James Conway, Rohan Campbell, Yusuf Boydv.Anthony L. Jones d/b/a Masonic Riders Motorcycle Club Nation

Trademark Trial and Appeal Board

Aug 3, 2021

91242958 (T.T.A.B. Aug. 3, 2021)

This Opinion is Not a Precedent of the TTAB Mailed: August 3, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ James A. Conway, Rohan Campbell and Yusuf A. Boyd v. Anthony L. Jones d/b/a Masonic Riders Motorcycle Club Nation _____ Opposition No. 91242958 _____ Nicole D. Galli of ND Galli Law LLC for James A. Conway, Rohan Campbell and Yusuf A. Boyd. Anthony L. Jones, pro se. _____ Before Kuhlke, Adlin and Hudis, Administrative Trademark Judges. Opinion by Hudis, Administrative Trademark Judge: This is a registrability dispute between the founders and former members of a motorcycle club over the club’s service mark, otherwise known in the vernacular of the motorcycle culture as its “Colors.” Anthony L. Jones (“Applicant”) seeks registration on the Principal Register of the mark: Opposition No. 91242958 - 2 - for “promoting the charitable services of others, namely, providing individuals with information about various charities for the purpose of making donations to charities; promotional services, namely, promoting the charities of others” in International Class 35.1 James A. Conway (“Conway”), Rohan Campbell (“Campbell”) and Yusuf A. Boyd (“Boyd”) (collectively, “Opposers”) oppose registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), alleging that Applicant’s mark, as applied to the services identified in the Application, so resembles Opposers’ common law marks: 1 Application Serial No. 87576804 (the “’804 Application”) was filed on August 21, 2017, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b). The ’804 Application contains the following disclaimer: “No claim is made to the exclusive right to use ‘Masonic Riders’ and ‘Faith Hope Charity’ and ‘Biker’ and ‘MR MC’ and ‘San Diego CA’ apart from the mark as shown”. The ’804 Application also contains the following description of the mark: “The color(s) white, blue, and gold is/are claimed as a feature of the mark. The mark consists of a 3 piece motorcycle club patch consisting of a top, center, and bottom patch. The top is a banner shape patch that is white outlined in blue with the words written in blue ‘MASONIC RIDERS’ in blue. The center patch is a white oval with a blue outline with the words circling it that says ‘FAITH’ at the top, ‘CHARITY’ on the right, ‘BIKER LOVE’ at the bottom, and ‘HOPE’ on the left as you are looking at it in blue. The blue letters ‘MR’ are in the middle in blue with a white background with a gold masonic emblem placed on top. At the bottom right leg of the letter ‘R’ the white letters ‘MC’ in a blue outline are placed on top. The bottom patch is a white border in blue with the ‘SAN DIEGO, CA’ written in blue.” Opposition No. 91242958 - 3 - MASONIC RIDERS M.C. Original Logo Mark New Logo Mark used in connection with motorcycle social club activities, as well as charitable fundraising, procurement, donation and promotional activities, as to be likely to cause confusion, mistake, or to deceive.2 2 Notice of Opposition, 1 TTABVUE 6-20, ¶¶ 1-47. Citations to the record refer to the Board’s TTABVUE docket system. Coming before the designation TTABVUE is the docket entry number; and coming after this designation are the page and paragraph references, if applicable. [there could be stuff you may want to cite that doesn’t fall w/in pleadings, evidence or briefs, like prior Board orders] Each of Opposers’ three common law marks is the subject of a pending application filed with the USPTO on August 4, 2018 under Trademark Act Section 1(a), 15 U.S.C. §1051(a), reciting the same identification of services: Charitable services in the nature of coordination of the procurement and distribution of food donations from the general public to needy persons; Organizing chapters of a motorcycle club and promoting the interests of the members thereof; Promoting the charitable services of others, namely, providing individuals with information about various charities for the purpose of making donations to charities; Promotional services, namely, promoting the charities of others. Application Serial No. 88065662 (the “’662 Application”) for the MASONIC RIDERS M.C. standard character mark claims first use of the mark anywhere and first use in commerce at least as early as May 28, 2007. Application