Hole In 1 Drinks, Inc.v.Michael Lajtay

Trademark Trial and Appeal Board

Feb 19, 2020

92065860 (T.T.A.B. Feb. 19, 2020)

Mailed: February 19, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Hole In 1 Drinks, Inc.
v.
Michael Lajtay
_____

Cancellation No. 92065860
_____

John D. Tran of Rhema Law Group, P.C. for Hole In 1 Drinks, Inc.

Michael Lajtay, pro se.
_____

Before Bergsman, Kuczma and Pologeorgis, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Hole In 1 Drinks, Inc. (Petitioner) filed a Petition to Cancel the registration for
the mark HOLE IN ONE (in standard characters) for “sports drinks, namely,
performance and recovery drinks; sports drinks,” in Class 32, owned by Michael
Lajtay (Respondent).1

1 Registration No. 4942535, registered April 19, 2016 on the Principal Register. The
registration is based on application Serial No. 86513234, filed on January 24, 2015, initially
under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Respondent’s claim
of a bona fide intent to use the mark in commerce. Respondent filed a Statement of Use on
January 23, 2016, claiming March 18, 2015 as both the date of first use and the date of first
use in commerce.
This Opinion Is a
Precedent of the TTAB
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Petitioner alleges the following grounds for cancellation: (1) likelihood of confusion
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d); (2) the underlying
application that formed the basis of Respondent’s registration is void ab initio because
Respondent did not own the mark when he filed the underlying application for
registration; (3) abandonment; (4) nonuse of the mark as of the filing date of the
statement of use of the subject registration’s underlying application; and (5) fraud. In
support of its claims, Petitioner alleges that it owns two pending applications for the
mark HOLE IN ONE, both purportedly for “sports drinks and dietary supplement
drink mixes” and that the USPTO has refused to register its pending applications
under Section 2(d) because of Respondent’s registration.
Respondent, in his Answer, denied the salient allegations in the Petition for
Cancellation.
I. Preliminary Issues
A. Respondent assumes the risk of representing himself.

A party may represent itself in a cancellation proceeding. 37 C.F.R. § 11.14(e) (“an
individual may appear in a trademark or other non-patent matter in his own or her
own behalf.”). “However, because the governing practices and procedures in
proceedings before the Board are quite technical and highly specialized, it is strongly
recommended that an attorney knowledgeable about trademark law represent a
party.” TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
§ 114.01 (2019). In this regard, after Respondent’s counsel withdrew, the Board
advised Respondent to secure the services of an attorney who is familiar with Board
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proceedings.2 Nevertheless, Respondent elected to represent himself.3 Strict
compliance with the Trademark Rules of Practice, and where applicable the Federal
Rules of Civil Procedure and the Federal Rules of Evidence, is required of all parties,
whether or not they are represented by counsel. McDermott v. S.F. Women’s
Motorcycle Contingent, 81 USPQ2d 1212, n.2 (TTAB 2006), aff’d unpub’d, 240 Fed.
Appx. 865 (Fed. Cir. 2007). Accordingly, Respondent, a layperson unfamiliar with the
Trademark Rules of Practice, has assumed the responsibility and risk of representing
himself.
B. Petitioner’s motion to strike Respondent’s trial brief and attached
exhibits.

Respondent filed a single-spaced brief with numerous exhibits attached.4
Petitioner filed a motion to strike Respondent’s brief and the accompanying exhibits
on the grounds that Respondent’s brief fails to comply with the formatting
requirements set forth in Trademark Rules 2.128 and 2.126, 37 C.F.R. §§ 2.126 and
2.128, and because Respondent improperly attached evidence to the brief.5 In
response, Respondent filed, in essence, an ad hominem attack on Petitioner and
Petitioner’s counsel.6

