears at 67 TTABVUE and its reply

brief appears at 71 TTABVUE. Applicant’s brief appears at 70 TTABVUE.

4Applicant’s brief was filed by her counsel Curtis W. Herron. Mr. Herron’s co-counsel

Danielle N. Byford appeared at the oral hearing.

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Opposition No. 91272200

I. Record and Evidentiary Matters

The record includes the pleadings,5 the file history of the opposed application, by

operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), and the following

materials submitted by the parties during their respective trial and rebuttal periods:

A. Opposer

• Opposer’s First Notice of Reliance on the two-day discovery deposition of

Applicant and certain exhibits thereto (“Roe Tr.”), 26 TTABVUE 1-180

(Confidential); 27 TTABVUE 1-185 (Confidential);6 28 TTABVUE 1-62

(Non-Confidential Exhibits 1-14);

5 In addition to the two claims noted above, Opposer asserted a claim of likelihood of confusion

in its Notice of Opposition, 1 TTABVUE 5-6, but did not pursue that claim at trial or in its

main brief, and thus waived it. Plumrose Holding Ltd. v. USA Ham LLC, Opp. No. 91272970,

2025 WL 248763, at *1 n.9 (TTAB 2025).

In her Answer, 4 TTABVUE, Applicant denied the salient allegations in the Notice of

Opposition and interposed four self-styled affirmative defenses: (1) unclean hands; (2) laches,

acquiescence, waiver, and/or estoppel; (3) Opposer’s failure to allege “any harm as a result of

Applicant’s actions alleged in the Notice of Opposition;” and (4) a purported reservation of

rights to “rely on other defenses that may become available or appear proper during

discovery” through amendment. Id. at 4 (Answ. Aff. Defenses ¶¶ 23-26). At the parties’

discovery conference, the assigned Board Interlocutory Attorney noted that the third

purported affirmative defense was “merely an amplification of the denials in Applicant’s

answer that did not warrant its striking,” 11 TTABVUE 4, but struck the other three

affirmative defenses as insufficiently pleaded, allowing Applicant to file an amended answer

to replead those defenses. Id. at 5. Applicant did not do so and those defenses are thus not at

issue.

6 The entire transcripts of Applicant’s discovery deposition were designated as confidential

under the Board’s Standard Protective Order, and were filed under seal by Opposer at 26-27

TTABVUE. Opposer cited and quoted from Applicant’s testimony in multiple places in

Opposer’s main brief, which was filed in the publicly accessible portion of the docket. 67

TTABVUE 14-16, 23, 25-26, 31, 37-38, 46. In Applicant’s brief, which was also filed in the

publicly accessible portion of the docket, Applicant did not object to Opposer’s citations and

quotations from her testimony, and in fact cited portions herself. 70 TTABVUE 16. Opposer

also filed all of the exhibits to Applicant’s discovery deposition in the publicly accessible

portion of the docket, 28-29 TTABVUE, again without objection from Applicant. We find that

Applicant waived any objection to public disclosure of her discovery deposition testimony,

and we will quote or describe her testimony and exhibits in this opinion notwithstanding the

confidentiality designation.

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Opposition No. 91272200

• Opposer’s Second Notice of Reliance on non-confidential Exhibits 15-51

from Applicant’s discovery deposition, 29 TTABVUE 1-335;

• Opposer’s Third Notice of Reliance on the pleadings,7 Opposer’s discovery

requests and Applicant’s or third parties’ responses thereto, portions of the

file history of the opposed application,8 pages from various printed

publications, pages from city government records, including the Ojai,

California Municipal Code, and pages from a resolution of the City Council

of Ojai, 30 TTABVUE 1-190;

• The Trial Declaration of Jeremy McBride, a member of Opposer, and

Exhibits 1-4 thereto (“McBride Decl.”), 31 TTABVUE 1-24;

• The Trial Declaration of Brian Ford Aikens, a resident of Ojai, and Exhibits

A-D2 thereto, 32 TTABVUE 1-311;

• The Trial Declaration of Cathy Cluff, a resident of Ojai, whose family sold

certain real property in Ojai to Opposer, and rejected a bid by Applicant to

buy that property, and Exhibit A thereto (“Cluff Decl.”), 33 TTABVUE 1-

11;

• The Trial Declaration of Ramin Shamshiri, a member of Opposer, and

Exhibit 1 thereto (“Shamshiri Decl.”), 34 TTABVUE 1-144;

• The Trial Declaration of Eric Goode, a member of Opposer (“Goode Decl.”),

35 TTABVUE 1-3;

• The Trial Declaration of Evanne St. Charles, an architectural historian and

preservation planner, and Exhibits A-D thereto, 37 TTABVUE 1-122;9

7 “The pleadings are automatically of record,” Monster Energy Co. v. Lo, Opp. No. 91225050,

2023 WL 417620, at *2 (TTAB 2023), and it was unnecessary for Opposer to file them.

8 As noted above, and as Opposer acknowledges in its main brief, “[p]ursuant to 37 C.F.R. §

2.122(b) and [Trademark Trial and Appeal Board Manual of Procedure] § 704.03(a), the file

and procedural history of Application Ser. No. 88956269 automatically form part of the record

of this Proceeding,” 67 TTABVUE 16 n.9, and it was unnecessary for Opposer to submit

portions of the application file.

9 Applicant objects to the St. Charles Declaration on the ground that it is inadmissible expert

testimony. 70 TTABVUE 29-30. We need not rule on that objection because we need not rely

on her testimony to decide this case. Flame & Wax, Inc. v. Laguna Candles, LLC, Canc. No.

92072343, 2022 WL 3083070, at *7 (TTAB 2022).

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Opposition No. 91272200

• The Declaration of Steven Edelson, a hotel operator in Ojai, and Exhibit 1

thereto (“Edelson Decl.”), filed during Opposer’s rebuttal period, 63

TTABVUE 1-16;10 and

• The transcript of the cross-examination deposition of Applicant on January

5, 2024, following her submission of the testimony declaration discussed

below, and Exhibits 1-17 thereto (“Roe Cross Tr.”), filed during Opposer’s

rebuttal period, 64 TTABVUE 1-278.11

B. Applicant

• Trial Testimony Declaration of Applicant and Exhibits A-1-A-30 thereto

(“Roe Decl.”), 43 TTABVUE 1-313;12

• Trial Testimony Declaration of Applicant’s husband Channon Roe (“C. Roe

Decl.”), 44 TTABVUE 1-5;

10 Mr. Edelson’s Declaration was executed on September 12, 2023, 63 TTABVUE 3, before

Opposer’s rebuttal period was originally set to commence on October 5, 2023, 40 TTABVUE

1; 41 TTABVUE 1, and long before Opposer’s rebuttal period as reset actually commenced on

May 31, 2024. 61 TTABVUE 12. “‘No testimony shall be taken or evidence presented except

during the times assigned, unless by stipulation of the parties approved by the Board, or

upon motion granted by the Board, or by order of the Board.’” Spotify AB v. U.S. Software

Inc., Opp. No. 91243297, 2022 WL 110251, at *3 (TTAB 2022) (sustaining objection to “stale”

declaration executed prior to trial period) (quoting Trademark Rule 2.121(a), 37 C.F.R.

§ 2.121(a), and citing Robinson v. Hot Grabba Leaf, LLC, Canc. No. 92060394, 2019 WL

1915759, at *5 (TTAB 2019), cancellation order vacated on default judgment, No. 0:19-cv-

61614-DPG (S.D. Fla. Dec. 17, 2019)). Applicant did not move to strike the Edelson

Declaration on this ground, however, so she waived or forfeited any objection based on its

staleness, see State Permits, Inc. v. Fieldvine, Inc., Canc. No. 92075095, 2024 WL 3825297,

at *6 (TTAB 2024) (the Board has discretion to consider testimony taken outside a testimony

period), and we have considered it.

11 Opposer purported to submit the “Supplemental Trial Declaration of Evanne St. Charles”

executed on November 21, 2024 as an attachment to Opposer’s reply brief. 71 TTABVUE 34-

42. We have given it no consideration because it is both untimely executed and untimely filed.

Spotify, 2022 WL 110251, at *3.

12 Applicant’s Declaration appears at the end of 43 TTABVUE, following all 30 exhibits

thereto. Our citations to her trial testimony and the exhibits will first list the higher-

numbered TTABVUE pages on which her testimony appears followed by the lower-numbered

TTABVUE pages on which any referenced exhibits appear. Exhibit A-9 was designated as

confidential and was filed under seal at 42 TTABVUE 1-5. Prior to trial, the Board struck

certain portions of Exhibits A-13 and A-20 to Applicant’s Declaration, 61 TTABVUE 8, and

all of Exhibits A-2-A-3, A-6, and A-15-A-19 to Applicant’s Declaration, and her related

testimony, and excluded those materials from the record. 61 TTABVUE 11-12.

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Opposition No. 91272200

• Applicant’s First Notice of Reliance on the transcript of the discovery

deposition of Mr. Goode and on non-confidential Exhibits 64-67 thereto

(“Goode Tr.”), 45 TTABVUE 1-81; 46 TTABVUE 1-130;13

• Applicant’s Second Notice of Reliance on the discovery deposition of Mr.

Shamshiri and on non-confidential Exhibits 52-59 thereto (“Shamshiri

Tr.”), 47 TTABVUE 1-136 48 TTABVUE 1-101;14 and

• Applicant’s Third and Amended Fourth Notices of Reliance on Opposer’s

responses to certain of Applicant’s discovery requests, 49 TTABVUE 1-24;

62 TTABVUE 1-29.15

Applicant did not cross-examine any of Opposer’s trial witnesses.

13 The parties marked the entire transcript of the Goode discovery deposition as confidential

under the Board’s Standard Protective Order, and Applicant filed it under seal at 45

TTABVUE. “Confidentiality designations do not provide absolute immunity from the public

disclosure of materials so designated.” Kohler Co. v. Honda Gikken Kogyo K.K., Opp. No.

91200146, 2017 WL 6547628, at *5 (TTAB 2017) (citing Noble House Home Furnishings, LLC

v. Floorco Enters., LLC, Canc. No. 92057394, 2016 WL 3357265, at *4 n.21 (TTAB 2016) (“The

Board needs to be able to discuss the evidence of record, unless there is an overriding need

for confidentiality, so that the parties and a reviewing court will know the basis of the Board’s

decisions.”)). See also Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g) (“The Board may treat

as not confidential that material which cannot reasonably be considered confidential,

notwithstanding a designation as such by a party.”). We do not consider anything in Mr.

Goode’s discovery deposition testimony to be confidential, and we will cite and quote from it

in this opinion notwithstanding the confidentiality designation.

14 The parties marked the entire transcript of the Shamshiri discovery deposition as

confidential under the Board’s Standard Protective Order, and Applicant filed it under seal

at 48 TTABVUE. Applicant filed the exhibits used to examine Mr. Shamshiri in the publicly

accessible docket at 47 TTABVUE. As with the Goode discovery deposition, we do not consider

anything in Mr. Shamshiri’s discovery deposition testimony to be confidential, and we will

cite and quote from it in this opinion notwithstanding the confidentiality designation.

15 The Board granted a motion by Opposer to strike Exhibit F-1 to Applicant’s original Fourth

Notice of Reliance on the ground that it involved superseded discovery responses, but allowed

Applicant to cure that defect. 61 TTABVUE 5. Applicant subsequently served an Amended

Fourth Notice of Reliance attaching the operative responses. 62 TTABVUE 1-29.

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Opposition No. 91272200

C. Evidentiary Matter

As noted above, the Board previously excluded portions of Applicant’s trial

testimony and exhibits thereto in response to Opposer’s motion to strike. 61

TTABVUE 8, 11-12. In its main brief, Opposer acknowledges that

[m]ost but not all of the Exhibits to Applicant’s trial

declaration were stricken on motion, along with

Applicant’s related testimony. . . . Certain of the stricken

exhibits were used for purposes of impeachment only (Fed.

R. Evid. 607) at the cross-examination of Ms. Roe and are

therefore included in the record as exhibits to the cross-

examination transcript. . . . Except where this Trial Brief

expressly states otherwise, Opposer does not offer in

evidence any of the documents stricken by the Board, and

it does not waive its rights under the Order determining

inadmissibility.

67 TTABVUE 18 n.11 (record citations omitted).

Apparently unwilling to take “yes” for an answer on its motion to strike, Opposer

proceeds in its main brief to discuss two of the excluded exhibits and purports to offer

them back into evidence. Id. at 31 & n.17 (discussing Exhibit A-6, a Google Maps page

showing a hotel at 1725 Maricopa Highway in Ojai, and “offer[ing] it in evidence”),

31-33 & n.20 (discussing Exhibit A-16, a purported commercial lease regarding that

property, and offering it “affirmatively as evidence of fraud”). In her brief, Applicant

discusses the commercial lease, but not the Google Maps page, 70 TTABVUE 18-19,

and Opposer again discusses the commercial lease in its reply brief. 71 TTABVUE

16-17, 19 & n.9. Because both Opposer and Applicant discussed the commercial lease,

we will consider the parties to have stipulated to our consideration of it, but only in

connection with Applicant’s testimony on cross-examination and her husband’s

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Opposition No. 91272200

testimony at trial that “[c]urrently she has a formal lease agreement at 1725

Maricopa Highway.” C. Roe Decl. ¶ 25 (44 TTABVUE 4).

II. Factual Background

The two primary issues in this case, Opposer’s entitlement to oppose 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. In this section, we set forth in detail the undisputed facts relevant to

our disposition of those issues, and our resolution of any disputed factual issues.

A. The Parties

Applicant is a resident of Ojai, California, a small city in Ventura County

northwest of Los Angeles. Roe Decl. ¶¶ 2, 46 (43 TTABVUE 304, 309). She and her

husband operated a boutique retail store in Ojai called In the Field for a number of

years at 730 East Ojai Avenue. Roe Decl. ¶ 3 (43 TTABVUE 304); Roe Tr. 46:25-48:10

(26 TTABVUE 51-53). Applicant has been registered as a host on the booking website

Airbnb since 2012, Roe Decl. ¶ 6 (43 TTABVUE 305), and she and her husband have

operated a property located in the Silver Lake area of Los Angeles as a bed and

breakfast through Airbnb for over 10 years. Roe Decl. ¶ 6 (43 TTABVUE 305).

Applicant has also been a licensed real estate agent in California since at least 2014,16

and at the time of trial was working at LIV Sotheby’s in Ojai. Roe Decl. ¶ 10 (43

TTABVUE 305).

16 Applicant testified in her discovery deposition that she began working as a real estate agent

in 2013, Roe Tr. 133:20-22; 135:5-7 (26 TTABVUE 138, 140), not in 2014, as she testified at

trial.

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Opposition No. 91272200

Opposer is a Delaware limited liability company whose principal office and

business location at the time of trial was at 122 East Ojai Avenue in Ojai. McBride

Decl. ¶ 4 (31 TTABVUE 2). Opposer was formed on or about May 17, 2019 for the

purpose of purchasing, developing, and managing a luxury hotel to be located at that

address. McBride Decl. ¶ 5 (31 TTABVUE 2). At the time of trial, Opposer had four

members, Jeremy McBride, Eric Goode, Warner Ebbink, and Ramin Shamshiri.