Serial No. 88065670 (the “’670 Application”) for what Opposers call their “Original Logo Mark” (see Notice of Opposition, 1 TTABVUE 10, ¶ 16) claims first use of the mark anywhere and first use in commerce at least as early as May 28, 2007. The Application contains the following disclaimer: “No claim is made to the exclusive right to use ‘Riders’, ‘Est. 2007’, ‘Charity’, ‘Biker’, ‘G’, ‘MC’, the image of the square and compass, and the image of the eastern star apart from the mark as shown”. The ’670 Application also contains the following description of the mark: “Color is not claimed as a feature of the mark. The mark consists of a 3 piece motorcycle club patch consisting of a top, center, and bottom patch. The top is a banner shape patch that is outlined with the words Opposition No. 91242958 - 4 - Opposers also assert as a separate ground for opposition that Applicant is not the rightful owner of the mark.3 Since the opposed Application was filed based on Trademark Act Section 1(b), the Board, in its Order of March 13, 2019, interpreted Opposers’ non-ownership claim as alleging that “[A]pplicant is not the person with a bona fide intention to use the mark in commerce, making the [A]pplication void … at the time the [A]pplication was filed.”4 By the Board’s Order of January 9, 2019, Applicant’s informal Answer has been construed as a general denial of Opposer’s salient allegations under Fed. R. Civ. P. 8(b)(3).5 ‘MASONIC RIDERS’ and ‘EST. 2007’ to the right of it. The center patch is a white oval with an outline with the words circling it that says ‘FAITH’ at the top, ‘CHARITY’ on the right, ‘BIKER LOVE’ at the bottom, and ‘HOPE’ on the left. The letters ‘MR’ are in the middle with emblems placed in the middle of both letters. On the bottom left leg of the letter ‘R’, the letters ‘MC’ are on the bottom. The bottom patch is blank.” Application Serial No. 88065668 (the “’668 Application”) for what Opposers call their “New Logo Mark” (see Notice of Opposition, 1 TTABVUE 12, ¶ 21) claims first use of the mark anywhere and first use in commerce at least as early as March 1, 2013. The Application contains the following disclaimer: “No claim is made to the exclusive right to use ‘Riders’, ‘Charity’, ‘Biker’, ‘G’, ‘MC’, and the image of the square and compass apart from the mark as shown”. The ’668 Application also contains the following description of the mark: “Color is not claimed as a feature of the mark. The mark consists of a 3 piece motorcycle club patch consisting of a top, center, and bottom patch. The top is a banner shape patch that is outlined with the words ‘MASONIC RIDERS’. The center patch is a white oval with an outline with the words circling it that says ‘FAITH’ at the top, ‘CHARITY’ on the right, ‘BIKER LOVE’ at the bottom, and ‘HOPE’ on the left. The letters ‘MR’ are in the middle with a masonic emblem placed on top. At the bottom right leg of the letter ‘R’, the letters ‘MC’ are placed on top. The bottom patch is blank.” 3 Id. at 6-20, ¶¶ 1-42, 48-51. 4 Board Order of March 13, 2019, 17 TTABVUE 3-4. Opposers further asserted a claim that Applicant committed fraud on the USPTO. Notice of Opposition, 1 TTABVUE 6-20, ¶¶ 1-42, 51. However, the Board dismissed Opposers’ fraud claim as insufficiently pled. Board Order of March 13, 2019, 17 TTABVUE 4-5. 5 Board Order of January 9, 2019, 13 TTABVUE 3-4. Opposition No. 91242958 - 5 - The case is fully briefed. Having considered the evidentiary record, the parties’ arguments and applicable authorities, as explained below, we find that Applicant was not the person with a bona fide intention to use the mark in commerce at the time he filed the involved Application, making the Application void. We therefore sustain the Opposition on this ground, and need not reach Opposers’ Trademark Act Section 2(d) claim. See Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1478 (TTAB 2017) (the Board has “discretion to decide only those claims necessary to enter judgment and dispose of the case”) (quoting Multisorb Tech., Inc. v. Pactive Corp., 109 USPQ2d 1170, 1171 (TTAB 2013)). I. The Evidentiary Record The record consists of the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of Applicant’s involved application. In addition, the parties introduced the following evidence: A. Opposers’ Evidence  Opposers’ Notice of Reliance (“Opp NoR”) on their ’662, ’670, and ’668 Applications (37 TTABVUE).  