2 7 TTABVUE 2. Petitioner’s counsel also recommended that Respondent obtain the services
of counsel. Respondent’s Discovery Dep., p. 120 (22 TTABVUE 272).
3 8 TTABVUE.
4 35 TTABVUE.
5 38 TTABVUE.
6 39 TTABVUE.
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Trademark Rule 2.121(a), 37 C.F.R. § 2.121(a), provides, in pertinent part, the
following:
The Trademark Trial and Appeal Board will issue a trial
order setting a deadline for each party’s required pretrial
disclosures and assigning to each party its time for taking
testimony and presenting evidence (“testimony period”).
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. (Emphasis
added).
In other words, a party may introduce testimony and evidence only during its
assigned testimony period. See Baseball Am. Inc. v. Powerplay Sports, 71 USPQ2d
1844, 1846 n.8 (TTAB 2004) (documentary evidence submitted outside assigned
testimony period given no consideration); M-Tek Inc. v. CVP Sys. Inc., 17 USPQ2d
1070, 1072 (TTAB 1990) (untimely deposition stricken); Fischer GmbH. v. Molnar &
Co., 203 USPQ 861, 867 (TTAB 1979) (discovery deposition of non-party inadmissible
as evidence under a notice of reliance filed by one party without express or implied
consent of adverse party; should have taken deposition during trial period or at least
moved to take trial testimony prior to assigned testimony period).
“A brief may not be used as a vehicle for the introduction of evidence.” TBMP
§ 801.01. The Board will not consider evidence and other evidentiary materials
attached to the briefs unless they were properly made of record during the time
assigned for taking testimony. See, e.g., Syngenta Crop Protection, Inc. v. Bio-Chek,
LLC, 90 USPQ2d 1112, 1116 (TTAB 2009); Bass Pro Trademarks LLC v. Sportsman
Warehouse, Inc., 89 USPQ2d 1844, 1848 (TTAB 2008); Life Zone Inc. v. Middleman
Group Inc., 87 USPQ2d 1953, 1955 (TTAB 2008).
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We grant Petitioner’s motion to the extent that we will not consider the evidence
attached to Respondent’s brief. However, because the brief is only seven pages in
length and clearly not an attempt to circumvent the Board’s page limits, we deny
Petitioner’s motion to the extent that the Board, in its discretion, will consider
Respondent’s arguments in his brief, for whatever persuasive value they may have
despite his failure to properly format the brief.
II. The Record.
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Respondent’s registration file that is the subject of the Petition
for Cancellation. The parties introduced the testimony and evidence listed below:
A. Petitioner’s testimony and evidence.

1. Notice of reliance on Petitioner’s Trademark Assignment Agreement
and Recordation of Assignment for the mark HOLE IN ONE in standard
characters, application Serial No. 87077919 (printed directly from the
USPTO Trademark Assignment database);7

2. Notice of reliance on Petitioner’s Trademark Assignment Agreement
and Recordation of Assignment for the HOLE IN ONE and design mark,
application Serial No. 87109399 (printed directly from the USPTO
Trademark Assignment database);8

3. Notice of reliance on Respondent’s responses to Petitioner’s first set of
interrogatories;9

4. Notice of reliance on Respondent’s responses to Petitioner’s first set of
requests for production of documents;10

7 22 TTABVUE 7-8.
8 22 TTABVUE 10-11.
9 22 TTABVUE 13-26.
10 22 TTABVUE 34-48. Generally, the requesting party may not introduce the documents
produced through a notice of reliance unless the responding party has authenticated them by
an admission or stipulation. Trademark Rule 2.120(k)(3)(ii), 37 C.F.R. § 2.120(3)(ii); TBMP
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5. Notice of reliance on a copy of the file history for Petitioner’s application
Serial No. 87077919 for the mark HOLE IN ONE in standard characters
from the USPTO TSDR database;11

6. Notice of reliance on a copy of the file history for Petitioner’s application
Serial No. 87109399 for the mark HOLE IN ONE and design from the
USPTO TSDR database;12

7. Notice of reliance on the discovery deposition of Respondent;13

8. Testimony declaration of Darryl Cazares, Petitioner’s President;14 and

9. The rebuttal testimony declaration of Ignacio Cortes, a restaurant
owner.15

B. Respondent’s testimony and evidence.

1. Testimony declaration of Mark Mitchell, a housing contractor and
acquaintance of both Darryl Cazares and Respondent;16

2. Respondent’s first testimony declaration;17

§ 704.11. In this case, Respondent authenticated his document production by referring to the
document production in his responses to Petitioner’s interrogatories. See e.g., Respondent’s
response to interrogatory Nos. 4, 7, 14, and 22. 22 TTABVUE 17, 18, 20, 24-25. However,
because Petitioner failed to introduce into evidence the documents Respondent produced, we
do not have any documents to review.
11 22 TTABVUE 50-107.
12 22 TTABVUE 109-149.
13 22 TTABVUE 153-396.
14 23 TTABVUE.
15 33 TTABVUE.
16 26 TTABVUE.
17 27 TTABVUE 3-6. This document is captioned “Respondent’s Pre-Trial Disclosures” but it
is more in the nature of a testimony declaration. See Of Counsel Inc. v. Strictly of Counsel
Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (objection to timeliness of testimony
deposition taken two days before period opened, but raised for the first time in brief, waived).
We note that the document is not signed under oath. However, because Respondent is
representing himself, he is bound by the provisions of Rule 11 of the Federal Rules of Civil
Procedure, we will equate it to a declaration and consider Respondent’s statement for
whatever probative value it may have.
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3. Testimony declaration of Daniel Barrett, the owner of Market Print
Plus, a printing company;18

