This Opinion Is Not a
Precedent of the TTAB

Hearing: Mailed:
January 15, 2019 June 10, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Los Santos, LLC
v.
Johnny D. Gabriel and Rosalie Gabriel
_____

Opposition No. 91223574
_____

Miles D. Scully, Susan B. Meyer, Michael D. Kanach, and Patrick J. Mulkern of
Gordon Rees Scully Masukhani, LLP, for Los Santos, LLC.

Miguel Villarreal, Jr. and Brandon T. Cook of Gunn Lee & Cave, P.C., and Erik M.
Pelton of Erik M. Pelton & Associates, PLLC, for Johnny D. Gabriel and Rosalie
Gabriel.
_____

Before Wellington, Hightower, and Lynch,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:

Johnny D. Gabriel and Rosalie Gabriel (“Applicants”) seek registration on the

Principal Register of the mark MEZQUILA in standard characters for “alcoholic

beverages except beers” in International Class 33.1

1 Application Serial No. 86518323 was filed on January 29, 2015, based on Applicants’
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Opposition No. 91223574

Los Santos, LLC (“Opposer”) opposes registration on the following grounds:

• Lack of bona fide intent to use the mark in commerce;

• MEZQUILA is generic or, alternatively, merely descriptive without
acquired distinctiveness;

• MEZQUILA is geographically deceptively misdescriptive; and

• MEZQUILA is deceptively misdescriptive.

The proceeding is fully briefed, and an oral hearing was held before the Board on

January 15, 2019. We sustain the opposition based on the ground that Applicants

lacked a bona fide intent to use the mark in commerce at the time of filing their

application under Trademark Act Section 1(b).

I. Opposer’s Objections

Opposer’s objection that Applicants’ brief is overlength due to excessive footnote

use is overruled. Opposer also objects to most of the documents proffered by

Applicants and to portions of the testimony declaration of Applicants’ witness Johnny

D. Gabriel. Rather than rule on each objection, we will address objections only to

evidence material to our decision.

II. Record

The record consists of the pleadings and, without any action by the parties, the

file of the involved application. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).

Subject to the discussion in the preceding section concerning Opposer’s objections,

the record also comprises the evidence summarized below.

A. Opposer’s Evidence

Opposer submitted the following evidence by notice of reliance:

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Opposition No. 91223574

• Documents relating to Applicants’ trademark applications in Mexico2 and
the U.S. Patent and Trademark Office (USPTO) (Exhibit A, 27 TTABVUE
12-214);

• Documents concerning Opposer’s and third-party trademark applications
in Mexico and the USPTO (Exhibit B, 27 TTABVUE 215-75);

• Printed publications and Internet printouts (Exhibits C-D, 27 TTABVUE
276-28 TTABVUE 218);

• Excerpts from the discovery deposition of Applicant Johnny D. Gabriel
(“Gabriel Discovery Test.”), with exhibits (Exhibit E, 28 TTABVUE 219-
416); and

• Applicants’ interrogatory responses and admissions3 (Exhibit F, 28
TTABVUE 417-42).

Opposer also submitted oral trial testimony of the following witnesses, with

exhibits:

• Applicant Johnny D. Gabriel (“Johnny Gabriel Trial Test.”), taken in
January and November 2017 (37, 38 [confidential] and 51 TTABVUE);

• Applicant Rosalie Gabriel (“Rosalie Gabriel Test.”) (39 and 40 [confidential]
TTABVUE);

• Alejandro Valdes, a former importer and distributor of alcoholic beverages
who did business with Applicants (“Valdes Test.”) (41 TTABVUE);

• Amar Ali, owner of A to Z Wholesale Wine and Spirits, LLC, an alcoholic
beverage importer and distributor (42 and 43 [confidential] TTABVUE);

• Raul Romero Ornelas of Compania Tequilera de Arandas (“CTA”), an
alcoholic beverage vendor who does business with Applicants (“Romero
Test.”) (44 and 45 [confidential] TTABVUE);

