In a precedential opinion issued in September 2025, the TTAB sustained the opposition of the mark, HOTEL EL ROBLAR, for hotel services in class 43, agreeing with the opposer that the applicant lacked bona fide intent to use the mark in commerce when the application was filed. But in fact, by the time the TTAB heard the dispute, neither party had used the mark in commerce. In his opinion, Judge Larkin likened the hotel to the famous “Hotel California,” existing “in the parties’ imaginations at all relevant times”.[1]
The opposition instead revolved around the sale of what is finally a fully operational hotel,[2] but what had been the shuttered Oaks at Ojai resort and spa. Both Applicant, Biance Roe, and Opposer, El Roblar Investment Property LLC, were interested in restoring the property to its original 1920s identity, the Hotel El Roblar. Applicant went so far as to purchase domains and create social media handles (“Internet Assets”) in the name in preparation for her bid to buy the property, though she ultimately lost the bid to Opposer.
But when Opposer sought to purchase the Internet Assets from Applicant, they could not agree on a price. Opposer then resorted to legal action, sending a demand letter to Applicant accusing her of cybersquatting and trademark infringement. Days after receiving the demand letter, Applicant filed the trademark application in contention here.
The incipient status of the hotel during the proceedings led to the two main issues in the case: (1) whether Opposer had standing to challenge the application as the owner of only a plot of land intended to be a hotel, and (2) whether Applicant had bona fide intent to use the mark in commerce when she filed the application despite a lack of hotel ownership.
As to the first issue, the TTAB analyzed Opposer’s position based on the rule in 15 U.S.C. §1063 (‘[a]ny person who believes that he would be damaged by the registration of a mark . . . may . . . file an opposition’ with the USPTO . . ..”.) and the two-part framework in Curtin v. United Trademark Holdings, Inc., 137 F.4th 1359, 1367 (Fed. Cir. 2025) which requires 1) a real interest in the proceeding, and 2) reasonable belief in damages. Even though Opposer lacked an official proprietary interest in the proceeding, the TTAB found that Opposer’s economic activities and preparation to use HOTEL EL ROBLAR in commerce created an interest as “an actual or prospective competitor of Applicant” and not a “mere intermeddler” in Applicant’s business.[3] Because Applicant’s ownership of the same mark for a hotel in the same city could limit Opposer’s ability to use the mark, Opposer showed potential damages sufficient to create standing.
The second issue, bona fide intent, is an objective, fact-based inquiry into whether, at the time of filing, the applicant has firm intent to use the mark, rather than just reserving a right in the mark. Both parties offered their interpretations of the events leading up to and after Applicant’s filing. Although Applicant could show that, before she made her bid, she earnestly was preparing to operate a hotel with the name HOTEL EL ROBLAR, she could not do the same after her bid was rejected. Opposer produced an email from Applicant dated after the bid was awarded but before Applicant filed the application in which she stated that she has “no use for [the domains containing the mark] moving forward.”[4] Taking the statement on its face, the TTAB found in favor of Opposer stating that while Applicant did indeed have intent to use the mark at one point, she did not have that intent when it mattered: “at the time of filing the application.”[5]
Intent to use applications are key for businesses adopting new brands, but you must ensure that you have documents dated before the application’s filing date to show your intent to use the mark with the goods or services identified in the application. You must also not declare to others that you no longer intend to use the mark, unless you truly do want to forfeit the ability to seek registration for the mark based on your intent to use the mark. Best to stay on top of your IP portfolio and consult a trusted professional with trademark filings.
Co-Author: Cassidy McCleary (CA Bar Admission Pending)
[1] El Roblar Inv. Prop. LLC v. Roe, 2025 TTAB LEXIS 397; 2025 U.S.P.Q.2D (BNA) 1210, at *1.
[2] https://theroblar.com. It is interesting to note that they still have not obtained the hotelelroblar.com domain that instigated this dispute
[3] El Roblar, 2025 TTAB LEXIS 397; 2025 U.S.P.Q.2D (BNA) 1210, at *63–64 (citing Univ. of Ky. v. 40-0, LLC, Opp. No. 91224310, 2021 TTAB LEXIS 68, 2021 WL 839189, at *6 (TTAB 2021)).
[4] El Roblar, 2025 TTAB LEXIS 397; 2025 U.S.P.Q.2D (BNA) 1210, at *77.
[5] Id. at *86
Subscribe for News and Updates