4. Testimony declaration of Anthony Walker, an acquaintance of
Respondent;19

5. Respondent’s second testimony declaration;20 and

6. Respondent’s third testimony declaration.21

III. Standing
Standing is a threshold issue in every inter partes case. See Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);
John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). To
establish standing in an opposition or cancellation proceeding, a plaintiff must prove
that it has a “real interest” in the proceeding and a “reasonable” basis for its belief of
damage. See Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).
Respondent’s Registration No. 4942535 for the mark HOLE IN ONE, in standard
characters, has been cited as bar to the registration of Petitioner’s application Serial
No. 87077919 for the mark HOLE IN ONE, in standard characters, and application
Serial No. 87109399 for the mark HOLE IN ONE and design.22 Petitioner’s evidence

18 27 TTABVUE 7.
19 27 TTABVUE 9.
20 31 TTABVUE.
21 32 TTABVUE.
22 22 TTABVUE 50-51, 65, 110.
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of its pending trademark applications, and evidence that these applications have been
refused registration by the USPTO based on Respondent’s registration demonstrate
that Petitioner has a real interest in the proceeding and a reasonable belief that it
would be damaged by the continued registration of Respondent’s mark, thus
establishing its standing.23 Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus. v. Ralston Purina, 213 USPQ at
189; Kallmni v. Khan, 101 USPQ2d 1864, 1865 (TTAB 2012); Life Zone Inc.,
87 USPQ2d at 1959 (standing found based on opposer’s ownership of pending
trademark application and Office action which raised defendant’s application as a
potential bar to registration).
Once a plaintiff has shown standing on one ground, it has the right to assert any
other ground in a cancellation proceeding. See Poly-America, L.P. v. Ill. Tool Works
Inc., 124 USPQ2d 1508, 1512 (TTAB 2017) (if petitioner can show standing on the
ground of functionality, it can assert any other grounds, including abandonment);
Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1479 (TTAB 2017) (standing
established based on surname claim sufficient to establish standing for any other
ground); Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1481
(TTAB 2017) (opposer established its standing as to genericness ground of
certification mark and was entitled to assert any other ground).

23 The evidence of record further demonstrates that the prosecution of Petitioner’s pending
applications has been suspended pending the final disposition of this cancellation proceeding.
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IV. Background
Respondent testified that he started the HOLE-IN-ONE project in January
2015.24 Shortly, thereafter, on January 24, 2015, Respondent filed, in his own name,
application Serial No. 86513234 for the mark HOLE IN ONE, in standard character
form, for “sports drinks, namely, performance and recovery drinks; sports drinks”
under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Respondent’s
claim of a bona fide intent to use the mark in commerce.
According to Darryl Cazares, Petitioner’s President, “In or about January 2015,
[Respondent] and I, entered into a business relationship, as business partners, for
the purpose of creating, developing, marketing, and selling a sports drink beverage
targeted to the golf industry called ‘HOLE IN ONE.’”25 In an email dated January 31,
2015, Respondent wrote to Tom Stamatis, a consultant writing a business plan for
“Hole-In-One Beverages LLC,” that “Darryl is my business partner in this endeavor
and he is funding the initial stages of Hole In One.”26 Respondent and Tom Stamatis
together wrote a business plan stating the following:27
Hole in One Drinks, Inc. – manufacturer of Hole in One
Performance Drink Beverages
Based in Huntington Beach “Surf City”, California, Hole in
One, Inc. is a California Corporation and is the exclusive
manufacturer and marketer of Hole in One
Performance Drink branded beverages. The company
was founded by product formulator Michael Lajtay