Opposers’ testimony declaration of the National President of the Masonic Riders Motorcycle Club (“MRMC”), Richard D. Williams III (“Williams Decl.”), with exhibits (38 TTABVUE 2-52).  Opposers’ testimony declaration of the CEO of All Starr Sports, Inc. (“All Starr Sports”), Brian Dull (“Dull Decl.”), with exhibits (38 TTABVUE 53-81), and a confidential exhibit (39 TTABVUE 3-12).  The testimony declaration of Opposer, James Anthony Conway, Sr., a founder and Executive Board Member of MRMC (“Conway Decl. I”), with exhibits (40 TTABVUE), and a confidential exhibit (39 TTABVUE 3-12).6 6 Numerous identical copies of Opposers’ Bylaws for the MRMC were submitted as exhibits to Opposers’ multiple testimony declarations. We only refer and cite to Opposers’ first Opposition No. 91242958 - 6 -  Opposers’ second testimony declaration of Mr. Conway, covering photographs and printed materials (“Conway Decl. II”), with exhibits (41 TTABVUE).  The testimony declaration of Opposer, Yusuf Ali Boyd, a founder and Executive Board Member of MRMC (“Boyd Decl.”), with exhibits (42 TTABVUE).  The testimony declaration of Opposer, Rohan Sean Campbell, a founder and Executive Board Member of MRMC (“Campbell Decl.”), with exhibits (43 TTABVUE).  Opposers’ testimony declaration of the National Vice President of MRMC, Anselmo De la Cruz (“De la Cruz Decl.”), with exhibits (44 TTABVUE).  Opposers’ testimony declaration of the National Chaplin of MRMC, Beverly Morgan (“Morgan Decl.”), with exhibits (45 TTABVUE).  Opposers’ testimony declaration of the National Sargent at Arms of MRMC, Shavode Walker (“Walker Decl.”), with exhibits (46 TTABVUE).  Opposers’ testimony declaration of the President of the Roanoke, VA Chapter of MRMC, Michael Wells (“Wells Decl.”), with exhibits (47 TTABVUE). B. Applicant’s Evidence  The testimony declaration of Applicant, Anthony L. Jones (“Jones Decl.”), who is a former member of MRMC (49 TTABVUE).  Applicant’s testimony declaration of another former member of MRMC, Quentin W. Giles, Sr. (“Giles Decl.”) (50 TTABVUE).  Applicant’s testimony declaration of the President of the Jacksonville, NC Chapter of MRMC, Randell L. Robinson (“Robinson Decl.”), with exhibits (51 TTABVUE).7 C. Opposers’ Rebuttal Evidence  Opposers’ cross-examination testimony deposition of Mr. Robinson (“Robinson Depo.”), with exhibits (54 and 56 TTABVUE). submission of these Bylaws attached to Mr. Conway’s testimony declaration, 40 TTABVUE 19-68, Exhs. 1-3. 7 Although not submitted with the oath formalities of 18 U.S.C. § 1001 or 28 U.S.C. § 1746, during his cross-examination Mr. Robinson identified his testimony declaration, stated that his statements made in it were true and correct, and adopted those statements as his own for the record. Robinson Depo., 54 TTABVUE 15-19. We construe this testimony as functionally equivalent to 28 U.S.C. § 1746. Opposition No. 91242958 - 7 - II. Evidentiary Matters Before proceeding to the merits of the Opposition, we address certain evidentiary objections raised by Opposer. A. Opposers’ Motion to Strike Applicant’s Brief and Attached Exhibits Applicant submitted, with his Trial Brief, Exhibits A-R comprising 39 pages of material not previously submitted during his testimony period.8 Applicant cites to these exhibits throughout his Trial Brief. Opposers move to strike the exhibits attached to Applicant’s Trial Brief, also requesting that any of Applicant’s arguments made in his Trial Brief that refer to these exhibits not be considered.9 Opposers’ motion to strike Exhibits A-R to Applicant’s Trial Brief is granted. Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *2 (TTAB 2020) (exhibits attached to brief not considered); Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1116 (TTAB 2009) (“Evidence submitted outside of the trial periods - including that attached to briefs - is untimely, and will not be considered.”) (quoting Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1955 (TTAB 2008)). We give no further consideration to Applicant’s Exhibits A-R or any of Applicant’s arguments made in his Trial Brief that refer to these improperly submitted exhibits. Opposer also moves to strike Applicant’s Trial Brief in its entirety on the ground that the brief violates the formatting requirements of Trademark Rule 2.128(b), 37 8 Applicant’s Brief, 57 TTABVUE 22-61. 