Justin Vineyards & Winery LLCv.Fort Myers Brewing Company, LLC

Trademark Trial and Appeal Board

Oct 9, 2020

91249915 (T.T.A.B. Oct. 9, 2020)

Bukrinsky/mbm
October 9, 2020

Opposition No. 91249915

Justin Vineyards & Winery LLC

v.
Fort Myers Brewing Company, LLC

Before Cataldo, Kuczma, and Larkin,
Administrative Trademark Judges.

By the Board:
This proceeding now comes up for consideration of Opposer’s motion (filed June
2, 2020) for summary judgment. The motion is fully briefed.
Background
Applicant seeks to register the standard character mark HOPTUSE in Class 32
for “beer.” Applicant’s application Serial No. 88310535 was filed on February 21,
2019, based upon its assertion of a bona fide intent-to-use pursuant to Section 1(b) of
the Trademark Act, 15 U.S.C. § 1051(b).
On August 1, 2019, Opposer filed a notice of opposition asserting likelihood of
confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), as the sole
ground for opposition. In support of its entitlement to bring a statutory cause of action
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91249915
2

and claim, Opposer pleaded ownership of Registration No. 2829699, for the standard
character mark OBTUSE registered in Class 33 for “wine.”1
On May 7, 2020, Opposer moved for leave to amend its notice of opposition to add
a claim that when Applicant filed Application Serial No. 88310535, it had no bona
fide intention to use the mark in commerce. 6 TTABVUE. The Board granted
Opposer’s motion on May 29, 2020. 9 TTABVUE. In its answer to the amended notice
of opposition, Applicant denied the salient allegations therein.2
On June 2, 2020, Opposer filed a timely motion for summary judgment on its claim
of no bona fide intention to use the applied-for mark. 10 TTABVUE.

1 The underlying application for registration was filed on May 30, 2003, and the registration
issued on April 6, 2004 pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
Opposer alleges November 1994 as both the date of first use and first use in commerce.
2 Applicant asserted numerous “affirmative defenses” in its answer to the amended notice of
opposition. 7 TTABVUE 14. None of the allegations constitute properly pleaded affirmative
defenses. Applicant’s first defense is “nothing more” than a restatement of a denial of
Opposer’s likelihood of confusion claim. See Order of Sons of Italy in Am. v. Profumi Fratelli,
36 USPQ2d 1221, 1223 (TTAB 1995). Applicant’s second affirmative defense appears to argue
that Opposer’s claims are subject to statutory damages caps, which are not relevant to inter
partes proceedings, because the Board does not award monetary damages or attorneys’ fees.
See Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1591 (TTAB 2011).
Opposer’s assertions of unclean hands, acquiescence, and estoppel are nothing more than
bald, conclusory allegations with no factual support and are therefore insufficient to plead
the defenses. See IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1953
(TTAB 2009). Moreover, the equitable defenses of laches and acquiescence are generally
unavailable in opposition proceedings. See Nat'l Cable Television Ass'n Inc. v. Am. Cinema
Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991). Applicant also attempts
to reserve the right to assert additional affirmative defenses, which is improper because it
does not provide fair notice to the plaintiff. Finally, Applicant has pleaded that Opposer is
not likely to be damaged by registration of Applicant’s mark. To the extent Applicant is
asserting that Opposer does not have a reasonable belief of harm, this is not an affirmative
defense. Rather, a plaintiff’s entitlement to bring a statutory cause of action is an element of
Opposer’s claim that must be affirmatively proved. See Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); Blackhorse v. Pro Football Inc., 98 USPQ2d
1633, 1637 (TTAB 2011). Accordingly, each of the affirmative defenses is stricken.
Opposition No. 91249915
3