24 Respondent’s Discovery Dep., p. 52 (22 TTABVUE 204).
25 Cazares Testimony Decl. ¶9 (23 TTABVUE 5).
26 Id. at ¶9 and Exhibit E (23 TTABVUE 5 and 93).
27 Respondent’s Discovery Dep., pp. 157, 159 and Exhibit 3 (22 TTABVUE 309, 311, 329-338).
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(pronounced “Lay-Tay”) and Newport Beach business man
[sic], entrepreneur/investor, Darryl Cazares.28
Respondent and Stamatis’s business plan also stated the following about the HOLE
IN ONE trademark application (emphasis in the original):
On January 24, 2015, a U.S. federal trademark
registration [sic] was filed for HOLE IN ONE by
Darryl L. Cazares and Michael Lajtay of Huntington
Beach, CA 92648. The USPTO has given the HOLE IN
ONE trademark serial number 86513234.29
On March 6, 2015, Cazares filed “articles of organization” with the California
Secretary of State to establish Hole-In-One Drinks, LLC. According to the articles of
organization, Cazares and Respondent are co-managers.30 Respondent confirmed
that Hole-In-One Drinks, LLC was formed in March 2015.31 In fact, in the Statement
of Information that Respondent filed with the California Secretary of State for Hole-
In-One Drinks, LLC, Respondent listed Darryl Cazares as a co-manager.32
Eventually, Respondent conceded that Darryl Cazares was “a co-founder, a business
partner, in the Hole-In-One endeavor.”33 Respondent does not recall ever terminating

28 Id. at Exhibit 3 (22 TTABVUE 330).
29 Id. at Exhibit 3 (22 TTABVUE 331).
30 Cazares Testimony Decl. ¶11 and Exhibit F (23 TTABVUE 5 and 95). Cazares Exhibit F
contradicts Respondent’s testimony that Respondent “created Hole-In-One Drinks, LLC.”
Respondent’s Discovery Dep., p. 10 (22 TTABVUE 162).
31 Respondent’s Discovery Dep., p. 17 (22 TTABVUE 169).
32 Respondent’s Discovery Dep., p. 18 and Exhibit 1 (22 TTABVUE 170 and 325); see also id.
at pp. 87-88 (22 TTABVUE 239-240) (acknowledging that Respondent and Cazares held
themselves out as business partners regarding HOLE IN ONE).
33 Respondent’s Discovery Dep., p. 23 (22 TTABVUE 175) (Q. Was Darryl Cazares a co-
founder, a business partner in the Hole-In-One endeavor in the beginning? It’s yes or no. A.
In a minority capacity, potentially yes.); see also id. at pp. 38-39 and 40 (22 TTABVUE 190-
191 and 192).
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the membership of Cazares in Hole-In-One Drinks, LLC.34 In addition, Respondent
testified that Gene Slusieuwicz is a shareholder in Hole-In-One Drinks, LLC.35
After filing the trademark application for HOLE IN ONE, Respondent worked
with Matt Rae, a graphic designer, to create labels for the product.36 Respondent
testified that Matt Rae sent invoices to Respondent in the name of Hole-In-One or to
Jugular, Inc. (by mistake), another company owned by Respondent. Respondent did
not recall any invoices in the name of Respondent personally or that Respondent ever
paid any invoices from Rae personally because Hole-In-One Drinks, LLC or Jugular,
Inc. paid the invoices.37
As of April 3, 2015, Respondent began to shrink-wrap beverage bottles with
HOLE-IN-ONE labels.38 Respondent testified, “the bottles were sold almost
immediately after they were produced”39 and “without question, I started selling
drinks in April 2015.”40 Respondent claims to have been at every sale.41 However,

34 Respondent’s Discovery Dep., p. 28 (22 TTABVUE 180).
35 Respondent’s Discovery Dep., pp. 99-102 (22 TTABVUE 251-254).
36 Respondent’s Discovery Dep., pp. 53-54 (22 TTABVUE 205-206).
37 Respondent’s Discovery Dep., pp. 13-14 and 75 (22 TTABVUE 165-166 and 227); see also
id. at p. 73 (22 TTABVUE 225) (Matt Rae mistakenly identified Jugular, Inc. on an invoice
meant for Hole-In-One Drinks, LLC).
38 Respondent’s Discovery Dep., p. 57 (22 TTABVUE 209).
39 Respondent’s Discovery Dep., p. 60 (22 TTABVUE 212).
40 Respondent’s Discovery Dep., p. 61 (22 TTABVUE 213); see also id. at pp. 71 (22 TTABVUE
223); id. at pp. 123-124 (22 TTABVUE 275-277) (April 8, 2015 was the first date the drink
was in a saleable condition).
41 Respondent’s Discovery Dep., p. 61 (22 TTABVUE 213).
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what Respondent testified to as a “typical invoice” identified Hole-In-One Drinks,
LLC as the “producer.”42
Q. So Hole-In-One Drinks, LLC was always the one
selling the products?
A. Yeah.43
Respondent testified that invoices for HOLE IN ONE sports drink would say “Hole-
In-One Drinks, LLC.”44 The evidence of record also includes a purchase order from
Advantage Link Sports Management identifying Hole-In-One Beverages, Inc. as the
vendor.45 Customers paid Hole-In-One Drinks, LLC.46
Q. It [HOLE IN ONE] was always sold, marketed, or
distributed under Hole-In-One Drinks, LLC?
A. Yeah.47
In sum, Respondent filed the intent-to-use application in his own name, even
though Respondent and Darryl Cazares were negotiating or had already agreed to
form Hole-In-One Drinks, LLC, the entity through which they intended to sell HOLE
IN ONE branded beverages.