• Kimberly Frost, attorney for Azar Distilling, LLC (46 TTABVUE);

2Foreign trademark applications and registrations are irrelevant to the issues before us. See
Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612 (TTAB 1991).
3 Opposer submitted all of Applicants’ responses to Opposer’s requests for admission, but
many are denials, which cannot be submitted by notice of reliance. Trademark Rule
2.120(k)(3), 37 C.F.R. § 2.120(k)(3); see also, e.g., Ayoub, Inc. v. ACS Ayoub Carpet Serv., 118
USPQ2d 1392, 1395 n.9 (TTAB 2016). We have considered only Applicants’ admissions.

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Opposition No. 91223574

• Mike Paul, a former attorney for Applicants (47 TTABVUE); and

• Richard “Trey” Azar, III, owner of Azar Distilling, LLC, which sells vodka
and gin to Applicants for retail sale through a distributor (“Azar Test.”) (49
and 50 [confidential] TTABVUE).

B. Applicants’ Evidence

Applicants submitted the following evidence by notice of reliance:

• Printouts of third-party trademark applications, registrations, and related
documents (Exhibits 1-2, 34 TTABVUE 15-155);

• File histories of Opposer’s trademark applications (Exhibit 3, 34 TTABVUE
156-863);

• A copy of Registration No. 5359467 for the mark BETTER THAN
PERFECT for “retail liquor store services” in Class 35 listing Applicants as
owners (Exhibit 4, 34 TTABVUE 864-66);

• Internet printouts (Exhibit 5, 34 TTABVUE 867-89); and

• Additional excerpts from the discovery deposition of Applicant Johnny D.
Gabriel (Exhibit 6, 34 TTABVUE 890-901).

Applicants also submitted the following testimony, with exhibits:

• An oral deposition of Marco Monroy, a member of Opposer (“Monroy Test.”)
(52 and 53 [confidential] TTABVUE); and

• The testimony declaration of Applicant Johnny D. Gabriel (“Gabriel Dec.”)
(35 and 36 [confidential] TTABVUE).

As noted above, some of the evidence proffered by the parties has been designated

as confidential and filed under seal. We will endeavor to discuss only in general terms

any relevant evidence that has been submitted under seal and not disclosed by the

parties in the unredacted portions of their public briefs.

4
Opposition No. 91223574

III. The Parties

Since 1980, Applicants Johnny D. Gabriel and Rosalie Gabriel have been married

and business associates.4 Mr. Gabriel has been involved in the alcoholic beverage

industry since 1959.5 The couple owned as many as 50 retail liquor stores in San

Antonio, Texas, and the surrounding areas.6 In 2004, ownership of most of the

business transferred to the couple’s four children, and the Gabriels essentially

retired.7

Opposer Los Santos, LLC, was formed with the intention of selling agave-distilled

products.8 It has four individual members: singers Sammy Hagar and Adam Levine,

along with Jack Daniels and Marco Monroy.9

IV. Standing

Standing is a threshold issue that must be proven by the plaintiff 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); see also, e.g., Bell’s Brewery, Inc. v.

Innovation Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017). Standing may be

established through evidence that an opposer’s pleaded trademark application has

been provisionally refused due to a likelihood of confusion with the prior pending

4 Applicants’ Response to Opposer’s Interrogatory No. 33, 28 TTABVUE 431; Gabriel
Discovery Test. at 17:18-21, 28 TTABVUE 230.
5 Gabriel Discovery Test. at 11:3-7, 28 TTABVUE 224.
6 Id. at 13:2-17, 28 TTABVUE 226.
7 Id. at 11:8-12:22, 17:3-14, 28 TTABVUE 224-25, 230.
8 Monroy Test. at 6:24-7:5, 52 TTABVUE 7-8.
9 Id. at 7:6-22, 52 TTABVUE 8.