9 Opposer’s Motion to Strike, 58 TTABVUE 2-4; see also, Opposer’s Rebuttal Brief, 59 TTABVUE 4. Opposition No. 91242958 - 8 - C.F.R. § 2.128(b). Specifically, missing from Applicant’s Trial Brief is an alphabetical index of cited cases. Moreover, with the exhibits attached, Applicant’s Trial Brief exceeds the 55-page limit established by the cited Rule. Opposers’ motion to strike Applicant’s Trial Brief in its entirety is denied. Although we do not condone the absence of an alphabetical index of cited cases from Applicant’s Trial Brief, in total Applicant cited only two statutory provisions and three cases. Under the circumstances, we find Applicant’s failure to include an alphabetical index of cited cases to be harmless. Moreover, regarding page limits, the operative language of Trademark Rule 2.128(b) is discretionary (“Any brief beyond the page limits … may not be considered by the Board.”) (emphasis added). Stripped of its stricken exhibits, Applicant’s Trial Brief is only 17 pages and therefore does not exceed the Board’s page limits. Cf. Hole In 1 Drinks, 2020 USPQ2d 10020, at *2 (single spaced, seven-page brief considered because it was not an attempt to circumvent the page limits). B. Opposers’ Objections to Applicant’s Testimony Declarations and Cross-Examination Testimony Opposers object to several portions of the Testimony Declarations of Messrs. Jones, Giles and Robinson (as well as Robinson’s cross-examination testimony) on the grounds of lack of personal knowledge, relevance, prejudice, speculation, hearsay, the offering of inadmissible lay opinions, the offering of inadmissible character evidence and, regarding Mr. Robinson’s cross-examination testimony deposition, beyond the scope of direct examination.10 Since we are capable of discerning admissible and 10 Appendix to Opposers’ Brief, 55 TTABVUE 36-41. Opposition No. 91242958 - 9 - relevant trial testimony from non-admissible trial testimony, we overrule these objections and give the Declarations and cross-examination testimony the appropriate probative weight they deserve. See Spiritline Cruises LLC v. Tour Mgmt. Servs., Inc., 2020 USPQ2d 48324, at *4 (TTAB 2020) (the Board generally does not strike testimony taken in accordance with the applicable rules on the basis of substantive objections but considers its probative value); M/S R.M. Dhariwal (HUF) 100% EOU v. Zarda King Ltd., 2019 USPQ2d 149090, at *3 (TTAB 2019) (whether testimony is supported by other evidence can be considered in determining its weight, but any lack of support does not render it inadmissible; Board is capable of weighing the strength or weakness of objected-to testimony, including any inherent limitations). III. The Parties A. Opposers Messrs. Conway, Boyd and Campbell founded the Masonic Riders Motorcycle Club (“MRMC”) in 2007. Together, the three of them wrote and promulgated MRMC’s initial set of bylaws, naming themselves as members of its Executive Board.11 These bylaws were amended in 2011, and again to their current version in 2014.12 Applicant admits these facts.13 There is no evidence that Opposers organized themselves or the 11 Conway Decl. I, 40 TTABVUE 2, 19-29, ¶ 2, Exh. 1; Boyd Decl., 42 TTABVUE 2, ¶ 2; Campbell Decl., 43 TTABVUE 2, ¶ 2. 12 Conway Decl. I, 40 TTABVUE 3, 30-68, ¶ 11, Exhs. 2-3; Boyd Decl. 42 TTABVUE 3, ¶ 10. 13 Jones Decl., 49 TTABVUE 2-3, ¶¶ 2-3. Opposition No. 91242958 - 10 - MRMC into a corporation, limited liability company, or any other type of formal entity structure. In early 2008, the U.S. Army transferred Mr. Campbell clear across the country. He therefore elected to leave MRMC to join another motorcycle club that was closer to him at that time.14 After retiring from the Army, in 2016 Mr. Campbell re-joined MRMC as a member and as a part of its Executive Board; however, he is now stationed in Germany.15 Although Mr. Boyd has been on MRMC’s Executive Board since the club’s inception, and presently remains so, in 2019 he resigned his active membership in MRMC.16 B. Applicant and his Cohort Applicant and Mr. Giles joined MRMC in 2009.17 While members, Applicant and Giles held several leadership positions in MRMC with increasing levels of importance and responsibility over time.18 In view of a dispute over the administration of the MRMC and the ownership of its marks, as between Opposers on the one hand and 14 Campbell Decl., 43 TTABVUE 3, ¶ 8. 15 Id. at 3, ¶ 9. 16 Boyd Decl., 42 TTABVUE 2-3, ¶¶ 3, 5; Robinson Decl., 51 TTABVUE 5, ¶ 23. 