42 Respondent’s Discovery Dep., pp. 65-66 and 81 and Exhibit 10 (22 TTABVUE 217-218, 233
and 353).
43 Respondent’s Discovery Dep., p. 67 (22 TTABVUE 219).
44 Respondent’s Discovery Dep., p. 80 (22 TTABVUE 232).
45 Respondent’s Discovery Dep. Exhibit 12 (22 TTABVUE 356). Respondent testified that
Advantage Link Sports Management was his account so we assume that Hole-In-One
Beverages, Inc. should be Hole-In-One Drinks, LLC. Respondent’s Discovery Dep., p. 69 (22
TTABVUE 221). Subsequently, Respondent testified that he deposited the payment in the
Hole-In-One Drinks, LLC account. Respondent’s Discovery Dep., p. 70 (22 TTABVUE 222).
46 Respondent’s Discovery Dep., p. 133 (22 TTABVUE 285).
47 Respondent’s Discovery Dep., pp. 154-155 (22 TTABVUE 306-307).
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V. Whether the underlying application of Respondent’s registration is
subject to a claim that it is void ab initio on the ground that
Respondent was not the owner of the HOLE IN ONE mark at the time
Respondent filed the application for registration?
The petition raises a claim that Respondent did not “own” the application at issue
when he filed it, and that therefore the application is void ab initio.48 The allegations
pertinent to this claim recite that the application was filed under Section 1(a).49 But
that is mistaken; the application was filed under Section 1(b).50 Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(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.
Section 1(b) concerns intent-to-use applications. Because in such an application
the mark has not yet been used [or the applicant is not claiming use of the mark], and
because ownership of a mark arises through use of the mark, Section 1(b) does not
refer to “the owner of a trademark,” as does Section 1(a) of the Trademark Act which
deals with use based applications. Respondent’s underlying application at issue in
this case was originally filed as an intent-to-use application. Had the application been
a use-based application, and had the application been filed in the name of Respondent
(an individual) when the owner of the mark HOLE IN ONE was another entity such

48 1 TTABVUE ¶¶ 5-7.
49 1 TTABVUE ¶ 5.
50 See n.1, supra.
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as Respondent and Darryl Cazares as joint owners or Hole-In-One Drinks, LLC, then
the application would have been void ab initio as having been filed in the name of
someone other than the owner of the mark. See Lyons v. Am. Coll. Of Veterinary
Sports Med. & Rehab., 859 F.3d 1023, 123 USPQ2d 1024, 1027 (Fed. Cir. 2017);
Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988)
(application held void because it was filed in the name of an applicant who was not
the owner of the mark at the time of filing); In re Tong Yang Cement Corp., 19
USPQ2d 1689 (TTAB 1991) (application held void ab initio because it was not filed in
the name of the owner of the mark).
There is no statutory requirement that the filer of an intent-to-use application be
the owner of the mark at the time it files an intent-to-use application; rather, the filer
avers that: “The signatory believes that the applicant is entitled to use the mark in
commerce. The applicant has a bona fide intention to use the mark in commerce on
or in connection with the goods/services in the application.” Therefore, a claim that
an applicant, or in this case Respondent, was not the rightful “owner” of the mark
when the application was filed is not available when the application, as originally
filed, is not based on use of the mark in commerce. Norris v. PAVE: Promoting
Awareness, Victim Empowerment, 2019 USPQ2d 370880 *4 (TTAB 2019). Thus, there
is technically no statutory basis for Petitioner’s nonownership claim and we give no
further consideration to Opposer’s lack of ownership claim.
However, under the circumstances of this case, Petitioner could have asserted that
Respondent did not have a right to file his intent-to-use application based on a lack
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of a bona fide intent to use the mark in commerce as of the filing date of the intent-
to-use application.
“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.” M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114
USPQ2d 1892, 1898 (Fed. Cir. 2015). By analogy to non-
ownership claims, where the application is based on intent
to use under Section 1(b) of the Trademark Act, and two
parties are claiming superior rights based on shared
circumstances, the question is which entity or individual
had the bona fide intent. Am. Forests v. Sanders, 54
USPQ2d 1860, 1864 (TTAB 1999) (holding an intent-to-use
application filed by an individual void, where the entity
that had a bona fide intention to use the mark in commerce
on the application filing date was a partnership composed
of the individual applicant and her husband), aff’d mem.,
232 F.3d 907 (Fed. Cir. 2000). In other words, an opposer
may assert that an applicant does not have a right to file
the intent-to-use application based on a lack of intent to
use the mark in commerce in connection with the applied-
for goods or services.
Norris v. PAVE, 2019 USPQ2d at *5. That is, the Board has previously held that the
same operative facts regarding parties claiming superior rights based on shared
circumstances may support different claims depending on whether they arise in a
use-based application, in which case the appropriate claim is lack of ownership, or in
an intent-to-use application, in which case the appropriate claim is lack of bona fide
intent to use.
VI. Whether the parties tried by implied consent a claim that Respondent
alone did not have a bona fide intent to use the HOLE IN ONE mark
in commerce?
Fed. R. Civ. P. 15(b), made applicable to Board proceedings by Trademark Rule
2.116(a), 37 C.F.R. § 2.116(a), provides, in pertinent part, that when issues not raised
Cancellation No. 92065860