Opposer’s Motion for Summary Judgment
Opposer moves for summary judgment on its claim that Applicant had no bona
fide intent to use the mark at the time it filed its application. We have considered the
parties’ briefs and materials submitted in connection with the motion, but address
the record only to the extent necessary to set forth our analysis and findings, and do
not repeat or address all of the parties’ arguments or evidence. Guess? IP Holder LP
v. Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015). For purposes of this order,
we presume the parties’ familiarity with the arguments and materials submitted in
connection with the subject motion.
Legal Standard
Summary judgment is an appropriate method of disposing of cases in which there
is no genuine dispute with respect to any material fact, thus allowing the case to be
resolved as a matter of law. See Fed. R. Civ. P. 56(a). A party moving for summary
judgment has the burden of demonstrating the absence of any genuine dispute as to
a material fact, and that it is entitled to judgment as a matter of law. See Celotex
Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting
Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987). A factual dispute is
genuine if, on the evidence of record, a reasonable fact finder could resolve the matter
in favor of the non-moving party. See Opryland USA Inc. v. Great Am. Music Show
Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v.
Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
Opposition No. 91249915
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Additionally, the evidence of record must be viewed in the light most favorable to
the non-moving party, and all justifiable inferences must be drawn from the
undisputed facts in favor of the non-moving party. See Lloyd’s Food Prods. Inc. v. Eli’s
Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at
1472. We may not resolve genuine disputes as to material facts and, based thereon,
decide the merits of the proceeding. Rather, we may only ascertain whether any
material fact is genuinely disputed. See Lloyd’s Food Prods., 25 USPQ2d at 2029;
Olde Tyme Foods, 22 USPQ2d at 1542; Meyers v. Brooks Shoe Inc., 912 F.2d 1459, 16
USPQ2d 1055, 1056 (Fed. Cir. 1990) (“If there is a real dispute about a material fact
or factual inference, summary judgment is inappropriate; the factual dispute should
be reserved for trial.”).
Decision
In order for Opposer to prevail on its motion, it must establish that there is no
genuine dispute of material fact that it is entitled to maintain this opposition
proceeding, and that Applicant did not have a bona fide intent to use the mark
HOPTUSE on beer as of February 21, 2019, the filing date of the involved
application.
Entitlement to Bring a Statutory Cause of Action3
To establish entitlement to bring a statutory cause of action under Section 13 or
14 of the Trademark Act, a plaintiff must demonstrate a real interest in the

3 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Opposer has done so as
well. 10 TTABVUE 8. We now refer to this inquiry as entitlement to bring a statutory cause
of action. Despite the change in nomenclature, our prior decisions and those of the Federal
Opposition No. 91249915
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proceeding and a reasonable belief of damage. Australian Therapeutic Supplies Pty.
Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020);
see also Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d
1058 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1727 (Fed. Cir. 2012); Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023, 1025 (Fed. Cir. 1999).
Opposer has submitted a copy of its pleaded Registration No. 2829699 obtained
from the USPTO’s Trademark Status & Document Retrieval (TSDR) electronic
database records showing the current status and title of its pleaded registration.
See Trademark Rule 2.122(d). In view thereof, we find no genuine dispute of
material fact that Opposer is entitled to bring a statutory cause of action. See
Australian Therapeutic Supplies, 2020 USPQ2d 10837 at *3; Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
Lack of a Bona Fide Intent
To prevail on its claim of lack of bona fide intent to use, Opposer must establish
that there is no genuine dispute of material fact that Applicant did not have a bona
fide intent to use its mark on the goods identified in the application as of the filing
date of the application under Section 1(b) of the Trademark Act. Section 1(b) of the
Trademark Act provides:

Circuit interpreting Sections 13 and 14 remain equally applicable. We further note that, in
Lexmark Int’l, Inc. v. Statis Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061 (2014),
the Supreme Court stated that that the question of whether a party is entitled to bring a
statutory cause of action is determined “using traditional tools of statutory interpretation”
and is not properly described as a question of “prudential standing.” 109 USPQ2d at 2067.
Opposition No. 91249915
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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).
Generally, the factual question of intent is unsuited to disposition on summary
judgment. See Copeland’s Enters., Inc. v. CNV, Inc., 945 F.2d 1563, 20 USPQ2d 1295,
1299 (Fed. Cir. 1991). However, the Board has held that the absence of any
documentary evidence regarding an applicant’s bona fide intention to use a mark in
commerce is sufficient to prove that an applicant lacks such intention, unless other
facts are presented that adequately explain or outweigh the applicant’s failure to
provide such documentary evidence. See Commodore Elecs. Ltd. v. CBM Kabushiki
Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993), cited in Honda Motor Co., Ltd. v.
Friedrich Winkelmann, 90 USPQ2d 1660, 1662 (TTAB 2009). See also Bos. Red Sox
Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1586 (TTAB 2008).
Opposer, as the moving party, bears the initial burden of demonstrating that
Applicant lacked a bona fide intent to use the mark in commerce on beer, such as by
demonstrating the absence of any documentary evidence regarding Applicant’s bona
fide intent. Commodore, 26 USPQ2d at 1507. If Opposer carries this burden, the
burden shifts to Applicant to come forward with evidence that explains or outweighs
the lack of documentary evidence. Id. at 1507 n.11. 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). Ultimately, whether
Opposition No. 91249915
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Applicant has a bona fide intention to use the mark in commerce is an objective
determination based on the totality of the circumstances. See M.Z. Berger & Co. v.
Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892, 1898 (Fed. Cir. 2015); Swiss Grill Ltd.
v. Wolf Steel Ltd., 115 USPQ2d 2001, 2008 (TTAB 2015). The evidentiary bar for
showing bona fide intent to use is not high, but more is required than “a mere
subjective belief.” On a motion for summary judgment, the objective evidence must
indicate that there is a genuine dispute of material fact regarding whether applicant
had an intention to use the mark that is “firm” and “demonstrable.” See M.Z. Berger,
114 USPQ2d at 1897–98, Swiss Grill, 115 USPQ2d at 2008.
Opposer submitted evidence with its opening brief showing that Applicant has no
documents or other objective proof that it had a bona fide intent to use the mark
HOPTUSE in commerce as of February 19, 2019, the filing date of the involved
application. Applicant’s responses to Opposer’s document requests stated that it has
no responsive documents regarding trade or marketing channels, target consumers,
production, marketing, or sales plans, advertisements, packaging, or labels for goods
bearing the involved mark. 10 TTABVUE 33-37. Applicant’s document production
contained no documents bearing the involved mark, other than documents related to
the filing of the application. 10 TTABVUE 54-98. Applicant confirmed to Opposer
that it had produced all documents demonstrating its intent to use the applied-for
mark, and that as of April 2020, it had taken no steps to use the mark other than
filing the application. 10 TTABVUE 46, 100. This evidence is sufficient to carry
Opposer’s initial burden, thereby shifting the burden to Applicant to demonstrate
Opposition No. 91249915
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the existence of a genuine dispute of material fact as to its intention notwithstanding
the absence of documentary evidence. See Commodore, 26 USPQ2d at 1507.
With its response to Opposer’s motion for summary judgment, Applicant submits
the June 30, 2020 declaration of one of its co-owners, Robert Whyte, who states that
he “came up with ‘Hoptuse’ as an idea for the name of an IPA-style beer back in 2016.”
12 TTABVUE 21. Mr. Whyte explains that in Applicant’s industry “it is common
practice to await to assign a name to [types of beer] once they are ready to be offered
to the public.” Id. Mr. Whyte further states that Applicant planned to release a beer
under the HOPTUSE mark at Applicant’s annual Summerfest on June 29, 2020, but
was unable to do so due to Florida’s Emergency Order suspending on-premises alcohol
sales. Id. On June 19, 2020, Applicant served supplemental interrogatory responses
on Opposer stating that Applicant planned to release HOPTUSE beer on June 29,
2020 at Summerfest. 12 TTABVUE 10.
Mr. Whyte’s statement that Applicant “intend[s] to use this name for one of
[Applicant’s] upcoming IPA-style offerings” is vague as to when Applicant had the
claimed intent to use the mark, and provides no reasonable basis to infer that
Applicant had a firm intent to use the mark at the time it filed its application.4
M.Z. Berger, 114 USPQ2d at 1899 (applicant must have a firm intent to use the mark
at the time it filed its application); Res. in Motion Ltd. v. NBOR Corp., 92 USPQ2d