McBride Decl. ¶¶ 6, 9-11 (31 TTABVUE 3).

B. Applicant’s Claimed Desire to Enter the Hotel Business

Applicant testified at trial that in 2012, she registered as a host on the booking

site Airbnb. Roe Decl. ¶ 6 (43 TTABVUE 305). She further testified that she has

operated a property located in the Silver Lake area in Los Angeles as a bed and

breakfast since 2013, that she has been designated as a “Super Host” on Airbnb since

2014, Roe Decl. ¶¶ 6-8; Ex. A-1 (43 TTABVUE 305, 3-20),17 and that “[i]t has been my

profession to manage[:] all guest communications, concierge, new guest arrival and

departure, including all permits and insurance.” Roe Decl. ¶ 6 (43 TTABVUE 305).

On cross-examination, she stated that she believed that she was providing hotel

services when she rented out her property through Airbnb. Roe Cross Tr. 50:7-22;

70:8-14 (64 TTABVUE 53, 73).

Applicant also testified at trial that “[m]y husband and I have wanted to open a

Hotel in Ojai for some time, the name The Hotel El Roblar matched numerous

17 Applicant testified at trial that she has also listed other locations on Airbnb, Roe Decl. ¶ 9;

Exs. A-2-A-3 (43 TTABVUE 305, 21-24), but her testimony and related exhibits regarding

those locations were excluded from the record. 61 TTABVUE 11-12.

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Opposition No. 91272200

locations in Ojai that were available when I registered the mark, and when I secured

the brand identities in 2017.” Roe Decl. ¶ 11 (43 TTABVUE 305).18 She did not explain

what she meant by “register[ing] the mark” or “secur[ing] the brand identities in

2017.” She testified that “[w]hen I acquired the social media handles in 2017 (i) the

Twitter accounts @Elroblar and @Elroblarhotel.com; (ii) the Instagram accounts

@Thehotelelroblar; @Theroblarhotel, @Hotelrolbar [sic], @Hotelroblarojai,

@Elroblarhotelojai, @elroblarhotel, and @Thehotelroblarojai; and (iii) the Facebook

accounts, it was with the intent to use as a hotel.” Roe Decl. ¶ 28 (43 TTABVUE 307).

There is no documentary corroboration that Applicant acquired these “social

media handles in 2017,” and she testified in her discovery deposition that “I had

secured in 2018 different marketing terms regarding that particular name,” Roe Tr.

68:22-23 (26 TTABVUE 73), that “I purchased and maintained multiple web domains

and other social media names in 2018,” Roe Tr. 69:4-5 (26 TTABVUE 74), and that

the social media handles were “collected in 2018.” Roe Tr. 93:12-17 (26 TTABVUE

98).

Exhibits A-4 and A-5 to Applicant’s trial testimony confirm her purchase of the

various domain names on August 16, 2018. Roe Decl. ¶¶ 12-13 Exs. A-4-A-5 (43

TTABVUE 304-05, 25-28). In her discovery deposition, Applicant confirmed her

acquisition of the domain names in 2018, Roe Tr. 118:17-20 (26 TTABVUE 123), and

in an interrogatory response, Applicant stated that she first formed her intent to use

18 Applicant’s husband testified that since Applicant received her real estate license “we have

both been very committed to the dream of finding, designing, and operating a hotel.” C. Roe

Decl. ¶ 6 (44 TTABVUE 3).

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Opposition No. 91272200

the mark THE HOTEL EL ROBLAR for hotel services on August 16, 2018, the day

on which she purchased the domain names. Roe Tr. 185:16-186:3 (27 TTABVUE 43-

44). Contrary to Applicant’s trial testimony, the record shows that she first acquired

the domain names on August 16, 2018 and that she first acquired what she called the

various “social media handles” at some point around that time in 2018.

Applicant also testified at trial that

[i]n 2017 my husband and I had engaged with Dustin

Lancaster. Mr. Landcaster [sic] was in development on a

boutique hotel in Downtown Los Angeles, The Firehouse

Hotel. During this time, I had expressed my interest in

opening a boutique hotel in Ojai, Mr. Lancaster shared

confidential investor decks, and toured us around his 8

room hotel, which was under construction.

Roe Decl. ¶ 18 (43 TTABVUE 306). Applicant testified in her discovery deposition,

however, that she has discussed using the mark THE HOTEL EL ROBLAR with her

husband only since 2018. Roe Tr. 129:13-21 (26 TTABVUE 134). The record shows

that Applicant was not considering use of the mark THE HOTEL EL ROBLAR in

2017 when she “expressed my interest in opening a boutique hotel in Ojai” and toured

The Firehouse Hotel with Mr. Lancaster and her husband.19

19 Applicant testified at trial about other locations that she claimed that she considered at

some point for use as a hotel, including a retirement home in Ojai, and hotels in France,

Montauk, New York, and Mexico. Roe Decl. ¶¶ 20-21, 23; Exs. A-11-A-12, A-14 (43 TTABVUE

306-07, 41-123, 127-28). She admitted that the retirement home could not be used as a hotel,

Roe Decl. ¶ 21; Ex. A-12 (43 TTABVUE 306, 43-123); Roe Cross Tr. 32:11-35:25; Exs. 7-8 (64

TTABVUE 35-38, 143-222), and that she did not have an intent to use the mark THE HOTEL

EL ROBLAR in connection with a property in Mexico. Roe Cross Tr. 20:12-14 (64 TTABVUE

23). She gave equivocal answers regarding her claimed intent to use the mark in connection

with the properties in Montauk, New York, and France, Roe Cross Tr. 22:10-24:6 (64

TTABVUE 25-27), but we find that this testimony is not probative of her intent to use the

mark THE HOTEL EL ROBLAR in connection with hotel services because, as discussed

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Opposition No. 91272200

C. The Hotel Property at 122 East Ojai Avenue in Ojai

Opposer’s trial witness Cathy Cluff testified that her parents purchased real

property at 122 East Ojai Avenue in Ojai in 1977, Cluff Decl. ¶ 2 (33 TTABVUE 2),

and that they founded The Oaks at Ojai, a hospitality and spa business. Cluff Decl.

¶ 1 (33 TTABVUE 2). Ms. Cluff’s parents operated a hotel and spa called The Oaks

at Ojai at that location for several decades. Cluff Decl. ¶¶ 3, 8 (33 TTABVUE 2-3).

Ms. Cluff began working in the family business in 1989, and became its CEO in 2010.

Cluff Decl. ¶ 3 (33 TTABVUE 2).

At the time of its construction in the early 20th Century, the hotel located at 122

East Ojai Avenue was originally known as and operated as the “El Roblar.” Cluff

Decl. ¶ 7 (33 TTABVUE 3). Applicant admitted in her discovery deposition that she

knew in 2018 that the name “The Hotel El Roblar” had been used at one point in

connection with a hotel at 122 East Ojai Avenue. Roe Tr. 119:23-120:11 (26

TTABVUE 124-25); Roe Tr. 206:5-11 (27 TTABVUE 64). She testified at trial that

“[t]he property known as The Oaks at Ojai, located [sic] 212 [sic] Ojai Ave, Ojai has

been operating under the name The Oaks since 1940’s,” Roe Decl. ¶ 36 (43 TTABVUE

308), but provided no documentary support or corroboration for her claim. At Mr.

Goode’s discovery deposition, he testified that he first came to Ojai in 1966 or 1967,

Goode Tr. 17:16-17 (45 TTABVUE 20), and that he recalled seeing a sign reading

below, she testified at trial that she and her husband had settled on using the mark in

connection with a specific hotel in Ojai. Roe Decl. ¶ 14 (43 TTABVUE 306).

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Opposition No. 91272200

“Hotel El Roblar” at the property at 122 East Ojai Avenue. Goode Tr. 20:1-11 (45

TTABVUE 23).

Ms. Cluff’s parents operated the hotel as The Oaks at Ojai between 1977 and late

2017, when it was closed, Cluff Decl. ¶ 7 (33 TTABVUE 3), but they kept a large,

framed print of the El Roblar hotel and its original architectural drawings on public

display in the lobby of the hotel for decades and one of the main gathering spaces at

the hotel was known as the “El Roblar Lounge,” a reference to the history of the

building and its founder, Edward Libbey. Cluff Decl. ¶ 10 (33 TTABVUE 3-4).

The Oaks at Ojai hotel closed in late 2017 after it was damaged in the Thomas

fire, Cluff Decl. ¶ 1 (33 TTABVUE 2), an enormous fire that devastated large areas

of the Ojai Valley. McBride Decl. ¶ 15 (31 TTABVUE 4). At some point in 2018, the

Cluff family decided to sell the property, which it held through El Roblar Property

LP, a limited partnership controlled by the family. Cluff Decl. ¶ 12 (33 TTABVUE 4).

From approximately October through December of 2018, the Cluff family’s attorney,

Ted Muegenburg, received bids to purchase the property through a request for

proposal process. Cluff Decl. ¶ 14 (33 TTABVUE 4). Applicant received a copy of the

request for proposal. Roe Tr. 228:1-229:8; Ex. 23 (27 TTABVUE 86-87; 29 TTABVUE

204-08); Roe Decl. ¶ 37; Ex. A-21 (43 TTABVUE 308, 213-18).20 Applicant and the

future members of Opposer ultimately submitted bids, but as discussed immediately

20 The request for proposal set a deadline for the submission of proposals of 5:00 p.m. on

December 31, 2018. Roe Decl. Ex 21 (43 TTABVUE 214).

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Opposition No. 91272200

below, Applicant was involved in efforts to purchase the property before it formally

went on the market.

D. Applicant’s Attempt to Purchase the Property at 122 East Ojai

Avenue

Applicant testified in her discovery deposition that in May or June 2018, she first

toured the property at 122 East Ojai Avenue with her husband, Mr. Goode, and Ms.

Cluff. Roe Tr. 172:2-8 (27 TTABVUE 30).21 Her testimony reflected her belief at that

time that the Cluff family might soon sell the property.

In her discovery deposition, Applicant authenticated and testified about a lengthy

exhibit consisting of texts between her and Mr. Goode, a fellow Ojai resident, at

various times between 2018 and 2020 that were produced by Applicant in discovery.

Roe Tr. 207:21-209:16; Ex. 18 (27 TTABVUE 65-67, 29 TTABVUE 94-197). Mr. Goode

was also examined about the texts during his discovery deposition. Goode Tr. 25:2-

26:19; 27:23-30:20; Exs. 65-66 (45 TTABVUE 28, 30-33; 46 TTABVUE 17-125).22 The

texts in 2018 and 2019 primarily concerned Applicant’s attempt to purchase the

21 In his trial testimony, Applicant’s husband mistakenly placed the tour in 2017. C. Roe Decl.

¶ 14 (44 TTABVUE 3) (“In 2017 my wife Bianca and I pursued the idea of purchasing a hotel

and were able to see the property at 212 [sic] Ojai Ave, Ojai for the first time and took along

Eric Goode who had expressed interest as a potential investor.”). As discussed below, the

record shows that the tour actually occurred in July 2018.

22Mr. Goode testified in his discovery deposition that texting was the normal means of

communication with Applicant and that “she texted me a lot.” Goode Tr. 36:4-8 (45 TTABVUE

39).

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Opposition No. 91272200

property at 122 East Ojai Avenue, and they provide useful information in that

regard.23

A June 26, 2018 text from Applicant to Mr. Goode states that Applicant had met

with a representative of The Oaks at Ojai and that Applicant believed that the Cluffs

were likely to put the property up for sale later in the year. The text concluded that

Applicant was thinking about “requesting a tour of the property.” Roe Tr. Ex. 18 (29

TTABVUE 105). On July 2, Applicant texted Mr. Goode that she had written Ms.

Cluff for a tour, Roe Tr. Ex. 18 (29 TTABVUE 109), and a subsequent text confirmed

that a tour had been scheduled. Roe Tr. Ex. 18 (29 TTABVUE 110). It appears that

Applicant and Mr. Goode toured the property in July, and by the end of July,

Applicant had met several times with Ms. Cluff regarding the property. Roe Tr. Ex.

18 (29 TTABVUE 132-34).

23 In her trial testimony, Applicant accused Mr. Goode of deceit in connection with her

attempts to purchase the property at 122 East Ojai Avenue through misrepresentation of his

intention to participate in the purchase together with Applicant and her husband. Roe Decl.

¶¶ 56-59 (43 TTABVUE 311). Mr. Goode denied those accusations in his trial testimony.

Goode Decl. ¶ 8 (35 TTABVUE 3). The texts between Applicant and Mr. Goode, a number of

which are discussed or quoted below, show that Mr. Goode acted as a sounding board or

adviser to Applicant, that by late October 2018, Applicant knew that Mr. Goode might not be

involved with her in purchasing the property, and that by late November 2018, it was “very

clear to both Channon & I that you don’t want to partner with us at this point, we would

however, like to ask advice from you moving forward, so we can continue to work towards

making our dream a reality.” Roe Tr. Ex. 18 (29 TTABVUE 163-64, 174). Ms. Cluff testified

that she was suspicious about whether Mr. Goode was Applicant’s partner because Ms. Cluff

was dealing with him as part of the group that ultimately became Opposer, and she could

never get a satisfactory explanation from Applicant on that issue. Cluff Decl. ¶¶ 15, 18 (33

TTABVUE 4-5). In the final analysis, we conclude that neither Mr. Goode’s possible

misconduct in his dealings with Applicant, nor Applicant’s possible misrepresentations to the

Cluff family regarding his participation, are relevant to Applicant’s intention to use the mark

THE HOTEL EL ROBLAR when she filed the opposed application in June 2020.

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Opposition No. 91272200

The texts also indicate that Applicant was researching permits, licenses, and

parking for the property in July 2018. Roe Tr. Ex. 18 (29 TTABVUE 118-19). In late

July, Applicant texted Mr. Goode about using a “strawman” to make an offer or

making an offer through an intermediary. Roe Tr. Ex. 18 (29 TTABVUE 126-27). A

July 30 text from Applicant to Mr. Goode confirmed a lengthy meeting between

Applicant and Ms. Cluff. Roe Tr. Ex. 18 (29 TTABVUE 133).

Applicant testified in her discovery deposition that by early August, she was

researching numbers and loans. Roe Tr. 216:11-219:22; Exs. 18-19 (27 TTABVUE 74-

77; 29 TTABVUE 137-38, 199-200). On August 20, Applicant texted Mr. Goode that

she was preparing a letter of intent and a confidentiality agreement with respect to

possible purchase of the property. Roe Tr. Ex. 18 (29 TTABVUE 148-49).