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by the pleadings are tried by the express or implied consent of the parties, they shall
be treated in all respects as if they had been raised in the pleadings. Respondent has
not expressly consented to the trial of the issue of whether he had a right to file the
application due to a lack of a bona fide intent to use. On the other hand, implied
consent to the trial of an unpleaded issue can be found only where the non-offering
party (1) raised no objection to the introduction of evidence on the issue, and (2) was
fairly apprised that the evidence was being offered in support of the issue. TBMP
§ 507.03(b). “[T]he Board has found that an issue was tried by implied consent where
the non-offering party raised no objection to the introduction of evidence on the issue
and in its brief treated the evidence as being of record, or discussed the issue in its
brief as though it were part of the pleading.” Morgan Creek Prods., Inc. v. Foria Int’l,
Inc., 91 USPQ2d 1134, 1138 (TTAB 2009).
As noted above, Petitioner alleged that Respondent was not the rightful owner of
the HOLE IN ONE mark at the time he filed the application.
(6) The true facts are that the HOLE IN ONE mark in the
Registration at issue was actually owned by a partnership
between Registrant “MICHAEL LATJAY” [sic] and
“DARRYL CAZARES,” … In particular, both Mr. Latjay
[sic] and Mr. Cazares agreed to own the HOLE IN ONE
mark jointly. However, Mr. Latjay [sic] proceeded to file
and obtain the Registration at issue in his sole name
without the consent and knowledge of Mr. Cazares. …
(7) Clearly, only the owner of a mark may register the mark
and the Registrant, Michael Latjay [sic], was not the sole
owner of the HOLE IN ONE mark at the time of filing.
Because the Registration at issue should have listed both
Michael Latjay [sic] and Darryl Cazares as either joint
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applicants or as a partnership, the Registration at issue is
void ab initio and should be cancelled.51
It appears that Petitioner intended to allege that Respondent did not have a right
to file the application due to lack of a bona fide intent to use the HOLE IN ONE mark
by himself and that Respondent and Darryl Cazares had a bona fide intent to use the
HOLE IN ONE mark as joint applicants until they formed Hole-In-One Drinks, LLC.
Petitioner failed to appreciate the distinction between a use-based application and an
intent-to-use application: a use-based application is filed by one who must be the
owner of the trademark, while an intent-to-use application is filed by an entity or
person who has a bona fide intent to use the mark in commerce. As a result, while
pleading the appropriate facts for a lack of bona fide intent to use claim against
Respondent’s registration issuing from an intent-to-use application, Petitioner
mistakenly referred to the “ownership” claim appropriate to registration issuing from
a use-based application.52 This mistake is somewhat understandable, however,
because, as noted above, it was not until 2019―i.e., about two years after the petition
in this proceeding was filed―that the Board held for the first time that a claim that
an applicant is not the rightful “owner” of the applied-for mark is not available when
the application is not based on use of the mark in commerce. Norris v. PAVE, 2019
USPQ2d at *4.