4 The fact that Applicant is a brewery and has the capacity to brew beer does not, standing
alone, establish its intent to use the HOPTUSE mark in connection with beer. See M.Z.
Berger, 114 USPQ2d at 1899.
Opposition No. 91249915
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1926 (TTAB 2009) (applicant’s CEO’s testimony that he believed the applied-for mark
to be good for future use did not establish bona fide intent to use).
Nor does Mr. Whyte’s declaration explain Applicant’s lack of documents showing
bona fide intent contemporaneous with the filing of its application. Applicant filed its
application on February 19, 2019, and restrictions due to COVID-19 did not arise
until over a year later, in the spring of 2020. Applicant does not explain why, prior to
the time the COVID-19 restrictions arose, it had taken no steps toward using the
mark HOPTUSE for beer and generated no documents demonstrating its intent to
use the mark. See A&H Sportswear Co. v. William W. Yedor, 2019 USPQ2d 111513,
*6 (TTAB 2019) (statement of intent to use mark, unsupported by evidence of any
activities undertaken to actually commence such use, insufficient to stave off
summary judgment).
Nor does Applicant introduce any documents that corroborate its intention to
commence using the HOPTUSE mark in the spring of 2020. Applicant submitted two
previously-unproduced pieces of documentary evidence with its opposition brief: a
recipe for “Hoptuse New England IPA” and a screen shot of a digital list of
“Reminders” that includes the note “Up to’s HOPTUS m Sc E.” 12 TTABVUE 12-14.
The recipe is undated and Applicant does not state when it was created.5 Id. at 12-
13. The digital note, which Mr. Whyte describes as a “note on [his] phone to remind
[him] to use the name,” is dated October 9, 2016, approximately two and a half years

5 Mr. Whyte’s declaration makes no reference to the recipe and the document is otherwise not
authenticated. 12 TTABVUE 19-23.
Opposition No. 91249915
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before the filing date of Applicant’s application. Id. at 14. Additionally, the note
references the mark HOPTUS rather than HOPTUSE, and is on its face
incomprehensible. Id. Neither document is contemporaneous with the filing of the
application and, accordingly, neither demonstrates a bona fide intent to use the mark
at the time the application was filed.6 See M.Z. Berger, 114 USPQ2d at 1897–98,
A&H Sportswear, 2019 USPQ2d 111513, at *6; Swiss Grill, 115 USPQ2d at 2008.
Further, Applicant’s responses to Opposer’s discovery requests, served on April
20, 2020, do not corroborate its statement that it intended to use the HOPTUSE mark
in Spring 2020. In those responses, Applicant stated that it had not made any goods
bearing the applied-for mark, and had created no promotional materials, containers,
or labels for goods bearing the mark. In response to Opposer’s interrogatory asking
Applicant to “identify all steps you have taken to use the mark in commerce,”
Applicant identified only the filing of its trademark application. 10 TTABVUE 46,
Interrog. No. 10. These responses are at odds with Applicant’s stated intention to use
the mark in “Spring 2020.” 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. Res. in Motion, 92 USPQ2d at 1931. If Applicant
intended to release a beer under the HOPTUSE mark in the spring or even the
summer of 2020, it necessarily would have begun preparations to do so prior to April
20, 2020, for example by brewing the beer, creating promotional materials or signage,

6 Applicant does not explain why neither document was produced prior to summary
judgment.
Opposition No. 91249915
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and obtaining any necessary regulatory approval for its labels. Its failure to do so
belies its stated intention to release a beer under the HOPTUSE mark in either
Spring 2020 or on June 29, 2020.7
Based on the submissions of the parties, we find that Opposer has satisfied its
initial burden of showing the absence of any documentary evidence regarding
Applicant’s bona fide intention to use the mark, and that Applicant has failed to come
forward with evidence that would adequately explain or outweigh its failure to
provide such documentary evidence. See M.Z. Berger, 108 USPQ2d at 1471.
In view of the foregoing, we find that Opposer has met its burden in establishing
its entitlement to a statutory cause of action and that there is no genuine dispute of
material fact as to Applicant’s lack of bona fide intent to use its mark in commerce
for beer as of the filing date of the application. Opposer’s motion for summary
judgment on its claim of lack of bona fide intent to use is granted. Judgment is
entered against Applicant, the opposition is sustained, and registration of Applicant’s
mark HOPTUSE in application Serial No. 88310535 is refused.8

7 Indeed, Mr. Whyte’s declaration states that Applicant planned to release its HOPTUSE
beer on June 29, 2020, but a mere three days prior, on June 26, 2020, the Florida
Department of Business and Professional Regulation issued an emergency order suspending
on-premises consumption of alcohol and Applicant “had to postpone” its release of its
HOPTUSE beer. 12 TTABVUE 21. Applicant has provided no explanation for its lack of
documentary evidence supporting its planned use that was purportedly cancelled three days
prior to the release date. Nor does Mr. Whyte provide any details regarding the necessary
steps taken for the planned release.
8 In view of our decision on the ground of lack of bona fide intent-to-use, we need not, and do
not, consider Opposer’s likelihood of confusion claim.