Applicant also texted Mr. Goode that she was looking at Small Business

Administration loan financing. Roe Tr. Ex. 18 (29 TTABVUE 152-53). Applicant

testified in her discovery deposition that she worked with Annette Jorgensen, a loan

broker at American Riviera Bank in Santa Barbara, California, “in relationship to

financing the acquisition of The Oaks Hotel,” Roe Tr. 196:5-15; Ex. 25 (27 TTABVUE

54, 29 TTABVUE 210-14), and the text chain displays a letter from Ms. Jorgensen to

Applicant regarding SBA loans for $10,000,000 or $13,000,000. Roe Tr. Ex. 18 (29

TTABVUE 162).24

24 Applicant testified at trial that she and her husband had been working with Ms. Jorgensen

with respect to obtaining an SBA loan, Roe Decl. ¶ 22 (43 TTABVUE 307), but Exhibit A-13

accompanying her testimony, an email from Ms. Jorgensen regarding an SBA loan for

$10,000,000 or $13,000,000, Roe Decl. Ex. A-13 (43 TTABVUE 125-26), was excluded from

the record with respect to “the date of the email and the correspondent’s email address.” 61

TTABVUE 8.

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Opposition No. 91272200

Applicant testified in her discovery deposition that she submitted a five-page

proposal to purchase the property on behalf of herself, her husband, and Mr. Goode.

Roe Tr. 238:1-239:2; Ex. 27 (27 TTABVUE 96-97; 29 TTABVUE 220-24). The offered

purchase price was $10,750,000. Roe Tr. Ex. 27 (29 TTABVUE 224). Applicant further

testified that it was submitted to the Cluff family prior to a “formal presentation.”

Roe Tr. 240:4-15 (27 TTABVUE 98). She did not recall when she submitted it, Roe Tr.

239:3-4 (27 TTABVUE 97), but she emailed it to herself on October 5, 2018, Roe Tr.

239:5-13 (27 TTABVUE 97), and according to a text to Applicant from Kimberly Cluff,

Cathy Cluff’s sister, Applicant had submitted an information packet by October 20.

Roe Tr. Ex. 18 (29 TTABVUE 151).

On October 25, Applicant sent a text to Mr. Goode asking him to join a call with

the Cluffs regarding their response to Applicant’s proposal and the issue of financing

for a purchase. Roe Tr. Ex. 18 (29 TTABVUE 163). The text also advised Mr. Goode

that

Please know, at anytime – you decide you don’t want to

partner up, we are more than confident that we can find a

different partner, with the numbers and opportunity that

this is.

Fact is, we want to do this with you first. . . . Now, we need

your help, to open this door to a conversation with The

Cluff’s [sic] and find out if the work that I’ve been

cultivating for the last 6-9 months has any value, or

potential for the future.

Again, we thought you were on board . . . but no hard

feelings either way. We just want to make this happen,

with you before any other.

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Opposition No. 91272200

Roe Tr. Ex. 18 (29 TTABVUE 163-64).25

On November 1, Applicant texted Mr. Goode that the Cluff family was “not ready

to sell the property right now,” but that they wanted to schedule a call “with all of us,

and discuss a Joint Venture.” Roe Tr. Ex. 18 (29 TTABVUE 168-69). On November 3,

she texted Mr. Goode that there were multiple parties interested in the property and

that she needed to know “if u want to proceed with us, we have a very good

relationship with the family.” Roe Tr. Ex. 18 (29 TTABVUE 171).

On November 26, following a November 18 text from Kimberly Cluff to Applicant

regarding a possible meeting, Applicant sent Mr. Goode a text that stated in pertinent

part as follows:

We’ve been in discussions now together over 8 months on

The Oaks, it’s very clear to both Channon & I that you don’t

want to partner with us at this point, we would however,

like to ask advice from you moving forward, so we can

continue to work towards making our dream a reality. This

really is a great opportunity for our family, for town at

large, with the very best prime location in Ojai. I am at a

loss, as to why you have chosen to ignore us after so many

positive plans together . . but whatever, we need to move

on. It is both, Channon and my, dream for the future, what

we have always wanted to do . . . we want The Oaks, we

want to be a part of [its] next chapter, we believe it is a

great opportunity for that alone - I would appreciate a

dialogue with you on what our next move should be.

Roe Tr. Ex. 18 (29 TTABVUE 175).

Applicant later texted Mr. Goode as follows:

[W]e would just like you to be an advisor, take a few phone

calls. No commitment necessary, if you have no bandwith

25 A sentence in this text that begins with the words “It’s why we brought” is obscured and

we do not quote or paraphrase it for that reason.

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Opposition No. 91272200

– we have more than enough to go around – fact is we don’t

even know what is possible. What we do need, is a phone

call with The Cluffs to explore the options, and your

advi[c]e. That doesn’t hurt anyone.

Roe Tr. Ex. 18 (29 TTABVUE 177).

On December 10, Mr. Goode responded that “I just heard from two people that the

Oaks is on the market! Sound[s] like they are selling it. Also sounds like a potential

bidding war.” Roe Tr. Ex. 18 (29 TTABVUE 178).26 He later texted Applicant that “I

think that it is maybe best for me not to get involved. There are other people we know

who are interested.” Roe Tr. Ex. 18 (29 TTABVUE 179).

At some point in late 2018, Applicant hired Butler Consultants, a firm that

prepares business plans. Roe Tr. 147:1-5, 18-20 (27 TTABVUE 32). Applicant

“contacted them about the potential of a business plan relating to the mark,” Roe Tr.

175:2-8 (27 TTABVUE 33), and signed an “Agreement for Service” on January 18,

2019 for Butler Consultants to complete a “Level 3 Business Plan” on a “Rush” basis.

Roe Tr. 243:11-244:11; Ex. 30 (27 TTABVUE 101-02; 29 TTABVUE 231-32).

Prior to Applicant’s execution of the Agreement for Services, Butler Consultants

sent a document to Applicant “in relationship to a business plan.” Roe Tr. 277:1-10;

Ex. 47 (27 TTABVUE 135, 29 TTABVUE 299-330). It was captioned “The El Roblar

Hotel.” Roe Tr. Ex. 47 (29 TTABVUE 299). The document contained multiple

questions followed by what appear to be Applicant’s answers, as well as sections

where Applicant was requested to provide information. One of the questions, “What

26 Applicant testified in her discovery deposition that she recalled that there were four parties

who were interested in acquiring the property. Roe Tr. 139:24-140:9 (26 TTABVUE 144-45).

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Opposition No. 91272200

is the name of your company?,” was followed by the answer “The El Roblar Hotel,”

which the document states is to be located in Ojai. Roe Tr. Ex. 47 (29 TTABVUE 300).

The document contained numerous references to the historical significance of the El

Roblar Hotel to the Ojai community. Roe Tr. Ex. 47 (29 TTABVUE 301, 304, 306, 308,

315-30). Applicant admitted that she authored portions of the document, but did not

recall which ones. Roe Tr. 277:11-13 (27 TTABVUE 135).

On December 26, 2018, Applicant texted Mr. Goode asking for “an example of

Proposal for a hotel acquisition that I could work from to submit professionally before

Dec. 31. Something that you can email me?” Roe Tr. Ex. 18 (29 TTABVUE 187). On

December 31, she texted Mr. Goode that she had “[s]ent you an email, need to get our

submission in by 5. I included verbiage, so you can be in or out at anytime. . . . just

want to get our foot in the door. Am available to discuss.” Roe Tr. Ex. 18 (29

TTABVUE 187). Ms. Cluff confirmed that “[o]n December 31, 2018, Ms. Roe

submitted a written letter of intent to purchase the hotel by email to our attorney,

Ted Muegenburg.” Cluff Decl. ¶ 16; Ex. 4 (33 TTABVUE 5, 8-10).

On January 9, 2019, Applicant texted Mr. Goode that she had “offered them

$10,000,000 – because of the SBA loan limit” and that she “[n]eed[ed] help w[ith]

financials to qualify, so I’d love to discuss with you.” Roe Tr. Ex. 18 (29 TTABVUE

189). On January 10, 2019, Applicant and Mr. Goode exchanged texts stating that all

of the offers for the property were around $10,000,000 and that Applicant really

wanted Mr. Goode to partner with her. Roe Tr. Ex. 18 (29 TTABVUE 190).

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Opposition No. 91272200

Applicant authenticated a January 18, 2019 email exchange with her loan broker

Ms. Jorgensen in which Applicant requested, but Ms. Jorgensen declined to provide,

a “Revised Letter of Intent for Purchase of Real Property” with respect to the

property. Roe Tr. 235:8-19; Ex. 25 (27 TTABVUE 93; 29 TTABVUE 210-14). Ms.

Jorgensen wrote that “[w]e do not have enough information to really even do an

interest letter.” Roe Tr. Ex. 25 (29 TTABVUE 210).

E. Opposer’s Offer to Purchase the Property at 122 East Ojai

Avenue

Like Applicant, Mr. McBride and the other future members of Opposer learned in

2018 that the property at 122 East Ojai Avenue was available for purchase, McBride

Decl. ¶ 14 (31 TTABVUE 4), and became aware of the Cluff family’s request for

proposals. McBride Decl. ¶ 16 (31 TTABVUE 4). Mr. McBride testified that in

December 2018, the future members of Opposer “submitted a comprehensive bid to

purchase the property for approximately $13.5 million dollars.” McBride Decl. ¶ 17

(31 TTABVUE 4).

F. The Rejection of Applicant’s Bid and Her Activities in the

Immediate Aftermath

Ms. Cluff testified that “[i]n January 2019, Mr. Muegenberg [sic] informed Ms.

Roe that our family had selected a buyer and that her offer would not be accepted.

Ms. Roe asked to be considered as a backup offer, but our attorney informed her that

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Opposition No. 91272200

there were already two financially-sound backup offers on the table.” Cluff Decl. ¶ 17

(33 TTABVUE 5).27

Applicant sent a January 21, 2019 email to Brian Butler at Butler Consultants in

which she stated that “[w]e just found out we lost the bid for the hotel purchase.” Roe

Tr. 241:16-242:16; Ex. 29 (27 TTABVUE 99-100, 29 TTABVUE 100-01). In her email

to Mr. Butler, Applicant instructed him to “please stop work” and told him that “I’d

like to use the money paid towards a different Buisness [sic] plan, one for our retail

store and bar/event space for SBA loan financing.” Roe Tr. 242:21-243:4; Ex. 29 (27

TTABVUE 100-01; 29 TTABVUE 229). Applicant asked Mr. Butler whether she could

“take a beat before re-submitting on this” and whether Mr. Butler would honor

Applicant’s deposit if she “resumed in a month[.]” Roe Tr. Ex. 29 (29 TTABVUE 229).

Mr. Butler agreed to Applicant’s request, Roe Tr. Ex. 29 (29 TTABVUE 229), but

Applicant testified that Butler Consultants never prepared a business plan for

Applicant’s retail store and bar/event space, Roe Tr. 243:5-7 (27 TTABVUE 101), and

there is no evidence of Applicant’s own preparation of a business plan for any hotel.

On January 22, 2019, the day after her email to Butler Consultants, Applicant

sent an email to her loan broker Ms. Jorgensen in which Applicant stated as follows:

Unfortunately, we missed out on the bid for the hotel, they

were needing a letter of interest last Friday, as they

decided on Sunday and I didn’t qualify for the submission

without it. I was a little under the gun with limited time,

so I thank you for your effort towards explaining

everything to me thoroughly. I have a Retail Business in

27 Applicant claimed in her discovery deposition that she did not recall how she learned that

she had lost the bid. Roe Tr. 242:17-19 (27 TTABVUE 100).

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Opposition No. 91272200

Ojai that we will now focus all off [sic] our efforts towards,

would you let me know what areas SBA finances?

Roe Tr. 245:4-247:20; Ex. 31 (27 TTABVUE 103-05; 29 TTABVUE 234).

Ms. Jorgensen responded as follows:

SBA can finance all the areas you mention below. The

question will be if you are relying on projections or existing

debt service based on tax returns to decide on SBA or a non-

SBA loan. The SBA has the longer loan term. So let’s see

what you need in the way of a dollar amount and then we

can decide what is best for your business. American Riviera

Bank does SBA loans, Cal Coastal loans and regular

commercial business loans and real estate loans.

Roe Tr. Ex. 31 (29 TTABVUE 234). Applicant admitted in her discovery deposition

that she did not subsequently obtain financing for the purchase of any property for

use as a hotel. Roe Tr. 196:19-24 (27 TTABVUE 54).

G. Opposer’s Purchase of the Property and Subsequent Activities

Mr. McBride testified at trial that the “sellers selected [Opposer’s future members]

as the winning bidder,” and that El Roblar Investment Property LLC “was formed on

or about May 17, 2019 for the purpose of purchasing, developing and managing a

luxury hotel on the site of the Historic Hotel El Roblar at 122 East Ojai Avenue.”

McBride Decl. ¶¶ 5, 17 (31 TTABVUE 2, 4). Opposer’s “purchase and sale transaction

closed in September 2019, at which point [Opposer] became the owner of the historic

property.” McBride Decl. ¶ 17 (31 TTABVUE 4).28 Mr. McBride further testified that

28 Applicant obtained a title report on the property at 122 East Ojai Avenue in December

2019 showing that title to the property had been transferred in September 2019 from the

Cluff family’s company to Opposer. Roe Tr. 250:12-251:10; Ex. 34 (27 TTABVUE 108-09; 29

TTABVUE 247-61). She did not recall why she ordered the report. Roe Tr. 251:14-16 (27

TTABVUE 109).

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Opposition No. 91272200

Opposer registered the domain name elroblarhotel.co in September 2019, McBride

Decl. ¶ 19; Ex. 1 (31 TTABVUE 4, 8-11),29 and “launched a website to publicize[ ] our

brand design, our hospitality vision, and our expected re-opening of the Hotel El

Roblar.” McBride Decl. ¶ 19; Ex. 2 (31 TTABVUE 4, 12-17).30

Mr. Shamshiri, the owner of Studio Shamshiri, an architecture and interior design

studio based in Los Angeles, and an Ojai resident for more than a decade, Shamshiri

Decl. ¶¶ 5-6 (34 TTABVUE 2-3), testified at trial that he had worked on branding and

design in connection with the anticipated reopening of the Hotel El Roblar. He

authenticated what he called a “schematic book that Studio Shamshiri developed in

2019 setting forth our detailed and historically-influenced designs for the hotel.”

Shamshiri Decl. ¶ 7; Ex. 1 (34 TTABVUE 3, 4-144). The “schematic book” was

captioned “El Roblar.” Shamshiri Decl. Ex. 1 (34 TTABVUE 5).

Mr. Shamshiri also testified in his discovery deposition that the property at 122

East Ojai Avenue had been closed since the Thomas fire and was closed when Opposer

acquired it, Shamshiri Tr. 26:14-27:4 (48 TTABVUE 29-30), but that Opposer had

recently obtained permits and that the property was under construction, with a

29 In his discovery deposition, Mr. Shamshiri testified that “[w]e had secured other domain

names,” Shamshiri Tr. 53:12 (48 TTABVUE 56), and he authenticated a May 8, 2020 email

to him from Mr. McBride in which Mr. McBride stated that in addition to the elroblarhotel.co

domain name, Opposer had acquired other domain names. Shamshiri Tr. 50:1-53:22; Ex. 57

(48 TTABVUE 53-56; 47 TTABVUE 44-48).