51 Petition for Cancellation ¶¶6 and 7 (1 TTABVUE 5-6).
52 The petition also mistakenly alleged that Respondent filed its application under Section
1(a). 1 TTABVUE ¶ 5.
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Where, as here, Respondent’s application, as originally filed, was based on a bona
fide intent to use under Section 1(b) of the Trademark Act, and two parties are
claiming rights in the same or similar mark, the issue is whether the applicant of the
intent-to-use application had a bona fide intent to use the mark, not whether it owned
the marks as of the filing date of the application. This difference between a use-based
application and an intent-to-use application, or the proof required to succeed on a
claim of non-ownership or lack of a bona fide intent-to-use claim, did not affect the
litigation of this case because the operative facts are the same for both. In other
words, had Petitioner properly pleaded its claim, the litigation would have proceeded
unchanged. Instead of having to prove whether the owner of the mark was
Respondent or Respondent and Darryl Cazares, Petitioner had to prove whether
Respondent or Respondent and Darryl Cazares collectively had the bona fide intent
to use the HOLE IN ONE mark. Thus, Respondent was fairly apprised that the
evidence submitted in this case supported the issue of whether Respondent had the
right to file the application based on his sole bona fide intent to use the mark as of
the filing date of the underlying intent-to-use application, and there was no reason
for Respondent to object to any testimony or evidence because it was the same
testimony and evidence for either the nonownership claim or a lack of a bona fide
intent-to-use claim.
In fact, Respondent introduced testimony aimed at contradicting Petitioner’s
claim that Darryl Cazares had an interest or bona fide intent to use the HOLE IN
ONE mark at the time the underlying application was filed. Respondent testified that
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there were no signed agreements between Respondent and Darryl Cazares and that
Darryl Cazares never provided any consideration for an ownership interest in the
HOLE IN ONE venture.53 Mark Mitchell testified that he is “certain that
[Respondent] is the rightful creator and owner of the Hole in One energy drinks.”54
Daniel Barrett testified that Respondent “created the Hole In One brand identity,
trademark, packaging design and drink formula himself. [Respondent] is the sole
owner and creator of the Hole In One registered trademark which he paid his
attorneys to register on his behalf.”55 Anthony Walker testified that “[Respondent] is
extremely proud of his name, his heritage and all that he has achieved in his life,
there is absolutely no dishonesty associated with him, unfortunately the same cannot
be said for Mr. Darryl Cazares claiming that he owns any part of the creation of ‘Hole
In One’ by registering Hole In 1 Drinks, Inc.”56 While, as explained in the next section
of this opinion, this evidence, in light of the other evidence cited earlier, does not
persuade us that Respondent alone had a bona fide intent to use the mark at the
time he filed the Section 1(b) application, this shows that Respondent was aware that
the current dispute centers on which person(s) or entity could properly be said to
have had a bona fide intent to use the mark at the time of filing.
Finally, Respondent, in his brief, addresses the circumstances under which he
filed the HOLE IN ONE application under the advice of counsel.

53 29 TTABVUE 3-4.
54 26 TTABVUE 3.
55 29 TTABVUE 7.
56 29 TTABVUE 9.
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I was represented by counsel from the very beginning of
filing for my Hole In One trademark & during the
formation of my company, Hole In One Drinks, LLC by
Ruth Khalsa of Legal Force Law. … I have supplied
numerous emails to Mr. Cazares and others which were
forwarded from my counsel confirming the progress of the
application of my Mark in my personal name, in which Mr.
Cazares responded by saying “Excellent” from
darrylcazares@aol.com on Feb. 1, 2015. … These emails are
written notice. Claiming otherwise is yet another falsehood
perpetrated by the Plaintiffs [sic] which has caused this
case to drag on needlessly.57
We find that even though Petitioner failed to plead a claim that Respondent did
not have a right to file the application due to a lack of a bona fide intent to use the
HOLE IN ONE mark in commerce by himself, such a claim was tried by implied
consent because Respondent had fair notice of this issue and actively defended
against it on the merits. Accordingly, the pleadings are deemed amended under Fed.
R. Civ. P. 15(b).
VII. Whether Respondent had a bona fide intent to use the HOLE IN
ONE mark by himself when he filed the intent-to-use application?
Considering the evidence discussed above, we find that Respondent and Darryl
Cazares jointly had a bona fide intention to use the mark HOLE IN ONE at the time
Respondent filed the underlying application. Accordingly, the HOLE IN ONE
trademark application should have been filed only in the names of Respondent and
Darryl Cazares as joint applicants.58 See Conolty v. Conolty O’Connor NYC LLC, 111
USPQ2d 1302, 1309 (TTAB 2014) (section 1(a) case; because applicant and opposer