17 Applicant’s Brief, 57 TTABVUE 8; see also Notice of Opposition, 1 TTABVUE 14, ¶ 28 (as to Applicant’s former relationship with MRMC). 18 Jones Decl., 49 TTABVUE 3, ¶ 4; Giles Decl., 3, ¶ 4; see also Notice of Opposition, 1 TTABVUE 14, ¶ 29 (as to Applicant’s former leadership role in MRMC). Opposition No. 91242958 - 11 - Applicant and Mr. Giles on the other, Opposers expelled them from the club in August 2017.19 C. General Nomenclature regarding the Marks used by Motorcycle Clubs In motorcycle club jargon, the logos that members wear as patches on their vests or as printed on other apparel, as well as the same symbols used on promotional materials for club activities are called a club’s “Colors”. A club’s Colors are a very important club asset and only members of the club may acquire, wear or otherwise use the Colors on their apparel.20 The Colors include a center patch bearing the Club’s logo with surrounding “rockers” affixed to the back of members’ motorcycle vests,21 as follows: Top Rocker → Center Patch → Bottom Rocker → 19 Notice of Opposition, 1 TTABVUE 14-16, ¶¶ 30-35; Conway Decl. I, 40 TTABVUE 12-16, ¶¶ 55-71; Boyd Decl., 42 TTABVUE 11-14, ¶¶ 51-65; Campbell Decl. 43 TTABVUE 9-13, ¶¶ 44-57; Jones Decl., 49 TTABVUE 4-7, ¶¶ 11-24; Giles Decl., 50 TTABVUE 5-7, ¶¶ 11-22; Robinson Decl. 51 TTABVUE 4, 5-6, ¶¶ 15-16, 26; Morgan Decl., 45 TTABVUE 2-3, ¶ 4. 20 Williams Decl., 38 TTABVUE 3, ¶ 7; Dull Decl., 38 TTABVUE 54, ¶ 4; Boyd Decl., 42 TTABVUE 6, ¶ 19; Campbell Decl., 43 TTABVUE 4-6, ¶¶ 10, 18; De la Cruz Decl., 44 TTABVUE 3, ¶ 5; Walker Decl., 46 TTABVUE 3, ¶ 6; Wells Decl., 47 TTABVUE 2-3, ¶ 4. 21 Dull Decl., 38 TTABVUE 55-56, ¶ 12; Conway Decl. I, 40 TTABVUE 5, 7, ¶¶ 17, 27; Boyd Decl., 42 TTABVUE 5, 6, ¶¶ 15, 24; Campbell Decl., 43 TTABVUE 7, ¶ 23; De la Cruz Decl., 44 TTABVUE 3, ¶ 5; Wells Decl., 47 TTABVUE 2-3, ¶ 4. Opposition No. 91242958 - 12 - The top rocker is a banner bearing the club’s name. The name of a club member’s chapter is placed within the bottom rocker.22 A club’s “Soft Colors” include the center patch, along with other elements such as a modified banner on top that has the full club name. Soft Colors are used on items such as t-shirts and sweatshirts.23 IV. Entitlement to a Statutory Cause of Action Entitlement to a statutory cause of action is a threshold issue that must be proven by the plaintiff in every inter partes case. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish entitlement to a statutory cause of action under Trademark Act Section 13, 15 U.S.C., § 1063, a plaintiff must demonstrate “an interest falling within the zone of interests protected by the statute and … proximate causation.” Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4 (Fed. Cir. 2020), cert. denied, ___ U.S. ___ (2021), (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067-70 (2014)).24 Stated another way, a plaintiff is entitled to bring a statutory cause of action by demonstrating a real interest in the proceeding and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, 22 Campbell Decl., 43 TTABVUE 4, ¶ 10; De la Cruz Decl., 44 TTABVUE 3, ¶ 5; Walker Decl., 46 TTABVUE 3, ¶ 6; Wells Decl., 47 TTABVUE 2-3, ¶ 4. 23 Conway Decl. I, 40 TTABVUE 5 ¶ 17; Boyd Decl., 42 TTABVUE 5, ¶ 15; Campbell Decl., 43 TTABVUE 4-5, ¶ 10; De la Cruz Decl., 44 TTABVUE 3, ¶ 5; Walker Decl., 46 TTABVUE 3, ¶ 6; Wells Decl., 47 TTABVUE 2-3, ¶ 4. 24 Our decisions have previously analyzed the requirements of Trademark Act Sections 13 and 14, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this inquiry as entitlement to a statutory cause of action. Despite the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting Trademark Act Sections 13 and 14 remain applicable. Opposition No. 91242958 - 13 - LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020); see also Empresa Cubana, 111 USPQ2d at 1062. According to the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”), there is “no meaningful, substantive difference between the analytical frameworks expressed in Lexmark and Empresa Cubana.” Corcamore, 2020 USPQ2d 11277 at *4. Thus, “a party that demonstrates a real interest in [opposing or] cancelling a trademark [registration] under [Trademark Act Sections 13-14, 15 U.S.C.] §[§] 106[3-]4 has demonstrated an interest falling within the zone of interests protected by [the Trademark Act] .