30 The screenshots from Opposer’s website at elroblarhotel.co in Exhibit 2 to Mr. McBride’s

trial testimony were captured on April 6, 2023, McBride Decl. Ex. 2 (31 TTABVUE 12-17),

and his testimony is vague as to when Opposer “launched a website.” The first page of the

captured webpages bears the words “the hotel el roblar” in script and the words “Hotel El

Roblar” appear in typed font on the top of each page. The penultimate page states that “We

are opening our doors soon” and urges visitors to “Please contact us for more information.”

McBride Decl. Ex. 2 (31 TTABVUE 12-17).

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Opposition No. 91272200

projected date for reopening in the Spring of 2024. Shamshiri Tr. 27:5-14 (48

TTABVUE 30). He further testified that there had been many inquiries about future

availability, and that Opposer had been trying to figure out its schedule to see when

it could start selling off rooms. Shamshiri Tr. 28:18-21; 29:1-8 (48 TTABVUE 31-32).31

Ms. Cluff testified that “[t]hroughout the purchase process, the Opposer’s group

have made it known that they would honor the history and legacy of the hotel and its

place in Ojai. So far as I know, they have always planned to reopen the hotel under

the historic name, Hotel El Roblar. They named the purchasing entity El Roblar

Investment Property LLC. Like our selling entity, El Roblar Properties LP, the

Opposer’s LLC is named for the historic hotel.” Cluff Decl. ¶ 19 (33 TTABVUE 5). Mr.

Shamshiri testified in his discovery deposition that Opposer decided to use the name

Hotel El Roblar because the hotel had originally been called that and Opposer’s

intention was to bring the hotel property back to its original glory when it opened in

1919 by using the original name. Shamshiri Tr. 12:15-13:9 (48 TTABVUE 15-16). Mr.

Goode testified in his discovery deposition that no other names had been considered

because “we wanted to honor the history of the property and I think the Historic

Preservation, the group wanted that as well.” Goode Tr. 23:2-6 (45 TTABVUE 26).

31 Mr. Shamshiri explained that “we had inquiries from large groups that are hosting events

down the road, whether it be a conference or, you know, we have been approached by the Ojai

Valley Inn to, you know, be overflow from some of their events; and they approached us,”

Shamshiri Tr. 29:1-5 (48 TTABVUE 32), and that “[t]hey actually wanted to buy rooms this

year, but, again, until we have a definitive opening date, we have not agreed to any of that.”

Shamshiri Tr. 29:6-8 (48 TTABVUE 32).

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Opposition No. 91272200

H. The May 2020 Emails Between Opposer and Applicant

Mr. Shamshiri testified in his discovery deposition about emails between Mr.

Shamshiri and Messrs. McBride, Ebbink, and Goode in early May 2020 regarding Mr.

Shamshiri’s draft of an email from him to Applicant inquiring about the purchase of

the domain name thehotelelroblar.com. Shamshiri Tr. 50:1-58:4; Ex. 57 (48

TTABVUE 53-16; 47 TTABVUE 44-48).32 He was seeking the input of the other

members on his draft, Shamshiri Tr. 51:14-24 (48 TTABVUE 54), which we reproduce

below:

Mr. Shamshiri characterized the emails among Opposer’s members as “looking to see

what was the path of least resistance” in obtaining the domain name

thehotelelroblar.com from Applicant. Shamshiri Tr. 57:14-19 (48 TTABVUE 60).

32 Mr. Shamshiri appears to have been selected to reach out to Applicant because of their

longstanding friendship. Applicant testified at trial that she had been friends with Mr.

Shamshiri since 2014, when she served as his realtor in connection with his sale of property

in Ojai. Roe Decl. ¶¶ 60-61 (43 TTABVUE 311). Her husband testified that “Bianca and I

have both known Ramin Shamshiri for quite some time and have shared many intimate

moments and family gatherings at both his home and ours,” that “Bianca had worked with

Ramin on selling his first property in Ojai and she showed him other potential properties to

develop over the years,” and that “Ramin and his family were close friends and people we

saw often.” C. Roe Decl. ¶¶ 21-23 (4 TTABVUE 4).

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Opposition No. 91272200

Mr. Shamshiri authenticated Mr. McBride’s response, which we reproduce below:

Shamshiri Tr. 54:9-19 (48 TTABVUE 57). Mr. Shamshiri also authenticated his email

in response to Mr. McBride, which we reproduce below,

Shamshiri Tr. 55:10-56:4 (48 TTABVUE 58-59), as well as Mr. McBride’s subsequent

email in response, which we reproduce below:

Shamshiri Tr. 56:14-57:6 (48 TTABVUE 59-60).33

33 In amended and superseding responses to Applicant’s first set of interrogatories made of

record by Applicant, Opposer responded to an interrogatory from Applicant asking Opposer

to identify “all domain names and websites owned or operated by Opposer that include the

term El Roblar” by identifying the domain names elroblarhotel.co, roblarhotel.com,

theelroblar.com, theelroblarhotel.com, thehotelelroblarojai.com, the roblar.com, and

theroblarhotel.com. Amended and Superseding Resp. to Int. No. 11 (62 TTABVUE 10).

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Opposition No. 91272200

Mr. McBride approved the sending of a revised email to Applicant, and Mr.

Shamshiri responded that he would send it that day. Shamshiri Tr. Ex. 57 (47

TTABVUE 47). The record does not contain a copy of the revised email that was

actually sent by Mr. Shamshiri to Applicant.

On May 12, 2020, Applicant sent the email reproduced below to Mr. Shamshiri:

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Opposition No. 91272200

Roe Tr. 91:1-92:6; Ex. 8 (26 TTABVUE 96-97; 28 TTABVUE 39-40).34 Mr. Shamshiri

testified in his discovery deposition that he believed that this email was in response

to his email to Applicant. Shamshiri Tr. 41:14-21; 45:12-15 (48 TTABVUE 44, 48).

Applicant confirmed in her discovery deposition that the listed domain names

were the ones that she owned relating to the applied-for mark THE HOTEL EL

ROBLAR, Roe Tr. 92:22-25 (26 TTABVUE 97), and that the listed social media

accounts were the ones that she “collected in 2018.” Roe Tr. 93:12-17 (26 TTABVUE

98).

Mr. Shamshiri responded to Applicant’s May 12, 2020 email in a May 15, 2020

email, which we reproduce below:

Roe Tr. 94:17-25; Ex. 8 (26 TTABVUE 99; 28 TTABVUE 39-40). Mr. Shamshiri

testified in his discovery deposition that his request that Applicant “[l]et me know

what kind of alternate solutions you would consider” was “a reference to how much

do you want to -- how much are you going to charge us in layman’s terms,” Shamshiri

Tr. 45:24-46:6 (48 TTABVUE 48-49), and that he discussed Applicant’s statement in

34 Applicant acquired the listed domain name hotelelroblar.com on December 3, 2019. Roe Tr.

289:21-290:9; Ex. 49 (27 TTABVUE 147-48; 29 TTABVUE 332).

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Opposition No. 91272200

her May 12, 2020 email that the domain names and social media handles were worth

more than $2,500 with Messrs. McBride, Goode, and Ebbink. Shamshiri Tr. 46:7-15

(48 TTABVUE 49).

Applicant’s response to Mr. Shamshiri’s May 15, 2020 email is set forth in a May

18, 2020 email, which we reproduce below:

Roe Tr. 97:1-98:16; Ex. 9 (26 TTABVUE 102-03; 28 TTABVUE 41). When asked in

her discovery deposition whether she responded to Mr. Shamshiri’s question in his

May 15, 2020 email regarding her “intention to use the domains for something else if

we do not acquire the rights,” Applicant first testified “[n]ot clearly,” Roe Tr. 95:22-

24 (26 TTABVUE 100), and shortly thereafter testified that she did not know or recall

whether she responded. Roe Tr. 96:22-25 (26 TTABVUE 101).

Mr. Shamshiri’s May 26, 2020 email in response is reproduced below:

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Opposition No. 91272200

Roe Tr. 98:20-25; Ex. 9 (26 TTABVUE 105; 28 TTABVUE 41). Mr. Shamshiri testified

in his discovery deposition that his reference to “a third party” was to counsel,

Shamshiri Tr. 49:3-10 (48 TTABVUE 52), and that his statement that “we would

rather just give you the money than go through that process” referred to the legal

process. Shamshiri Tr. 49:14-20 (48 TTABVUE 52). Applicant testified in her

discovery deposition that she did not know if she responded to this email, Roe Tr.

99:1-3 (26 TTABVUE 104), and there is no evidence of a response.

I. Opposer’s Assertion of Cybersquatting, Piracy, and Trademark

Infringement Claims Against Applicant

On May 29, 2020, three days after Mr. Shamshiri’s final email to Applicant,

Opposer’s counsel Wesley Mullen sent a letter to Applicant by email in which Opposer

asserted claims against Applicant for cybersquatting, piracy, and trademark

infringement. Roe Tr. 99:4-100:5; Exs. 10-11 (26 TTABVUE 104-04; 28 TTABVUE 43-

45). In her discovery deposition, Applicant first testified that she did not recall

receiving the letter or the email, or responding to the letter, and that she did not

know if anyone responded to the letter on her behalf. Roe Tr. 99:20-101:18 (26

TTABVUE 104-06). When she was shown a subsequent letter from her counsel Chris

Cohen in response to Opposer’s demand letter, in which Mr. Cohen stated that “Ms.

Roe provided me with a copy of your letter dated May 29, 2020, in which you accuse

her of cybersquatting and trademark infringement,” Roe Tr. Ex. 12 (26 TTABVUE

106-08), she acknowledged that she had received Mr. Mullen’s letter, Roe Tr. 101:19-

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Opposition No. 91272200

103:18, Ex. 12 (26 TTABVUE 106-08; 28 TTABVUE 46), although she could not recall

when. Roe Tr. 188:9-12 (27 TTABVUE 46).35

Mr. Mullen’s May 29, 2020 letter on behalf of Opposer stated in pertinent part as

follows:

This Firm is litigation counsel to El Roblar Investment

Property LLC, the owner of the Hotel El Roblar in Ojai,

California. I write to demand that you and In The Field

Ojai LLC (together, “you”) immediately cease and desist

the cybersquatting, piracy, and trademark infringement

described below.

...

It has come to my client’s attention that you and In The

Field Ojai LLC (together, “you”) are engaged in willful and

intentional trademark infringement and cybersquatting in

violation of federal and state law. Specifically, I am

informed that you have purchased, reserved, and excluded

my client from the use or possession of of [sic] domain

names, social media accounts, and digital property

associated with the valuable mark “Hotel El Roblar” and

related intellectual property, including but not limited to

the following:

...

35 Applicant later testified that she did not recall receiving Mr. Mullen’s letter by email but

only by regular mail, Roe Tr. 189:15-190:14 (27 TTABVUE 47-48), even though the letter

bore the notation “VIA EMAIL ONLY.” Roe Tr. Ex. 10 (28 TTABVUE 43).

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Opposition No. 91272200

Please immediately relinquish these properties to my

client. You may contact me at your convenience to discuss

the mechanics of transfer.

Failing compliance by June 17, 2020, my client will take

appropriate action to remedy your unlawful conduct, and it

will recover from you any legal fees incurred.

My client expressly reserves all rights.

Roe Tr. Ex. 10 (28 TTABVUE 43-44).

Applicant acknowledged that she forwarded Mr. Mullen’s letter to her counsel

Chris Cohen, but could not recall when. Roe Tr. 188:17-189:2 (28 TTABVUE 44-45).

Mr. Cohen responded on Applicant’s behalf on June 10, 2020, the day after Applicant

filed the opposed application, in a letter that stated as follows:

Greetings from Ojai. I represent Bianca Roe and In the

Field LLC. Ms. Roe provided me with a copy of your letter

dated May 29, 2020, in which you accuse her of

cybersquatting and trademark infringement. Please direct

all further correspondence on this matter to me.

I understand that your client is the new owner of the real

property located at 122 E Ojai Ave in Ojai, California,

which has been the location of The Oaks at Ojai since 1977.

While there is no doubt that your client now owns that real

property, it is not apparent to me that your client has any

trademark rights in the brand Hotel El Roblar, which was

the name of the business that occupied that same real

property decades ago—and which, as I understand, has not

operated in any capacity since then.

Indeed, Ms. Roe has communicated with Mr. Ramin

Shamshiri (who I assume is a principal of the LLC that you

represent) regarding her ownership of certain web domains

and social media handles that incorporate the Hotel El

Roblar name. Ms. Roe acquired these before your client

purchased the property, in good faith and with a bone [sic]

fide intent to use that mark for hotel services—an intent

that she still possesses.

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Opposition No. 91272200

If your client is interested in purchasing those web

domains and social media handles from Ms. Roe, then she

is happy to consider any reasonable offer, which she can

weigh against her intent to use them herself. Further, if

you are able to offer any evidence of your client’s

preexisting rights to the Hotel El Roblar brand and mark,

then she will, of course, review that information in earnest

and proceed accordingly.

She will not, however, be intimidated by your aggression.

Roe Tr. Ex. 12 (28 TTABVUE 46).

J. The Filing and Prosecution of the Opposed Application

The opposed application was filed on June 9, 2020 (i.e., one day before Applicant

responded to Opposer’s demand letter).36 In her trial testimony, Applicant explained

the background to its filing as follows:

It was on Sunday May 10th 2020, I [was] with my family

in Palm Springs celebrating Mother’s Day, my father-in-

law is a property developer and had recently registered his

location: “Skyloft” https://skyloftapts.com with the

Trademark Commission. It was here I first learnt about

and began the Trademark application process. Exhibit A-8

to my Declaration is a true and accurate copy of a flyer from

Skyloft.

Roe Decl. ¶ 16; Ex. A-8 (43 TTABVUE 306, 36-37).37 Applicant does not explain what

she meant by “the Trademark Commission,” and there is no testimony from her

36 In her brief, Applicant acknowledged that “[a]t the same time [she] filed a co-pending

trademark application for THE EL ROBLAR HOTEL, at Applicant [sic] Serial No.

88/956,261, for the same services under the same basis.” 70 TTABVUE 10. Applicant never

mentioned this application in her testimony in her discovery deposition, in her trial

testimony, or in her testimony on cross-examination, but her counsel confirmed at the oral

hearing that this application was ultimately abandoned.

37 Applicant testified on cross-examination that she did not know about what she called “the

Trademark application process” before she allegedly learned about it from her father-in-law.

Roe Cross Tr. 32:8-10 (64 TTABVUE 35).

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Opposition No. 91272200

father-in-law about registering “his location” with that body. Exhibit A-8 to

Applicant’s testimony is an apartment building advertisement that bears the claimed

registered mark SKYLOFT, but not the federal registration symbol ®. Roe Decl. Ex.

8 (43 TTABVUE 36-37).

Applicant testified in her discovery deposition that she filed the opposed

application herself, without help from anyone else, Roe Tr. 64:8-65:10; Ex. 4 (26

TTABVUE 69-70; 28 TTABVUE 21-25), but she later testified that she was unsure if

she alone worked on the prosecution of her application, Roe Tr. 81:15-84:15; Exs. 6-7

(26 TTABVUE 86-89; 28 TTABVUE 27-37), and then that she “worked with my

attorney on this.” Roe Tr. 84:16-18 (26 TTABVUE 89). In response to an interrogatory

asking her to “[i]dentify each Person (other than Applicant) who participated in the

preparation and/or filing of the Application,” Applicant stated “Applicant’s attorneys

of record.” Resp. to Int. No. 8 (29 TTABVUE 11). Mr. Cohen was formally appointed

as Applicant’s attorney on the application on May 25, 2021, the day on which it was

published for opposition.