57 Respondent’s Brief (35 TTABVUE 4-5).
58 Because the application was filed before Hole-In-One, LLC was formed, Respondent’s
counsel should have identified Respondent and Cazares as joint owners.
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are “partners,” applicant is not the sole owner of the mark and therefore the
application is void); Am. Forests v. Sanders, 54 USPQ2d at 1862 (finding intent to use
application filed by Barbara Sanders void ab initio because “the true entity which had
a bona fide intent to use the mark LEAF RELEAF and design was not Barbara
Sanders an individual, but rather was a partnership consisting of Stephen Sanders
and Barbara Sanders”), aff’d, 232 F.3d 907 (Fed. Cir. 2000) (unpublished).
In fact, Hole-In-One Drinks, LLC was the first and only user of the HOLE IN ONE
trademark.59 Thus, Hole-In-One Drinks, LLC is the owner of the HOLE IN ONE
trademark, not Respondent. See Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189
USPQ 630, 635 n.6 (CCPA 1976) (“It is fundamental that ownership of a mark is
acquired by use, not by registration. One must be the owner of a mark before it can
be registered.”); cf. Conolty, 111 USPQ2d at 1309 (finding that because applicant and
opposer are “partners,” applicant is not the sole owner of the mark and therefore the
application is void). To the extent that Respondent argues he created the mark,
trademark rights are not gained by creating a mark, but through use of the mark.
See Selfway, Inc. v. Travelers Petroleum, Inc., 579 F.2d 75, 198 USPQ 271, 274 (CCPA
1978); Reflange Inc. v. R-Con Int’l, 17 USPQ2d 1125 (TTAB 1990) (opposer has
priority as the first user even though applicant coined the mark and disclosed it to
opposer as a proposed mark); La Maur Inc. v. Int’l Pharm. Corp., 199 USPQ 612, 616

59 There is no testimony or evidence that the use of the mark by Hole-In-One Drinks, LLC
inures to the benefit of anyone or anything else.
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(TTAB 1978) (conception of mark and discussion with others does not establish
priority).
The preponderance of the evidence establishes that Respondent did not intend to
use the HOLE IN ONE trademark by himself at the time he filed the underlying
application in his own name; he intended to use it with Darryl Cazares, to form Hole-
In-One Drinks, LLC, and to market HOLE IN ONE beverages through that company.
Such a business structure may offer some advantages, but it also comes with some
strictures, and the existence of the limited liability company through which
Respondent elected to conduct his business cannot be turned on and off at will to suit
the occasion. See Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118
USPQ2d 1413, 1422 (TTAB 2016). Based on Respondent’s actions and statements, we
cannot find anything to support Respondent’s position that he intended to use the
HOLE IN ONE mark in his own name alone and that Hole-In-One Drinks, LLC was
the entity through which he intended to use and actually did use the HOLE IN ONE
mark. See Lyons v. Am. Coll. Of Veterinary Sports Med. & Rehab., 859 F.3d 1023, 123
USPQ2d 1024, 1027 (Fed. Cir. 2017) (due to the absence of documentation, the Board
examines the actions and statements of the parties to determine ownership). The
facts of record are inconsistent with Respondent’s claim to have any continuing
ownership of the HOLE IN ONE mark in his own right. We therefore find that
Petitioner has established by a preponderance of the evidence that Respondent alone
did not have a right to file the underlying intent-to-use application due to lack of a
bona fide intent to use the HOLE IN ONE mark as of the filing date of the application,
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that Respondent intended to use the HOLE IN ONE MARK with Darryl Cazares, as
joint owners, and that, therefore, the underlying application for the mark was void
ab initio. In other words, under these “shared circumstances,” Petitioner and
Respondent jointly had the bona fide intent to use the mark in commerce that formed
the basis of the application. See Am. Forests v. Sanders, 54 USPQ2d at 1864.
Because we have found that the underlying application for Respondent’s
registration was void ab initio for lack of a bona fide intent to use the mark,
Petitioner’s other claims are moot. See, e.g., Wonderbread 5 v. Gilles, 115 USPQ2d
1296, 1305 (TTAB 2015) (dismissing as moot petitioner’s Section 2(d) and fraud
claims after finding that the underlying application of the involved registration was
void ab initio as of the application filing date because respondent was not the owner
of the mark).
Decision: The petition to cancel is granted on the ground that the underlying
intent-to-use application for Registration No. 4942535 was void ab initio because
Respondent alone lacked the requisite bona fide intent to use the mark in commerce
as of the filing date of the application.