… Similarly, a party that demonstrates a reasonable belief of damage by the registration of a trademark demonstrates proximate causation within the context of §[§] 106[3-]4.” Corcamore, 2020 USPQ2d 11277 at *7. Opposer’s allege that: (1) they filed their ’662, ’670, and ’668 Applications for the MASONIC RIDERS M.C., Original Logo and New Logo Marks; (2) the mark shown in Applicant’s ’804 Application is confusingly similar or nearly identical to the marks shown in Opposer’s Applications; (3) the charitable services recited in Applicant’s ’804 Application overlap the charitable services recited in Opposer’s Applications; (4) Opposers have prior use of their marks over the mark shown and services identified in Applicant’s Application; and (5) Opposers believe they are being and will be damaged by registration of Applicant’s mark for the services identified in his Application in view of a likelihood of confusion.25 In their Trial Brief, Opposers more 25 Notice of Opposition, 1 TTABVUE 5, 8-14, 16-20, preamble and ¶¶ 9-10, 12-14, 16-18, 20-23, 25-27, 34-51 Opposition No. 91242958 - 14 - specifically allege concern that their Applications may be refused based on a likelihood of confusion with Applicant’s pending ’804 Application.26 An opposer may demonstrate a real interest and reasonable belief of damage where the opposer has filed a trademark application that is refused registration, or potentially refused registration, based on a likelihood of confusion with a prior filed or registered mark. See Australian Therapeutic, 2020 USPQ2d 10837, at *4; see also, Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111, 1112 (TTAB 2010) (citing Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1959 (TTAB 2008)). In the present case, Opposer has not alleged that Applicant’s Application was cited as a bar to the registration of Opposer’s Marks, nor has Opposer made of record the USPTO Office Actions showing this. However, in Toufigh v. Persona Parfum Inc., 95 USPQ2d 1872 (TTAB 2010), the Board made it clear it is not necessary for an applicant’s application to be cited as a potential bar to the registration of an opposer’s mark for the opposer to demonstrate its entitlement to bring and maintain a statutory cause of action: We regard the desire for a registration with its attendant statutory advantages as a legitimate commercial interest. Further, we consider that petitioner has shown a reasonable basis for a belief that he is damaged by the registration sought to be cancelled by virtue of the fact that both parties’ marks are identical, and their goods are at least arguably related. Toufigh, 95 USPQ2d 1872, 1874 (TTAB 2010), quoting Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). 26 Opposer’s Brief, 55 TTABVUE 20-21. Opposition No. 91242958 - 15 - Here, the arguable similarities in the marks and the arguable relatedness of the services are sufficient for us to find that Opposers have met the statutory requirement of establishing a reasonable belief of damage by showing that they possess a real interest in the proceeding, and are not intermeddlers. Spirits Int’l, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1548 (TTAB 2011). Opposers therefore have adequately demonstrated their entitlement to bring and maintain their Trademark Act Section 2(d) claim. Since Opposers have proven their entitlement to assert at least one properly pleaded ground, they have established entitlement to pursue any other legally sufficient ground. Int’l Dairy Foods Assn. v. Interprofession du Gruyère, 2020 USPQ2d 10892, at *9 (TTAB 2020) (citing Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012) (“[O]nce an opposer meets the requirements for standing, it can rely on any of the statutory grounds for opposition set forth in … [the Trademark Act].”)). V. Whether the Challenged Application is Void Ab Initio on the Ground that Applicant did not have a Bona Fide Intent to Use the Mark in Commerce at the Time his Application was Filed Opposers argue that Applicant did not have a right to file his intent-to-use Application because he lacked a bona fide intent to use the mark in commerce as of the filing date of his application. Trademark Act Section 1(b), 15 U.S.C. § 1051(b), which concerns intent-to-use applications, 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 Opposition No. 91242958 - 16 - Trademark Office an application and a verified statement, in such form as may be prescribed by the Director. As the Board has explained: “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. … 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: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880 *5 (TTAB 2019). That is, 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 a bona fide intent to use. Hole In 1 Drinks, 2020 USPQ2d 10020, at *6. “Opposer[s have] … 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].” Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008). If Opposers satisfy this initial burden, the burden of production shifts to Applicant to offer additional evidence showing his bona fide intent to use its mark in commerce. Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1727 (TTAB 2010). Opposition No. 91242958 - 17 - “The absence of any documentary evidence on the part of an applicant regarding … [his bona fide] intent constitutes objective proof ... that the applicant lacks [such an] intention to use … [his] mark in commerce.” Research in Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1930 (TTAB 2009) (citing Commodore Elecs. Ltd. v. CBM K. K., 26 USPQ2d 1503, 1507 (TTAB 1993)). The absence of documentary evidence, however, must be considered in the context of the evidentiary record as a whole. M.Z. Berger, 114 USPQ2d at 1898 (the determination of objective intent is made on a case- by-case basis considering totality of circumstances). If Opposers meet their burden, Applicant may “elect to try to rebut the opposer[s’] prima facie case by offering additional evidence concerning the factual circumstances bearing upon his intent to use his mark in commerce.” Commodore Elecs., 26 USPQ2d at 1507 n.11. “[The] circumstances must indicate the applicant’s intent to use the mark that are ‘firm’ and ‘demonstrable.’” Société des Produits Nestlé S.A. v. Taboada, 2020 USPQ2d 10893, at *11 (TTAB 2020) (citing M.Z. Berger, 114 USPQ2d at 1898). However, Applicant’s “mere statement of subjective intention, without more, would be insufficient to establish applicant’s bona fide intention to use the mark in commerce.” Lane Ltd. v. Jackson Int’l Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994). Further, as the Board has held in the past, the mere act of filing an intent-to-use application is insufficient to establish an applicant’s bona fide intention to use its mark in commerce for the identified goods: If the filing and prosecution of a trademark application constituted a bona fide intent to use a mark, then in effect, lack of a bona fide intent to use would never be a ground for opposition or cancellation, since an Opposition No. 91242958 - 18 - inter partes proceeding can only be brought if the defendant has filed an application. Research in Motion, 92 USPQ2d at 1931. Opposers made of record a wealth of testimony and evidence showing how (on vests, t-shirts, sweatshirts and advertising materials), and under what circumstances (at social events, motorcycle runs and charitable events) their marks have been used by MRMC’s members.27 Opposers also demonstrated how they control the use of their marks (including cessation in the use of marks upon a member’s death or leaving the MRMC), that is, their Colors and constituent portions thereof - including Opposer’s word mark, Original Logo and New Logo - by the enforcement of MRMC’s Bylaws.28 Applicant provided none of this type of evidence, or at the very least evidence demonstrating how he would control use of his applied-for mark by others. Opposers and MRMC’s Officers assert that Applicant does not have the requisite bona fide intent to use the mark in commerce as of the filing date of his intent-to-use application, because as of that time: (1) Applicant knew the mark was previously owned by Opposers and used by Opposers through MRMC; (2) any use of the mark 27 Williams Decl., 38 TTABVUE 4-6, 39-49, ¶¶ 14-23, Exhs. 5-9; Conway Decl. I, 40 TTABVUE 11, ¶¶ 46-48; Conway Decl. II, 41 TTABVUE 2-6, 9-44, ¶¶ 3-39, Exhs. 1-39; Boyd Decl., 42 TTABVUE 6, 10, ¶¶ 21, 41-44; Campbell Decl., 43 TTABVUE 6, ¶ 20; De la Cruz Decl., 44 TTABVUE 4-5, ¶¶ 11-22; Morgan Decl., 45 TTABVUE 3-5, 37-50, ¶¶ 10-20, Exhs. 5-9; Walker Decl., 46 TTABVUE 3-5, 30-35, ¶¶ 8-14, Exh. 2-4; Wells Decl., 47 TTABVUE 3-5, ¶¶ 9-17. 