In her discovery deposition, Applicant first testified that she did not recall what

intent she had to use the mark THE HOTEL EL ROBLAR when she filed the opposed

application, Roe Tr. 75:7-12 (26 TTABVUE 80), and that she could not recall any

documents that reflected her intent. Roe Tr. 75:20-24 (26 TTABVUE 80). Applicant

later testified, however, that as of the June 9, 2020 filing date of the opposed

application, she intended to own, lease, or otherwise occupy, use, or possess, the Topa

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Opposition No. 91272200

Vista hotel located at 1725 Maricopa Highway in Ojai. Roe Tr. 193:5-9 (27 TTABVUE

51).38

Applicant similarly testified at trial that her intent at the time of filing was to use

the mark in connection with the Topa Vista hotel. Roe Decl. ¶ 24 (43 TTABVUE

307).39 She claimed that she and her husband “decided on 1725 Maricopa Hwy, Ojai”

as the location for their hotel because “[t]his location meets all our goals; it does not

require any partnership, we can operate without third party assistance, we don’t

require any financial investors. We have settled on this location.” Roe Decl. ¶ 24 (43

TTABVUE 307). Neither Applicant nor her husband testified as to when they had

“settled on this location” prior to the filing of the opposed application.

Applicant testified in her discovery deposition that she had discussed the property

at 1725 Maricopa Highway with its owner, Steve Edelson, Roe Tr. 29:21-23; 30:15-

31:1 (26 TTABVUE 34-36), and that at some unspecified time, she asked Mr. Edelson

if the property would be available for her to operate. Roe Tr. 31:17-20 (26 TTABVUE

38 In her discovery deposition, Applicant and Opposer’s counsel engaged in some colloquy

based on the incorrect assumption that the opposed application was filed on June 9, 2019,

not June 9, 2020. Roe Tr. 187:13-189:14; 192:3-193:14 (27 TTABVUE 45-47, 50-51). In the

context of Applicant’s testimony as a whole, it is clear that they were discussing counterpart

dates in 2020.

39 In her discovery deposition, Applicant testified that the hotel at 1725 Maricopa Highway

was located in Meiners Oaks, a community near Ojai. Roe Tr. 27:10-15 (26 TTABVUE 32).

As noted above, Exhibit 6 to Applicant’s trial testimony about the property, a page from

Google Maps showing the property and its location, Roe Decl. ¶ 14; Ex. A-6 (43 TTABVUE

306, 31), and Applicant’s related testimony, were excluded from the record. 61 TTABVUE 11-

12.

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Opposition No. 91272200

36).40 On cross-examination, Applicant summarized her claimed interactions with

Mr. Edelson as follows:

I was offered a lease on Maricopa Highway by the landlord.

It was presented to me not signed. It was e-mailed to me. I

signed it, my husband signed it, and it’s been returned.

After it was returned, my husband got sick. I was offered a

start date of October 1st and since then, because of the

state of my husband’s condition, it’s been postponed. I was

given verbal authority to post the listings on Airbnb in

order for me to actually explore if the numbers and the

pricing could work for my intent, which I believe they can,

and if the date – the start date was then pushed to January

1st and I’m meeting about it next week. That’s my

statement.

Roe Cross Tr. 39:13-25 (64 TTABVUE 42).41

Applicant also testified at trial that “we have begun the design phase of room

upgrades and have plans for changes” for the property at 1729 Maricopa Highway.

Roe Decl. ¶ 33 (43 TTABVUE 308). She authenticated what she described as “true

and accurate copies of pictures of the hotel rooms.” Roe Decl. ¶ 35; Ex. A-20 (43

TTABVUE 308, 158-212).42

40 Applicant described and authenticated a “Listing Summary of the location where I plan to

provide hotel services under the Mark,” which describes the location as a “motel.” Roe Decl.

¶ 15; Ex. A-7 (43 TTABVUE 306, 32-34). LIV Sotheby’s International Realty Ojai, Applicant’s

employer at the time of trial, is listed as the office that sold the property in February 2012.

Roe Decl. Ex. A-7 (43 TTABVUE 33).

41 Applicant was cross-examined at trial prior to the Board’s ruling excluding various trial

exhibits and related testimony regarding the alleged lease and Airbnb listings for the

property at 1725 Maricopa Highway. As noted above, we have considered her testimony on

cross-examination regarding the alleged commercial lease.

42 The pictures in Exhibit 20 were excluded from the record to the extent that they were not

previously produced by Applicant. 61 TTABVUE 8. Applicant also authenticated what she

described as “true and accurate copy of my plans for upgrades to the hotel rooms,” Roe Decl.

¶ 34; Ex. A-19 (43 TTABVUE 308), but Exhibit A-19 and Applicant’s related testimony were

excluded from the record. 61 TTABVUE 11-12.

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Opposition No. 91272200

In response to Applicant’s trial testimony, Mr. Edelson testified in September

2023, prior to the Board’s ruling excluding various exhibits and testimony pertaining

to the property at 1725 Maricopa Highway, that he had met Applicant only twice and

had not seen her in over four years, and that she “has never communicated to me an

intent to operate a hotel on the property, under the name Hotel El Roblar or any other

name, at any time.” Edelson Decl. ¶ 9 (63 TTABVUE 3). He further testified that “I

am not Ms. Roe’s landlord, she is not my tenant, and I never signed this document,”

Edelson Decl. ¶ 4 (63 TTABVUE 2),43 that Applicant “has no right to list any part of

the property at 1725 Maricopa Highway on Air BnB,”44 and that Applicant has never

rented any property from him, including the property at 1725 Maricopa Highway.

Edelson Decl. ¶¶ 6-8 (63 TTABVUE 3).

K. The Civil Litigation Involving the Parties

On May 19, 2021, about 11 months after the parties exchanged letters regarding

Opposer’s claims, Opposer filed suit in the United States District Court for the

Central District of California in Los Angeles against Applicant and her company In

the Field Ojai LLC, asserting claims of unfair competition, cybersquatting,

trademark dilution, common law unfair competition, and common law conversion.

Shamshiri Tr. 33:15-34:12; Ex. 55 (48 TTABVUE 36-37; 47 TTABVUE 29-42).

43 Mr. Edelson’s testimony regarding “this document” refers to the lease document that was

subsequently excluded from the record. 61 TTABVUE 11-12.

44Applicant’s alleged Airbnb listings regarding the 1725 Maricopa Highway location in

Exhibit A-2 to her trial testimony were excluded from the record. 61 TTABVUE 11-12.

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Opposition No. 91272200

It is not clear exactly what occurred between the parties’ exchange of letters in

June 2020 and the filing of the suit in May 2021, or what the parties did to try to

resolve their dispute during that period or thereafter. In connection with the parties’

January 14, 2022 discovery conference in this case, the assigned Board Interlocutory

Attorney stated in his order summarizing the conference that in response to an

inquiry to the parties “as to whether the parties have previously engaged in

settlement discussions,” Opposer “noted extensive settlement discussions between

the parties directly surrounding the district court action and that communication

between the parties remains open,” but that “ Opposer saw no need to delay discovery

in this matter for the purpose of settlement in view of the little progress made thus

far and requested that this matter proceed in accordance with the current schedule.”

11 TTABVUE 2.

In any event, Applicant moved to dismiss Opposer’s complaint in the civil action

on the ground that it failed to state claims upon which relief could be granted. Roe

Decl. ¶ 70 (43 TTABVUE 312). The District Court granted the motion on August 25,

2021, and gave Opposer leave to replead. Roe Decl. ¶ 70; Ex. A-28 (43 TTABVUE 312,

251-54).45 Opposer apparently did not replead its claims, and the case was dismissed

45 The District Court stated in its minute order dismissing the pleaded claims that Opposer

“alleges it is the ‘owner of the Hotel El Roblar marks and brand,’ that ‘[t]he name ‘Hotel El

Roblar’ is an inherently distinctive mark,’ and that ‘[t]he public identifies the Hotel El Roblar

name with the iconic property owned by the Plaintiff in Ojai, California.’ . . . Defendants

complain these allegations fail to establish which marks are at issue and present mere legal

conclusions, rather than facts which can support a claim for relief. The Court agrees that

Plaintiff’s allegations are legal conclusions, but Plaintiff does identify ‘Hotel El Roblar’ as the

mark at issue. At present, Plaintiff’s allegations only show a possibility, rather than a

plausibility, that they own the ‘Hotel El Roblar’ mark. While Plaintiff may own the property,

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Opposition No. 91272200

without prejudice in September 2021. 11 TTABVUE 2. This opposition was filed the

next month.

III. Opposer’s Entitlement to a Statutory Cause of Action

“Entitlement to a statutory cause of action is an element of the plaintiff’s case in

every inter partes proceeding.” Mystery Ranch, Ltd. v. Terminal Moraine Inc., Opp.

No. 91250565, 2022 WL 17369425, at *6 (TTAB 2022) (cleaned up) (citing Corcamore,

LLC v. SFM, LLC, 978 F.3d 1298, 1303-07 (Fed. Cir. 2020)).

Section 13 of the Trademark Act, 15 U.S.C. § 1063, “provides that ‘[a]ny person

who believes that he would be damaged by the registration of a mark . . . may . . . file

an opposition’ with the USPTO . . . .” Curtin v. United Trademark Holdings, Inc., 137

F.4th 1359, 1362 (Fed. Cir. 2025) (citing 15 U.S.C. § 1063). “[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.” Id. at 1367 (citing

Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 129-34 (2014));

see also Australian Therapeutic Supplies Pty Ltd. v. Naked TM, LLC, 965 F.3d 1370,

1373-74 (Fed. Cir. 2020); Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d

1270, 1275 (Fed. Cir. 2014)); Tequila Cuadra S. de RL de CV v. Manufacturera De

as the Grant Deeds show, upon which Hotel El Roblar once sat or currently sits, that

ownership does not necessarily establish they own any related marks or that such marks

exist. By failing to sufficiently allege well-pleaded facts of the existence, ownership, and use

of the ‘Hotel El Roblar’ mark, Plaintiff fails to satisfy the federal pleading standard as to all

of its claims.” August 25, 2021 Minute Order at 4 (43 TTABVUE 254).

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Opposition No. 91272200

Botas Cuadra, S.A. de C.V., Opp. No. 91282327, 2025 WL 1431504, at *4 (TTAB 2025)

(citing Meenaxi Enter., Inc. v. Coca-Cola Co., 38 F.4th 1067, 1070 (Fed. Cir. 2022)

(citing Lexmark, 572 U.S. 118, 129, 132)); Corcamore, 978 F.3d at 1303-07).

Opposer argues in its main brief that “[e]ntitlement to a statutory cause of action

can be established through, among other things, a ‘reasonable belief’ that the opposer

‘will be or is being damaged by the false suggestion of a connection between a person

and the challenged mark.’” 67 TTABVUE 19 (quoting Piano Factory Grp., Inc. v.

Schiedmayer Celesta GmbH, 11 F.4th 1363, 1376 (Fed. Cir. 2021)). According to

Opposer, it “is entitled to a statutory cause of action because, as the owner of the

historic Hotel El Roblar, it has a real interest in Applicant’s attempt to register ‘the

hotel el roblar’ as a mark” and because it “owns the Hotel El Roblar and reasonably

believes it will be damaged by false association unless its opposition to registration

of the proposed mark ‘the hotel el roblar’ is sustained.” Id. (citations omitted). Finally,

Opposer argues that “assuming Applicant’s testimony and statements in her

application were true, Opposer and Applicant would be competitors in the market for

hotel services.” Id. (citation omitted).

Applicant responds that

Opposer failed to provide any documentary evidence

showing use by Opposer in the United States commerce of

its alleged common-law trademark or that it owns a

historical institution called THE HOTEL EL ROBLAR.

Opposer claims in its brief that it has worked to restore a

historic property, but has not provided any documentary

evidence that it has actually used the mark THE HOTEL

EL ROBLAR in United States Commerce. In fact, even

Opposer’s website states “We are opening our doors soon.”

. . . This signifies Opposer does not have an active

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Opposition No. 91272200

trademark, common law or otherwise. Opposer has alleged

it is the owner of “the Hotel El Roblar”, however, this is

simply not true. Opposer acquired the property located at

122 E Ojai Ave, Ojai . . . but has not yet provided hotel

services nor did it acquire any brand under “the Hotel El

Roblar.” . . . Opposer does not obtain standing merely by

being a competitor in the marketplace, there must be a

basis for damages. Opposer has no trademark that would

cause confusion with Applicant’s Mark, Opposer has not

proven THE HOTEL EL ROBLAR is a historical

institution. As such, Opposer lacks standing.

Here, Opposer and Applicant already had a court of

competent jurisdiction determine Opposer does not own a

trademark. The U.S. District Court for the Central District

of California held, “While Plaintiff may own the property,

as the Grant Deeds show, upon which Hotel El Roblar once

sat or currently sits, that ownership does not necessarily

establish they own any related marks or that such marks

exist. By failing to sufficiently allege well-pleaded facts of

the existence, ownership, and use of the ‘Hotel El Roblar’

mark . . . .” Opposer does not own a trademark, and its

ownership is merely to a piece of real property. Opposer did

not acquire any trademark rights when it purchased the

Location let alone rights to the name THE HOTEL EL

ROBLAR.

Opposer lacks standing to bring this opposition because it

has failed to demonstrate any ownership of a trademark or

proprietary rights that would confer a “real interest” in this

proceeding. The Board has consistently held that mere

competition is insufficient to establish standing. As such,

without evidence supporting a legitimate trademark

interest or a reasonable belief in potential damage, the

Opposer does not meet the requisite standard for standing.

70 TTABVUE 11-12 (citations omitted).46

46Both parties refer to Opposer’s “standing” to oppose. “We now refer to standing as

entitlement to a statutory cause of action.” Univ. of Ky. v. 40-0, LLC, Opp. No. 91224310,

2021 WL 839189, at *4 (TTAB 2021). “Despite the change in nomenclature, our prior

decisions and those of the U.S. Court of Appeals for the Federal Circuit [addressing standing]

remain equally applicable.” Id.

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Opposition No. 91272200

In its reply brief, Opposer argues that it “intends to offer hotel services there

under the very same mark Applicant seeks to register in connection with hotel

services,” 71 TTABVUE 7, and that Opposer “has standing for at least three reasons,

any one of which is sufficient.” Id. at 8. First, Opposer argues that it is a “‘potential

competitor to Applicant’ in the market for hotel services,” id. (quoting Mystery Ranch,

2022 WL 17369425, at *9), and that the “parties’ competitor status is sufficient to

establish standing, especially because Applicant seeks to use the very same mark as

Opposer in connection with her purported competing hotel business.” Id.