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Opposition No. 91223574

mark in the subject application. E.g., Fiat Grp. Automobiles S.p.A. v. ISM, Inc., 94

USPQ2d 1111, 1112 (TTAB 2010); Life Zone Inc. v. Middleman Grp., Inc., 87 USPQ2d

1953, 1959 (TTAB 2008).

Applicants submitted printouts from the USPTO Trademark Status & Document

Retrieval (TSDR) database showing that Opposer owns an application to register the

mark SANTO MEZQUILA for “alcoholic beverages except beer, namely, a beverage

which includes Mezcal and Tequila” in International Class 33.10 Opposer’s application

was filed on an intent-to-use basis on April 24, 2015, approximately three months

after Applicants filed the subject application for MEZQUILA on January 29, 2015.

Opposer’s application was refused due to a likelihood of confusion with the subject

application and remains suspended.11 These facts establish Opposer’s standing.

V. Bona Fide Intent

We begin by addressing Opposer’s claim that Applicants lack a bona fide intent to

use the mark MEZQUILA in commerce. Section 1(b) of the Trademark Act, 15 U.S.C.

§ 1051(b), states that:

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

10Application Serial No. 86609616, filed based on an allegation of a bona fide intent to use
the mark in commerce pursuant to trademark Act Section 1(b). Exhibit 3 to Applicants’
Notice of Reliance, 34 TTABVUE 414-16. Opposer’s objection to these documents on the basis
that they were not produced during discovery is overruled because these printouts from the
USPTO’s TSDR database were publicly available and not in Applicants’ possession.
11 See Exhibit 3 to Applicants’ Notice of Reliance, 34 TTABVUE 417-40.

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Opposition No. 91223574

Trademark Office an application and a verified statement,
in such form as may be prescribed by the Director.

Opposer has the burden of demonstrating by a preponderance of the evidence that

Applicants lacked a bona fide intent to use the mark on the identified goods at the

time they filed their application. We note at the outset that our inquiry is not into

Applicants’ subjective state of mind alone. Rather, evidence of circumstances bearing

on intent

is “objective” in the sense that it is evidence in the form of
real life facts and by the actions of the applicant, not by the
applicant’s testimony as to its subjective state of mind.
That is, Congress did not intend the issue to be resolved
simply by an officer of applicant later testifying, “Yes,
indeed, at the time we filed that application, I did truly
intend to use the mark at some time in the future.”

L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1444 (TTAB 2012) (quoting 3 J. THOMAS

MCCARTHY, MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 19:14 (4th ed.

2009)); see also SmithKline Beecham Corp. v. Omnisource DDS, LLC, 97 USPQ2d

1300, 1305 (TTAB 2010); Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926,

1931 (TTAB 2009).

Each case must be decided through an objective determination whether an

applicant has a bona fide intention to use the mark in commerce based on all the

circumstances of record. Boston Red Sox Baseball Club L.P. v. Sherman, 88 USPQ2d

1581, 1587 (TTAB 2008).

Here, Congress made clear that a “bona fide intent to use”
also involves an objective standard by specifying there
must be “circumstances showing . . . good faith.” Thus, an
opposer may defeat a trademark application for lack of
bona fide intent by proving the applicant did not actually
intend to use the mark in commerce or by proving the

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Opposition No. 91223574

circumstances at the time of filing did not demonstrate that
intent.

Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8, 86 USPQ2d

1527, 1537-38 (D.C. Cir. 2008). As the Court of Appeals for the Federal Circuit has

held:

[W]hether an applicant had a “bona fide intent” to use the
mark in commerce at the time of the application requires
objective evidence of intent. 15 U.S.C. § 1051(b)(1).
Although the evidentiary bar is not high, the circumstances
must indicate that the applicant’s intent to use the mark
was firm and not merely intent to reserve a right in the
mark. See id. § 1127 [citation omitted]. The Board may
make such determinations on a case-by-case basis
considering the totality of the circumstances.

M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892, 1898 (Fed. Cir.

2015).