28 Williams Decl., 38 TTABVUE 3, 4, 6-7, 10-38, ¶¶ 9-13, 27, Exhs. 1-4; Dull Decl., 38 TTABVUE 54-55, 57-65, ¶¶ 6-9, Exhs. A-C; Conway Decl. I, 40 TTABVUE 2, 5-10, 19-68, ¶¶ 2, 4, 17, 21-24, 27, 30-39, 42, Exhs. 1-3; Boyd Decl., 42 TTABVUE 3-8, 11, ¶¶ 11-15, 18-20, 23-24, 27-36, 50; Campbell Decl., 43 TTABVUE 5-9, ¶¶ 12-14, 17-18, 22-23, 26-36, 40; De la Cruz Decl., 44 TTABVUE 3-4, 34-39, ¶¶ 5-10, Exhs. 2-4; Morgan Decl., 45 TTABVUE 2-3, 31-36, ¶¶ 4, 6-9, Exhs. 2-4; Walker Decl., 46 TTABVUE 3, ¶¶ 6-7; Wells Decl., 47 TTABVUE 2-3, 31-36, ¶¶ 4-8, Exhs. 2-4. Opposition No. 91242958 - 19 - made by Applicant was as a former member of MRMC, which usage rights ceased once Applicant was expelled (particularly acknowledged by Applicant when he signed his MRMC membership application in 2009); (3) Applicant had no demonstrable plans as to how the mark would be used; and (6) Applicant made no documents of record upon which he could rely to demonstrate his bona fide intent.29 In the face of Opposer’s contentions, Applicant and Mr. Giles devote significant portions of their testimony declarations to criticizing how Opposers manage the MRMC.30 Neither the USPTO nor this Board have jurisdiction over any claims of club mismanagement or monetary theft. McDermott v. San Francisco Women’s Motorcycle Contingent, 81 USPQ2d 1212, 1216 (TTAB 2006) (“[T]he Board’s jurisdiction is limited to determining whether trademark registrations should issue or whether registrations should be maintained; it does not have authority to determine whether a party has engaged in criminal or civil wrongdoings.”), aff’d mem., 240 F. App’x 865 (Fed. Cir. 2007), cert. denied, 552 U.S. 1109 (2008). What we do find in Applicant’s and Mr. Giles’ Testimony Declarations are admissions that, in the months before, at the time, and during the period shortly after Applicant filed his service mark application in August 2017: (1) Applicant developed 29 Williams Decl., 38 TTABVUE 8-9, ¶¶ 38-39; Conway Decl. I, 40 TTABVUE 15, 95-96, ¶¶ 66-68, Exh. 9; Boyd Decl., 42 TTABVUE 13-14, ¶¶ 61-63; Campbell Decl., 43 TTABVUE 11-12, ¶¶ 53-56; De la Cruz Decl., 44 TTABVUE 7-8, ¶¶ 29-31; Morgan Decl., 45 TTABVUE 5; ¶¶ 21-23; Walker Decl., 46 TTABVUE 5, ¶¶ 15-17; Wells Decl., 47 TTABVUE, 5, ¶¶ 18-20; Opposer’s Brief, 55 TTABVUE 31-33; Opposers’ Rebuttal Brief, 6-7. 30 Jones Decl., 49 TTABVUE 2-5, 7-8, ¶¶ 3, 5, 7-10, 12-14, 25, 26, 30; Giles Decl., 50 TTABVUE 3-7, ¶¶ 5, 7-10, 12-14, 18, 23. Opposition No. 91242958 - 20 - a new business plan for MRMC;31 (2) Applicant filed his service mark application for the benefit of MRMC; (3) Applicant was writing new bylaws for MRMC; and (4) Applicant intended to add Messrs. Giles, Boyd, Conway and Campbell to his service mark application.32 In fact, Applicant and Mr. Giles emphatically deny that their purpose was to start a new motorcycle club using the applied for name and logo.33 Applicant’s other witness, Mr. Robinson, confirmed these facts as testified to by Applicant and Mr. Giles.34 From these concessions, we find that Applicant did not file his service mark application with a bona fide intent to use the mark on his behalf, or for the purpose of starting an independent charitable organization performing the services identified in his application. Even without Applicant’s admissions confirmed by the testimony of his witnesses, we further find a complete absence of testimonial or documentary evidence that would support the bona fides of Applicant’s intent to use the mark in commerce - such as, for example (as Opposers have submitted): intended usage on vests, t-shirts, sweatshirts and advertising materials, the planned display of the mark at social 31 To be clear, we interpret Jones’ and Giles’ testimony as claiming that Jones’ efforts in or about August 2017 were on behalf of MRMC - Opposer’s organization - not on behalf of a separate organization over which Jones would himself exercise ownership, dominion and control. 32 Jones Decl., 49 TTABVUE 5-7, ¶¶ 17-19, 22-24; Giles Decl., 50 TTABVUE 6-7, ¶¶ 16-18, 21. 33 Jones Decl., 49 TTABVUE 5, 7, ¶¶ 18, 27; Giles Decl., 50 TTABVUE 6, 8, ¶¶ 17, 24. 34 Robinson Decl., 51 TTABVUE 3, 5-6, ¶¶ 15-16, 26; Robinson Depo., 54 TTABVUE 41-42. Opposition No. 91242958 - 21 - events, motorcycle runs and charitable events, and the intended enforcement regarding the use of the mark by way of rules, mandates or bylaws. We therefore find that Applicant did not have a bona fide intent to use the word-and-design mark shown in his service mark Application at the time he filed it. The Application is therefore void. Decision: The Opposition to Application Serial No. 87576804 is sustained.