Second, Opposer argues that it “‘has a present or prospective interest’ in using the

proposed Mark ‘in its business,’” id. (quoting Univ. of Ky., 2021 WL 839189, at *6),

because it “intends to use the mark THE HOTEL EL ROBLAR in connection with its

luxury hotel business at the site of the historic Hotel El Roblar in Ojai, California.”

Id.

Third, Opposer repeats its argument that because it “owns the Hotel El Roblar, it

has a ‘reasonable belief that it will be [and] is being damaged by the false suggestion

of a connection between [the hotel] and the challenged mark[,]’ ‘the hotel el roblar.’”

Id. at 9.

We agree with Opposer that it is entitled to oppose Applicant’s application.

Although a plaintiff’s entitlement to a statutory cause of action is a threshold issue,

“it is ‘a low threshold, intended only to ensure that the plaintiff has a real interest in

the matter, and is not a mere intermeddler.’” Univ. of Ky., 2021 WL 839189, at *6

(quoting Syngenta Crop Prot., Inc. v. Bio-Chek, LLC, Opp. No. 91175091, 2009 WL

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Opposition No. 91272200

691309, at *5 n.8 (TTAB 2009) (internal citation omitted)). “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., Inc. v. Ullenberg Corp., 823 F.2d 490, 492 (Fed. Cir. 1987)). As the

Federal Circuit explained in Curtin, “[i]n Corcamore, this court specified ‘that the

purpose of the zone-of-interests test is to foreclose[ ] suit only when a plaintiff’s

interests are so marginally related to or inconsistent with the purposes implicit in

the statute that it cannot reasonably be assumed that Congress authorized that

plaintiff to sue.’” Curtin, 137 F.4th at 1367 (quoting Corcamore, 978 F.3d at 1303

(quoting Lexmark, 572 U.S. at 130, 134)).

In Curtin, the Federal Circuit held that entitlement must be evaluated with

reference to the ground(s) for opposition asserted by the opposer. Id. at 1366-67. We

focus on whether Opposer is statutorily entitled to bring its claim that Applicant

lacked a bona fide intention to use the mark THE HOTEL EL ROBLAR in commerce

for hotel services when she filed the opposed application under Section 1(b) of the

Trademark Act.47 If Opposer demonstrates its entitlement to bring this claim, it also

is statutorily entitled to bring its false suggestion of a connection claim under

Trademark Act Section 2(a). Tequila Cuadra, 2025 WL 1431504, at *5 (“[O]nce an

47 “An opposer is ‘entitled to rely on any statutory ground which negates [an applicant’s] right

to the subject registration[.]’” M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1375 (Fed. Cir.

2015) (quoting Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1031 (CCPA 1982)

(internal citation omitted)). “Because a bona fide intent to use the mark in commerce is a

statutory requirement of a valid intent-to-use trademark application under Section 1(b), the

lack of such intent is a basis on which an opposer may challenge an applicant’s mark.” Id.

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Opposition No. 91272200

opposer meets the requirements for [statutory entitlement as to one claim], it can rely

on any of the statutory grounds for opposition set forth in [the Trademark Act].”)

(quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1377 (Fed. Cir.

2012)).

Contrary to Applicant’s arguments, Opposer does not have to assert a proprietary

interest in the mark THE HOTEL EL ROBLAR because “[a]n 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. Opposer may

“demonstrat[e] a real interest in the [opposition] proceeding and a reasonable belief

of damage regardless of whether [Opposer] lacks a proprietary interest in an asserted

unregistered mark.” Id.

“Opposer may prove its entitlement by establishing that it has a present or

prospective interest in using the [mark] in its business,” Univ. of Ky., 2021 WL

839189, at *6, as an actual or prospective competitor of Applicant. We hold that these

principles apply to Opposer’s claim under Section 1(b) of the Trademark Act that

Applicant lacked a bona fide intention to use the mark THE HOTEL EL ROBLAR in

commerce for hotel services when she filed the opposed application.

“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). In Australian Therapeutic

Supplies, the Federal Circuit did not define a “minimum threshold of commercial

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Opposition No. 91272200

activity” required of a plaintiff to show a real interest in a proceeding, and a

reasonable belief in damage proximately caused by registration of the involved mark,

id., but there is no doubt here that Opposer has engaged in sufficient commercial

activity to show that it is more than an intermeddler in its opposition to Applicant’s

registration of the mark THE HOTEL EL ROBLAR for hotel services.48

As discussed in detail above, the record shows that at the time the notice of

opposition was filed, Opposer’s trade name included the words “El Roblar,” that

Opposer had registered multiple domain names containing those words, and that

Opposer intended to use the Hotel El Roblar as the name of its new hotel; and that

by the time of trial, Opposer was operating a website bearing the words “the hotel el

roblar” in script and the words “Hotel El Roblar” in typed font, and stating that “[w]e

are opening our doors soon,”49 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 Applicant claims that she intends to offer the same services under the same

mark. See Philanthropist.com, Inc. v. Gen. Conf. Corp. of Seventh-Day Adventists,

Canc. No. 92065178, 2021 WL 2472776, at *4 (TTAB 2021) (plaintiff must prove

48 We have previously held that these principles apply with respect to a false suggestion of a

connection claim under Section 2(a) of the Trademark Act. Mystery Ranch, 2022 WL

17369425, at *9 (finding that the opposer’s “advertised status as a potential competitor to

Applicant” supported its statutory entitlement to bring its Section 2(a) claim); see also Piano

Factory, 11 F.4th at 1376 (“A party asserting a false association bar to registration under

section 2(a) need not have proprietary rights to a name as long as the party has a reasonable

belief that it will be or is being damaged by the false suggestion of a connection between a

person and the challenged mark.”).

49 Opposer’s website has been available to the public since at least 2023 and, as discussed

above, Opposer has already received inquiries regarding the availability of its hotel services

under the mark the Hotel El Roblar.

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Opposition No. 91272200

entitlement to a statutory cause of action for the entirety of the proceeding, from

commencement until the end), aff’d mem., 2022 WL 3147202 (Fed. Cir. Aug. 8, 2022).

We find that Opposer has a real interest in the proceeding, beyond that of an

intermeddler, in preventing Applicant’s registration of THE HOTEL EL ROBLAR,

and that Opposer has satisfied the first element of its showing that it is entitled to

bring both of its claims.

Opposer has also shown “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.50

We find that Opposer has shown a statutory entitlement to assert both of its

claims. We turn now to Opposer’s claim that Applicant lacked a bona fide intention

to use the mark THE HOTEL EL ROBLAR in commerce for hotel services when she

filed the opposed application on June 9, 2020.

50 Applicant’s counsel admitted as much at the oral hearing.

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Opposition No. 91272200

IV. Opposer’s Claim That Applicant Lacked a Bona Fide Intention to Use

the Mark THE HOTEL EL ROBLAR for Hotel Services When She

Filed the Opposed Application

A. Applicable Law

Trademark Act Section 1(b) provides as follows:

A person who has a bona fide intention, under

circumstances showing the good faith of such person, to use

a trademark in commerce may request registration of its

trademark on the principal register hereby established by

paying the prescribed fee and filing in the Patent and

Trademark Office an application and a verified statement,

in such form as may be prescribed by the Director.

15 U.S.C. § 1051(b).

“Because a bona fide intent to use the mark in commerce is a statutory

requirement of a valid intent-to-use trademark application under [Trademark Act]

Section 1(b), the lack of such intent is a basis on which an opposer may challenge an

applicant’s mark.” Tequila Cuadra, 2025 WL 1431504, at *5 (quoting M.Z. Berger,

787 F.3d at 1375).

“A determination of whether an applicant has a bona fide intention to use the

mark in commerce is an objective determination based on all the circumstances.” Id.

(quoting Bos. Red Sox Baseball Club Ltd. P’ship v. Sherman, Opp. No. 91172268,

2008 WL 4149008, at *6 (TTAB 2008) (citing Lane Ltd. v. Jackson Int’l Trading Co.,

Opp. No. 91092025, 1994 WL 740491, at *6 (TTAB 1994)). “The central inquiry in a

lack of bona fide intent to use claim is whether at the time of filing the application

‘the applicant’s intent to use the mark was firm and not merely intent to reserve a

right in a mark.’” Id. (quoting Tiger Lily Ventures Ltd. v. Barclays Cap. Inc., 35 F.4th

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Opposition No. 91272200

1352, 1365 (Fed. Cir. 2022) (quoting M.Z. Berger, 787 F.3d at 1376) (internal

quotation marks omitted)).

“The particular facts of each case must be carefully considered in their totality,

but generally, the strongest documentary proof will have been created prior to, or at

the latest on, the filing date of the intent-to-use application.” Société Des Produits

Nestle S.A. v. Cándido Viñuales Taboada, Opp. No. 91232597, 2020 WL 4530518, at

*16 (TTAB 2020) (citing Swiss Grill Ltd. v. Wolf Steel Ltd., Opp. No. 91206859, 2015

WL 5675642, at *9 (TTAB 2015)). “In contrast, a long gap between the filing of an

application and the activities asserted to demonstrate bona fide intent tends to

undercut an inference that the applicant actually had a bona fide intent to use the

mark.” Id.

“Opposer has the initial burden of demonstrating by a preponderance of the

evidence that [A]pplicant lacked a bona fide intent to use the mark on the identified

[services on the filing date of her application].” Tequila Cuadra, 2025 WL 1431504,

at *6 (quoting Bos. Red Sox Baseball Club, 2008 WL 4149008, at *6). “The absence of

any documentary evidence on the part of [Applicant] regarding such intent

constitutes objective proof sufficient to prove that [she] lack[ed] a bona fide intention

to . . . use [her] mark in commerce.” Id. (quoting Bos. Red Sox Baseball Club, 2008

WL 414908, at *6) (citing Commodore Elecs. Ltd. v. CBM K.K., Opp. No. 91086336,

1993 WL 156479, at *5 (TTAB 1993)). If Opposer establishes a prima facie case, the

burden shifts to Applicant “to rebut that prima facie case by producing evidence

which would establish that [she] had the requisite bona fide intent to use the mark

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Opposition No. 91272200

when [she] filed [her] application.” Id. (citing Saul Zaentz Co. v. Bumb, Opp. No.

91156452, 2010 WL 2783893, at *6 (TTAB 2010); Bos. Red Sox Baseball Club, 2008

WL 4149008, at *6; Commodore Elecs., 1993 WL 156479, at *5 n.11).

The evidentiary bar for showing bona fide intent to use is

not high, but more is required than “a mere subjective

belief.” M.Z. Berger & Co., 787 F.3d at 1375. The objective

evidence must indicate an intention to use the mark that

is “firm” and “demonstrable.” Id. at 1375-76. In other

words, Applicant’s evidence bearing on [her] bona fide

intent must be “objective” in the sense that it consists of

real-life facts and Applicant’s actions, as opposed to

Applicant’s uncorroborated testimony as to [her] subjective

state of mind. See 2 J. Thomas McCarthy, MCCARTHY ON

TRADEMARKS AND UNFAIR COMPETITION § 19:14 (5th ed.

Feb. 2025 update) (“Congress did not intend the issue to be

resolved simply by an officer of the applicant later

testifying, ‘Yes, indeed, at the time we filed that

application, I did truly intend to use the mark at some time

in the future.”’).

Id.

B. Summary of the Parties’ Arguments

Opposer first argues that Applicant does not offer any documentary evidence of

her intent as of the June 9, 2020 filing date of her application, 67 TTABVUE 20, and

that a few weeks before the filing date, Applicant “admitted in writing that she had

‘no use’ for the Mark ‘going forward,’” id. at 21, citing Applicant’s May 12, 2020 email

to Mr. Shamshiri. According to Opposer, that email “is independently dispositive of

Applicant’s intent as of the filing date,” id., because Applicant “unambiguously

admitt[ed] that she lacked intent to use the proposed Mark ‘the hotel el roblar’ in

commerce on May 12, 2020.” Id. at 24.

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Opposition No. 91272200

Opposer next summarizes Applicant’s unsuccessful attempt to purchase the

property at 122 East Ojai Avenue, id. at 22-23, and argues that

[o]nce she lost her bid, there is no evidence at all that Ms.

Roe took any action to use the proposed Mark. She failed

to use the domain names and social media handles she had

registered in August 2018 for a hotel or any other project

— using the Mark or otherwise — and she admits that

those digital properties were her only investment in the

proposed Mark.

Id. (record citations omitted; emphasis in bold here in italics in the original).

Opposer further argues that

In fact, in the more than four years that elapsed between

August 2018 — when she reserved the domain names and

social media handles related to the proposed Mark — and

September 2022 — when she testified at her discovery

deposition in this Proceeding — Ms. Roe posted no content

on any of the Hotel El Roblar websites . . . and none on the

social media accounts . . . . The Hotel El Roblar-related

websites and social media accounts that Ms. Roe occupied

therefore sat empty. They were empty because Ms. Roe had

lost her bid to purchase the Hotel El Roblar, and because

once she lost, she had no intent to use the Mark, or any

related digital content, in connection with any hotel or

other business.

Id. at 23 (record citations omitted; emphasis in bold here in italics in the original).

Opposer also argues that in 2019 and 2020, Applicant “took no action to offer hotel

services under the proposed Mark at any location or in connection with any business

enterprise.” Id.

Opposer argues that after sending her May 12, 2020 email to Mr. Shamshiri,

Applicant

filed the application less than a month later, on June 9,

2020. There is no evidence — much less documentary

evidence — to suggest she developed a bona fide intent to

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Opposition No. 91272200

use the Mark in connection with hotel services between

May 12, 2020 (when she admitted she had no intent) and

June 9, 2020 (when she filed the application). Instead, Ms.

Roe’s May 12, 2020 admission lays bare that she filed her

application without the requisite bona fide intent — but

rather “merely to reserve a right in a mark” that the

Opposer might compensate her to relinquish.

Id. at 24 (citations omitted; emphasis in bold here in italics in the original).

Opposer next argues that “[e]ven if Applicant’s written admission were not

dispositive, the opposition must still be sustained because Applicant has failed to

carry her burden to offer documentary evidence establishing a bona fide intent to use

the mark in commerce.” Id. (citation omitted). Opposer critiques Applicant’s Airbnb

listing with respect to her Los Angeles property; her domain name registrations; her

correspondence with Ms. Jorgensen regarding an SBA loan; her photographs of motel

rooms; and other documentary evidence in the form of Exhibits A-21-A-30 to

Applicant’s trial testimony. Id. at 25-30. Opposer concludes that “[e]xamining

Applicant’s evidence on a document-by-document basis, the record is utterly devoid

of documentary evidence that might establish Applicant’s bona fide intent to use the

Mark on the date of the application.” Id. at 30.

Opposer then attacks Applicant’s and her husband’s trial testimony, id. at 30-36,

and, as noted above, discusses two exhibits to Applicant’s trial testimony that were

excluded from the record prior to trial. Id. at 31-33, 36. Opposer concludes that “the

combined testimony of Applicant and Mr. Roe do not establish — and indeed further

disprove — that Ms. Roe had the requisite bona fide intent on June 9, 2020.” Id. at

36.

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Opposition No. 91272200

Opposer next argues that “Applicant has provided no credible evidence that she is

capable of offering the hotel services at issue in the application. Her position in this

Proceeding appears to be based on the fanciful view that listing rooms on the

homesharing website airbnb.com amounts to ‘hotel services.’” Id. at 37. Opposer

argues that providing rentals through Airbnb does not equate to rendering “hotel

services,” but that even if it does, Applicant has been in violation of the law in

providing those rentals and has never used the mark THE HOTEL EL ROBLAR in

connection with Airbnb. Id. at 37-38.

Finally, Opposer argues that Applicant’s conduct and testimony lack good faith

and are “fraudulent.” Id. at 38. Opposer claims that “Applicant’s conduct before,

during and after this Proceeding, make clear that her credibility is incompatible with

a finding of statutory good faith,” id. at 39, and that “during the trial of this

Proceeding Ms. Roe has given provably false testimony, and offered in evidence

demonstrably manipulated documents, in a manner that cannot be anything but

intentional.” Id. at 40.

Applicant responds that “Opposer’s argument ignores that fact that [it is] Opposer

itself that must first establish evidence of Applicant’s lack of bona fide intent to use

its [sic] mark before Applicant is required to bring forth evidence to the contrary,”

and that “Opposer has failed to demonstrate that Applicant has no documentary

evidence of its [sic] bona fide intent to use, or indeed any evidence relevant to whether

Applicant has a bona fide intent to use the mark THE HOTEL EL ROBLAR on the

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Opposition No. 91272200

[services] in the application, and so has failed in its burden of proof.” 70 TTABVUE

14.

Applicant first addresses her May 12, 2020 email to Mr. Shamshiri. She argues

that

an appropriate review of the email reveals Opposer[’s]

misstatement of the evidence. The email states,

“Congratulations on your acquisition of The Oaks, we

know it will be beautiful and a welcomed addition to our

community. I thought to include the entire Social Media

platform that we had the foresight to secure, covering a

multitude of channels, for your review. While we have no

use for them moving forward, we do believe that our time

and investment is worth more than $2,500. However, in the

act of good faith we’re open to alternate solutions, if it is of

interest to you. Wishing the family well, these are indeed

very strange times.[”] . . . . It is clear from this evidence

that (1) Applicant was engaged in a settlement discussion

with Opposer; (2) Applicant reviewed [sic] the Opposer’s

purchase as The Oaks, not the Hotel El Roblar, and (3)

Applicant’s focus was on social media, not the trademark

or hotel services moving forward. This isolated email is

insufficient to establish a lack of intent, especially given

Applicant’s continued efforts to build her hotel services

following the failed settlement.

Moreover, [in] the context of the email, “them” specifically

refers to social media accounts, not the trademark or hotel

services associated with the mark itself. Applicant’s

reference to “them” clearly concerns social media assets

previously created and maintained. This distinction

invalidates the Opposer’s argument that the email implies

abandonment of the trademark or lack of intent to use the

Mark in connection with hotel services.

Ultimately, this email was clearly intended for settlement

purposes. The email in question was sent as part of a

settlement negotiation with the Opposer. The context of

these discussions is crucial because statements made in

settlement do not necessarily reflect a party’s intentions

regarding trademark use.

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Opposition No. 91272200

Id. at 15 (citations omitted; emphasis supplied by Applicant).

Applicant next argues that

even if the Board determines Opposer has met its burden,

Applicant has present[ed] uncontroverted proof of her

intentions to use Applicant’s Mark, including documents

produced after [the] filing of Applicant’s Application, which

as stated above, the Board can take into consideration.

Applicant has provided evidence that she is providing hotel

services under her AirBNB listings.

...

Evidence of business planning, preparatory steps, or actual

steps to bring the product or service to market strongly

supports a bona fide intent. The absence of clear actions

could suggest a lack of bona fide intent, but here, the

Applicant has taken concrete steps indicating otherwise.

These actions clearly differentiate the Applicant’s intent

from mere intent to reserve a mark, satisfying the TTAB’s

standards for bona fide intent to use.

Id. at 16.

Applicant argues that she conducted a pre-filing search, and purchased various

social media handles, but that “because of COVID, efforts to secure a property, other

than AirBNB listings interrupted Applicant’s plans,” and that “[a]ll these actions

occurred prior to the filing of Applicant’s application for Applicant’s Mark.” Id.

With respect to post-filing activities, Applicant acknowledges that she “has not

offered her hotel services under the actual name, THE HOTEL EL ROBLAR since

filing of the application,” but argues that this is excusable because of the Covid-19

pandemic, the civil suit filed by Opposer and dismissed in 2021, and this opposition.

Id. Applicant also discusses the conflicting testimony regarding the hotel property at

1725 Maricopa Highway in Ojai, and argues that it shows that “Applicant and Mr.

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Opposition No. 91272200

Edelson engaged in good-faith negotiations regarding leasing of the property at 1725

Maricopa Highway.” Id. at 19.51

Applicant concludes that

Opposer has failed to meet its burden to demonstrate, by a

preponderance of the evidence, that Applicant lacked a

bona fide intent to use the mark in commerce. Opposer’s

reliance on isolated and mischaracterized evidence does

not establish the absence of intent, particularly in light of

Applicant’s documented preparations, consistent

narrative, and extensive evidence submitted to the Board.

The record clearly shows that Applicant undertook

concrete, affirmative steps toward using the mark, actions

that far exceed a mere intent to reserve rights. This

genuine commitment to bringing the mark to market

aligns fully with the Boards [sic] standards. Accordingly,

Opposer’s claim lacks merit and should be dismissed with

prejudice, allowing Applicant’s mark to proceed to

registration as intended.

Id. at 19-20.

In its reply brief, Opposer argues generally that “[t]here is no documentary

evidence to support Applicant’s claim of intent,” and that “the burden was on

Applicant to come forward in her Trial Brief with documentary evidence of intent —

or evidence adequately explaining or outweighing that failure. . . . Here, there is none

of either.” 71 TTABVUE 11. Opposer argues that “Applicant cites the trial record only

eight times to support her assertions that she ‘had the requisite bona fide intent to

51 In a footnote, Applicant argues that the fact that Opposer obtained Mr. Edelson’s testimony

is “yet another attempt at Opposer’s harassment and interference with Applicant’s business”

and that “[f]ollowing Opposer’s interrogation of Mr. Edelson, discussions with Applicant have

deteriorated and led to conflicts surrounding the lease.” 70 TTABVUE 19 n.3. Applicant did

not cross-examine Mr. Edelson, and there is no record evidence supporting Applicant’s claim

regarding any subsequent “discussions with Applicant.”

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Opposition No. 91272200

use The Hotel El Roblar mark at the time she filed her application’,” id. at 13 (citing

70 TTABVUE 12-19), and proceeds to discuss those eight citations. Id. at 13-17.

With respect to Applicant’s May 12, 2020 email to Mr. Shamshiri, Opposer argues

that “Applicant’s attempts to escape her written admission that she did not intend to

use the ‘the hotel el roblar’— made in an email just prior to filing her application —

are not credible.” Id. at 17. Opposer first argues that “[t]he email at issue is plainly

not a settlement communication; it bears no settlement or confidentiality notice or

citation to any evidentiary rule; nor does it discuss a resolution of a dispute.” Id.

According to Opposer, the email is instead “an attempt by Applicant to induce one of

Opposer’s principals to pay the Applicant to relinquish various social media handles

and domain names, ‘because [she] ha[d] no use for them going forward,’ having failed

to purchase the Hotel El Roblar property.” Id. Opposer next argues that “once

Applicant lost the auction for the historic Hotel El Roblar property, she had ‘no use’

for Hotel El Roblar (not The Oaks) social media accounts.” Id. at 17-18.

Finally, Opposer argues that

Applicant contends that “Applicant’s focus [in her

admission email] was on social media, not the trademark

or hotel services moving forward.” . . . Applicant thus

argues that she had an intention to provide hotel services

under name “the hotel el roblar” while at the very same

time she had “no use” for The Hotel El Roblar social media

accounts. Or put another way, Applicant sought to unload

the domain names for the very hotel and Mark she claims

(without documentary evidence) she intended to develop.

That assertion is not credible.

Id. at 18 (citations omitted).

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Opposition No. 91272200

C. Analysis

We must measure Applicant’s intent when she filed the opposed application on

June 9, 2020 “by an objective standard,” Tiger Lily Ventures, 35 F.4th at 1364, based

“on objective evidence of intent” and taking into consideration “the totality of the

circumstances.” Id. at 1365 (quotation and quotation marks omitted). Evidence “must

be ‘objective’ in the sense that it consists of real-life facts and Applicant’s actions, as

opposed to Applicant’s uncorroborated testimony as to [her] subjective state of mind.”

Tequila Cuadra, 2025 WL 1431504, at *6.

“Opposer has the initial burden of demonstrating by a preponderance of the

evidence that [A]pplicant lacked a bona fide intent to use the mark on the identified

[services] [on the filing date of her application].” Id. Opposer argues that it has carried

that burden because “Applicant offers no documentary evidence of intent.” 67

TTABVUE 20. We disagree to the extent that Opposer claims that Applicant offered

no documentary evidence of her intent at any time prior to the filing of the opposed

application. As discussed in detail above, there is extensive documentary evidence,

including texts, emails, letters, documents reflecting Applicant’s purchase of domain

names, projections, a draft business plan, and several proposals to purchase the

property at 122 East Ojai Avenue, showing that from mid-2018 until January 21,

2019, Applicant intended to use the mark THE HOTEL EL ROBLAR in connection

with a hotel on that property if she was able to buy it.52

52 Applicant’s testimony in her discovery deposition that she chose the mark THE HOTEL

EL ROBLAR simply because it was a “good idea,” and that she did not recall where she got

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Opposition No. 91272200

As discussed above, however, she was not able to buy it, and she admitted in her

discovery deposition that her intent to offer hotel services at the property at 122 East

Ojai Avenue ended when her purchase bid was rejected. Roe Tr. 145:14-19 (26

TTABVUE 150). Just as the evidence establishes that between mid-2018 and January

21, 2019, Applicant intended to use the mark THE HOTEL EL ROBLAR in

connection with a hotel at 122 East Ojai Avenue, there is no doubt that after January

21, 2019, Applicant no longer had that intent.

The issue here is, of course, not 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. We must determine whether Applicant had a bona fide intention to use

the mark in commerce at the time of filing the application, taking into account the

totality of the circumstances.

Ms. Cluff testified that Applicant never indicated to her that Applicant intended

to use the mark with any other properties. Cluff Decl. ¶ 20 (33 TTABVUE 5); Roe Tr.

138:11-16 (26 TTABVUE 143); Roe Tr. 138:17-139:1 (26 TTABVUE 143-44). Given

her extensive efforts to buy the property at 122 East Ojai Avenue, Applicant was

surely very disappointed to lose her bid,53 but she stated shortly thereafter that she

that “good idea,” Roe Tr. 169:22-170:10 (27 TTABVUE 27-28), is not credible. There is no

doubt that she got the idea to use the mark in the course of attempting to purchase the

property at 122 East Ojai Avenue, a location at which she knew that a hotel had once

operated under that mark.

53 As Applicant’s husband put it in his testimony, “The Oaks [at] Ojai was by far at that point

in our journey of potential hotels the best scenario we had seen. The history of the property

its location and an opportunity to do something in Ojai where we lived and already had a

thriving business was truly a dream.” C. Roe Decl. ¶ 20 (44 TTABVUE 4).

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Opposition No. 91272200

was moving on to other endeavors. She told Butler Consultants on January 19, 2019

that “I’d like to use the money paid towards a different Buisness [sic] plan,

one for our retail store and bar/event space for SBA loan financing,” Roe Tr.

242:21-243:4; Ex. 29 (27 TTABVUE 100-01; 29 TTABVUE 229) (emphasis added),

and a few days later, she told her loan broker that “I have a Retail Business in

Ojai that we will now focus all off [sic] our efforts towards, would you let me

know what areas SBA finances?” Roe Tr. 245:4-247:20; Ex. 31 (27 TTABVUE 103-05;

29 TTABVUE 234) (emphasis added).54

Notwithstanding these statements suggesting that she was done with trying to

run a hotel, both Applicant and her husband testified at trial that Applicant intended

to use the mark THE HOTEL EL ROBLAR in connection with the hotel on the

property at 1725 Maricopa Highway. Roe Decl. ¶¶ 24, 30 (43 TTABVUE 307-08); C.

Roe Decl. ¶¶ 25-27 (44 TTABVUE 4). To divine whether Applicant had a bona fide

intent to use the mark THE HOTEL EL ROBLAR for hotel services in connection

with that property at the time she filed the application, we must consider the totality

of the circumstances, including what she did between January 21, 2019 and June 9,

2020, and what she did thereafter.

Applicant had a very full plate between January 21, 2019 and June 9, 2020. In

addition to raising her son and “travel[ing] a lot for business,” Roe Decl. ¶¶ 8, 51; Ex.

A-1 (43 TTABVUE 305, 310, 4), Applicant and her husband were then operating their

54As discussed above, Butler Consultants never prepared a finished business plan for

Applicant, and she never obtained financing for a hotel from the loan broker or any other

source. Roe Tr. 196:19-24; 243:5-7 (27 TTABVUE 54, 101).

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Opposition No. 91272200

retail business in Ojai and their Airbnb property in Silver Lake in Los Angeles, and

she may also have been working as a realtor. Roe Decl. ¶¶ 3, 6, 10 (43 TTABVUE 304-

05). Applicant’s trial testimony says very little about what she did between the two

dates, and neither Applicant nor her husband specified what, if anything, they did

with respect to using the mark THE HOTEL EL ROBLAR in connection with the

property at 1725 Maricopa Highway, or any other property, between the dates.

Applicant testified at trial that in 2019

we were invited to return to The Firehouse, the location

was a perfect comparison to 1725 Maricopa Hwy, Ojai, as

both properties host 8 rooms. Mr. Landcaster [sic] invited

us to stay, he toured us around The Firehouse and shared

his development process; from signing a lease, generating

investors, structure of investment, design, and operations.

My husband and I, have an existing relationship with Mr.

Landcaster [sic] in business, having assisted him with the

design of his first bar/restaurant Bar Covelle, in 2012.

Exhibit A-10 to my Declaration is a true and accurate copy

of my stay at The Firehouse on October 14, 2019.55

Roe Decl. ¶ 19; Ex. A-10 (43 TTABVUE 306, 38-40).

She also testified that at some unspecified time, the

2464 Ojai Ave retirement home became available on the

market for purchase. My husband and I toured this

additional property as potential hotel conversion, in

addition to 1725 Maricopa Hwy, Ojai. We invited to [sic]

new potential investors Anna Getty and Scott Oster to tour

this location. Ultimately, this property did not prove

suitable for the use.56

55 In his trial testimony, Applicant’s husband never mentioned Mr. Lancaster or any visit to

The Firehouse.

56 Applicant’s husband also did not testify about any tour of the retirement home.

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Opposition No. 91272200

Roe Decl. ¶¶ 20-21; Ex. A-12 (43 TTABVUE 306-07, 43-123); Roe Cross Tr. 32:11-

35:25; Exs. 7-8 (64 TTABVUE 35-38, 143-222). The referenced Exhibit A-12, a letter

from the County of Ventura to the owner of the retirement home, was dated February

21, 2020. Roe Dec. Ex. A-12 (43 TTABVUE 44).

This testimony does not establish that Applicant took any steps between January

21, 2019 and June 9, 2020 directed toward operating a hotel at the property at 1725

Maricopa Highway, or that she was even thinking about that location at all. Applicant

testified in her September 26, 2022 discovery deposition that her written

communications with Steve Edelson, the owner of the property at 1725 Maricopa

Highway, were only via text and were “very recent,” Roe Tr. 31:21-33:5 (26 TTABVUE

36-38), but although the record is chock full of texts between Applicant and Mr. Goode

regarding the property at 122 East Ojai Avenue, Applicant pointed to no texts with

Mr. Edelson regarding the property at 1725 Maricopa Highway. Mr. Edelson testified

credibly and without contradiction that there was no relationship of any kind with

Applicant, Edelson Decl. ¶¶ 3-4, 6-8 (63 TTABVUE 2-3), and that he had not seen her

since sometime prior to September 10, 2019. Edelson Decl. ¶ 10 (63 TTABVUE 3).

The record also shows that Applicant purchased the domain name

hotelelroblar.com on December 3, 2019 and obtained a title report regarding the

property at 122 East Ojai Avenue sometime in December 2019, but it does not contain

evidence of any other relevant activities by Applicant prior to her email exchanges

with Mr. Shamshiri in May 2020, to which we now turn.

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As discussed above, the parties have very different takes on those emails,

particularly Applicant’s May 12, 2020 email to Mr. Shamshiri in which Applicant

listed all of her domain names and social media handles and stated that “we have no

use for them moving forward. . . .” Roe Tr. 91:1-92:6; Ex. 8 (26 TTABVUE 96-97; 28

TTABVUE 39-40). Applying Occam’s Razor, the philosophical maxim that “advises

[that] the simpler path is usually the best,” Acorda Therapeutics, Inc. v. Mylan

Pharms. Inc., 817 F.3d 755, 765 (Fed. Cir. 2016) (O’Malley, J., concurring), we find

that 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.

Neither party discusses the background to Applicant’s May 12, 2020 email, but we

find that it is significant. As discussed above, Mr. Shamshiri’s previous email to

Applicant offered to buy a single domain name, thehotelelroblar.com, but Applicant

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,”

Roe Tr. Ex. 8 (28 TTABVUE 39-40), which Mr. Shamshiri had not requested.

Applicant’s explanations in her brief of her statement that “we have no use for

them moving forward” are convoluted or contrived (or both). Applicant argues that

her May 12, 2020 email “was sent as part of a settlement negotiation with the

Opposer,” 70 TTABVUE 15, but there is no reference to any dispute in the body of the

email, in which Applicant congratulates her friend Mr. Shamshiri on his purchase of

The Oaks and wishes his family well during the “very strange times” of the Covid-19

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pandemic, Roe Tr. Ex. 8 (28 TTABVUE 39-40), or in Applicant’s testimony about the

email in her discovery deposition, Roe Tr. 91:1-99:3; Exs. 8-9 (26 TTABVUE 96-103;

28 TTABVUE 39-41), and at trial. Roe Decl. ¶ 64 (43 TTABVUE 311-12).

Evidence pertaining to settlement negotiations is generally inadmissible under

Rule 408 of the Federal Rules of Evidence, see, e.g., Lebanon Seaboard Corp. v. R&R

Turf Supply Inc., Opp. No. 91197241, 2012 WL 953406, at *3 (TTAB 2012), but

Applicant made no effort to exclude the email chain from the record on that basis. As

discussed above, Applicant’s May 12, 2020 email ultimately precipitated a dispute

between the parties, but it did not try to resolve one.

Equally unpersuasive are Applicant’s attempts to rewrite her May 12, 2020 email

through her after-the-fact testimony about what her words actually meant. Applicant

testified in her discovery deposition that her statement that “we have no use for them

moving forward” was “in relationship to The Oaks,” Roe Tr. 96:2-7 (26 TTABVUE

101), and she repeated this claim at trial. Roe Decl. ¶ 64 (43 TTABVUE 311-12). She

also claimed at trial that her reference in the email to “alternate solutions” “refers to

Joint Ventures. Including but not limited to; my retaining ownership of the mark and

media package, proposing a joint venture which would combine two locations: [sic]

212 [sic] Ojai Ave and 1725 Maricopa Hwy, as an East and West location.” Roe Decl.

¶ 66 (43 TTABVUE 312). In her brief, she argues that her “focus was on social media,

not the trademark or hotel services moving forward.” 70 TTABVUE 15.

Applicant’s testimony that her statement was “in relationship to The Oaks” is not

credible. Applicant testified in her discovery deposition that it was her intent to use

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the domain names “if we acquired the hotel” at 122 East Ojai Avenue, Roe Tr. 119:1-

11 (26 TTABVUE 124), but she did not acquire it. It is simply impossible to reconcile

Applicant’s unsolicited offer to sell all of the listed domain names and social media

handles to Opposer with her belated claim that she nevertheless had “use for them

moving forward” for a hotel at a location other than 122 East Ojai Avenue.

Applicant’s testimony that the “alternate solutions” mentioned in her May 12,

2020 email involved possible joint ventures, including one involving the property at

1725 Maricopa Highway, is belied by the fact that Mr. Shamshiri specifically asked

Applicant in his May 15, 2020 email to “[l]et me know what kind of alternate solutions

you would consider,” Roe Tr. Ex. 8 (28 TTABVUE 39-40), but Applicant did not do so

in her May 18, 2020 response. Roe Tr. 97:1-98:16; Ex. 9 (26 TTABVUE 102-03; 28

TTABVUE 41). In the absence of such a response, the simplest explanation for what

Applicant meant by her statement that she was “open to alternate solutions” is that

the phrase “alternate solutions” was a euphemism for what Mr. Shamshiri described

as “how much are you going to charge us in layman’s terms.” Shamshiri Tr. 45:24-

46:6 (48 TTABVUE 48-49). The subsequent emails between Applicant and Mr.

Shamshiri confirm this, as they discuss the value of her portfolio of domain names

and social media handles, not any possible business relationship between the parties.

Applicant’s argument that her “focus was on social media, not the trademark or

hotel services moving forward,” 70 TTABVUE 15, is contrived. As discussed above,

Applicant stated that she first formed the intent to use the mark THE HOTEL EL

ROBLAR on August 16, 2018, the day on which she purchased the domain names.

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Roe Tr. 185:16-186:3 (27 TTABVUE 43-44). She described the domain names and

social media handles collectively as “different marketing terms regarding that

particular name,” Roe Tr. 68:22-23 (26 TTABVUE 73), and her suggestion in her brief

that she would sell to Opposer all of those “different marketing terms regarding that

particular name,” but that she nevertheless intended to use “that particular name,”

is not credible. We also find it telling that Applicant failed to respond to Mr.

Shamshiri’s question about whether Applicant had “any intention to use the domains

for something else if we do not acquire the rights?” Roe Tr. 94:17-25; Ex. 8 (26

TTABVUE 99; 28 TTABVUE 39-40).

Finally, Applicant’s brief dismisses her May 12, 2020 email as “a minor state of

thought from Applicant after receiving disheartening information that Mr. Goode was

not actually planning to partner with Applicant and that the Cluff family elected to

sell the Location to Opposer.” 70 TTABVUE 8. This characterization is also contrived

because Applicant received the “disheartening information” more than a year before

she sent her email offering to sell all her domain names and social media handles to

Opposer.

The simplest explanation of Applicant’s offer to sell all of her domain names and

social media handles to Opposer on May 12, 2020 because she had “no use for them

moving forward” is that she no longer intended to use any EL ROBLAR-formative

mark in connection with any hotel, but instead hoped to recoup her investment in the

now-useless domain names and social media handles by selling them to Opposer,

whom she knew had acquired the property at 122 East Ojai Avenue and surely would

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have use for at least some of them in connection with the El Roblar Hotel that

Opposer was developing at that location.

The circumstances immediately prior to the filing of the opposed application

confirm Applicant’s lack of a bona fide intent to use the mark. We have considerable

skepticism about Applicant’s story that she got the idea to seek registration of her

claimed marks based on a conversation with her father-in-law on Mother’s Day, but

even if the events actually happened, Applicant testified at trial that she “began the

Trademark application process” on May 10, 2020, Roe Decl. ¶ 16; Ex. A-8 (43

TTABVUE 306, 36-37), but she did not promptly file an application. Instead, only two

days later, she offered to sell Opposer all of her domain names and social media

handles, which contained both of the marks that she applied to register about a month

later.

In the interim between Applicant’s May 12, 2020 offer and the filing of the opposed

application on June 9, 2020, Opposer asserted cybersquatting and infringement

claims against Applicant, and Applicant engaged counsel to defend those claims.

Applicant filed the opposed application and her companion application Serial No.

88956261 one day before her counsel responded to Opposer’s demand letter and

stated that Applicant had an intent to use the mark, but that “[i]f your client is

interested in purchasing those web domains and social media handles from Ms. Roe,

then she is happy to consider any reasonable offer, which she can weigh against her

intent to use them herself.” Roe Tr. Ex. 12 (28 TTABVUE 46).

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Opposition No. 91272200

Again wielding Occam’s Razor, we find that the simplest explanation for the

timing and sequence of these events is that after retaining counsel to defend against

Opposer’s claims, Applicant filed her two applications to register the marks THE

HOTEL EL ROBLAR and THE EL ROBLAR HOTEL “merely to reserve a right in

the mark[s], and not [with] a bona fide intent to use the mark[s] in commerce,” M.Z.

Berger, 787 F.3d at 1378, in order to buttress her counsel’s argument in his letter to

Opposer’s counsel the next day that she intended to use the marks and to obtain

leverage in any ensuing negotiations to resolve Opposer’s claims or to sell the domain

names and social media handles to Opposer.

“We find that Opposer has met its initial burden of a prima facie showing that, as

of the filing date of Applicant’s application, Applicant did not have a bona fide intent

to use the . . . mark [THE HOTEL EL ROBLAR] in commerce . . . .” Tequila Cuadra,

2025 WL 1431504, at *7. “Because Opposer has made a prima facie showing that

Applicant lacked a bona fide intent to use [her] mark in United States commerce, the

burden shifts to Applicant to produce evidence that establishes that [she] had the

requisite bona fide intent to use the mark when [she] filed [her] application.” Id. at

*8.

We have found above that prior to the filing of the opposed application, Applicant

took no steps directed toward using the mark THE HOTEL EL ROBLAR in

connection with the property at 1725 Maricopa Highway, but she may also rely on

some post-filing activities and documents to support her claim that she had a bona

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Opposition No. 91272200

fide intent at the time of filing to use the mark at that or another property. Société

Des Produits Nestle, 2020 WL 4530518, at *16; Swiss Grill, 2015 WL 5675642, at *9.

Applicant has nothing of significance to offer in that regard. Applicant admits in

her brief that she “has not offered her hotel services under the actual name, THE

HOTEL EL ROBLAR since filing of the application,” 70 TTABVUE 16, and she also

has not advertised or promoted any future hotel services under the mark. Unlike

Opposer, who created a website and advised the public that Opposer’s Hotel El Roblar

was “opening our doors soon,” McBride Decl. ¶ 19; Ex. 2 (31 TTABVUE 4, 12-17),

Applicant admitted in her discovery deposition in September 2022 that there was no

content on her Instagram, Facebook (now Meta), and Twitter (now X) accounts, Roe

Tr. 94:3-5 (26 TTABVUE 99), and she did not recall whether she had ever published

any content using her domain names. Roe Tr. 94:6-16 (26 TTABVUE 99). Applicant

did not testify at trial about any display of the mark at any time on websites or social

media accounts, or in her Airbnb listing.

As noted above, Applicant testified on cross-examination that she believed that

she was providing hotel services when she rented out her property through Airbnb,

Roe Cross Tr. 50:7-22; 70:8-14 (64 TTABVUE 53, 73), but she admitted in her

discovery deposition that she has never offered hotel services under the mark THE

HOTEL EL ROBLAR through Airbnb. Roe Tr. 126:8-17 (26 TTABVUE 131). She

claimed at trial in September 2023 that “Covid 19 has interrupted and delayed every

aspect of project development; access to properties for inspections, changing rules and

guidelines, limited availability of trades people and staff” and that the “pandemic

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Opposition No. 91272200

continues to offer significant challenges for supply chains globally.” Roe Decl. ¶¶ 31-

32 (43 TTABVUE 308). Customer reviews in her Airbnb listing show, however, that

she rented out her property in Los Angeles during the pandemic in at least April

2020, July, September, and October 2021, and January and March 2022, Roe Decl.

Ex. A-1 (43 TTABVUE 5-6), but Applicant never used or displayed the mark THE

HOTEL EL ROBLAR in connection with advertising or rendering those alleged hotel

services.

Applicant testified at trial that “we have begun the design phase of room upgrades

and have plans for changes” for the property at 1725 Maricopa Highway, Roe Decl.

¶ 33 (43 TTABVUE 308), and she authenticated what she described as “true and

accurate copies of pictures of the hotel rooms.” Roe Decl. ¶ 35; Ex. A-20 (43 TTABVUE

308, 158-212). As discussed above, Applicant and her husband both testified at trial

that as of September 2023, Applicant had a lease agreement with respect to the

property, Roe Decl. ¶ 25 (43 TTABVUE 307); C. Roe Decl. ¶ 25 (44 TTABVUE 4), but

we credit the uncontroverted contrary testimony of Applicant’s putative “landlord,”

Mr. Edelson, that there was and is no such lease or any other commercial relationship

with Applicant. Edelson Decl. ¶¶ 3-4, 6-8 (63 TTABVUE 2-3).57 Under the

57 Even if there had been a lease in September 2023, however, its existence would have been

far too attenuated in time from the filing of the opposed application on June 9, 2020 to be

probative of Applicant’s intent on that date. See Bos. Red Sox Baseball Club, 2008 WL

4149008, at *6 (“Applicant’s Internet searches and investigations were not conducted until

over two years after the filing of his application and, moreover, after the notice of opposition

was amended to assert a claim that applicant lacked a bona fide intent to use the mark. Thus,

they were not even remotely contemporaneous with the filing of the application.”).

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circumstances, any post-filing activity by Applicant regarding redesign of or changes

to the rooms at 1725 Maricopa Highway is irrelevant.

We find that Applicant did not rebut Opposer’s prima facie showing that Applicant

did not have a bona fide intent to use the mark THE HOTEL EL ROBLAR in

commerce for hotel services when she filed the opposed application on June 9, 2020.

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. 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.

Decision: The opposition is sustained based on Opposer’s claim for relief that

Applicant did not have a bona fide intention to use the mark in commerce when she

filed the opposed application.58

58 “Because we have found for Opposer on its claim of lack of bona fide intent to use, we need

not reach the merits” of Opposer’s Section 2(a) claim. Tequila Cuadra, 2025 WL 1431504, at

*11.

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