In sum, use of the term “bona fide” is meant to require, based on our objective view

of the circumstances, a good faith intention to eventually use the mark in a real and

legitimate commercial sense. Id. at 1897-98.

A. Intent of Applicant Rosalie Gabriel

As stated above, the subject application has two individual owners: Johnny D.

Gabriel and Rosalie Gabriel, who have been husband-and-wife business partners for

decades. Although Rosalie Gabriel testified that she intended to use the mark at the

time the application was filed, she also testified that she did not know of any efforts

that she personally made with respect to MEZQUILA either before or after the filing

of the application.12

12 Rosalie Gabriel Test. at 29:23-30:19, 39 TTABVUE 30-31.

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Opposition No. 91223574

There is no objective record evidence of intent to use the MEZQUILA mark on the

part of Rosalie Gabriel. We need not decide, however, whether lack of bona fide intent

by one of two applicants alone renders the application invalid under Trademark Act

Section 1(b), as Opposer argues, because we conclude based on the totality of the

circumstances that applicant Johnny D. Gabriel also lacked a bona fide intent to use

the mark in commerce. Although we continue to refer to the Gabriels as “Applicants,”

the remainder of our analysis pertains to evidence of Mr. Gabriel’s intent.

B. Opposer’s Prima Facie Case

One way an opposer can establish its prima facie case of no bona fide intent is by

proving that an applicant has no documentary evidence to support its allegation in

the application of its claimed bona fide intent to use the mark in commerce as of the

application filing date. Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1727 (TTAB

2010). 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 the

intention required by Section 1(b) of the Trademark Act, unless an applicant counters

with other facts that adequately explain or outweigh its failure to provide such

documentary evidence. See A&H Sportswear Co. v. Yedor, 2019 USPQ2d 111513, at

*3 (TTAB 2019); Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660, 1662 (TTAB

2009); L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883, 1891 (TTAB 2008).

If an opposer satisfies its initial burden of showing the absence of documentary

evidence regarding the applicant’s bona fide intention to use the mark, the burden of

production shifts to the applicant to come forward with evidence adequately

explaining or outweighing the failure to provide such documentary evidence. See
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Opposition No. 91223574

Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 n.11

(TTAB 1993).

Applicants do not contend that any documentary evidence existed relating to their

bona fide intention to use the MEZQUILA mark in commerce when the application

was filed in January 2015; indeed, Mr. Gabriel testified that he had no documents

relating to plans for the MEZQUILA mark as of the filing date.13 Rather, Applicants

argue that Mr. Gabriel, who was 82 years old when Applicants filed their brief, does

business “the old fashion[ed] way”: “He primarily does business over the phone or in

person and does not customarily send emails or texts.”14

The earliest documents cited by Applicants date to November 2015, comprising

emails forwarding initial versions of labels for MEZQUILA bottles15 and a production

timeline.16 Under our precedent, the fact that these documents were created nearly a

year after the trademark application was filed is not dispositive. In Lane Ltd. v.

Jackson Int’l Trading Co., 33 USPQ2d 1351, 1356 (TTAB 1994), the Board found

documentary evidence created nine to eleven months after the application was filed

to be sufficiently contemporaneous evidence of intent. “Neither the statute nor the

Board’s decision in Commodore Electronics[, 26 USPQ2d 1503,] expressly imposes

any specific requirement as to the contemporaneousness of an applicant’s

13 Gabriel Discovery Test. at 78:9-79:10, 28 TTABVUE 264-65.
14 Applicants’ Brief at 28, 54 TTABVUE 29.
15Exhibit 4 to Johnny Gabriel Trial Test., 37 TTABVUE 196-200; Exhibit 4 to Gabriel
Discovery Test., 28 TTABVUE 277-81; Exhibit A to Gabriel Dec., 35 TTABVUE 6-11.
16Exhibit 2 to Gabriel Discovery Test., 28 TTABVUE 271-72; Exhibit B to Gabriel Dec., 35
TTABVUE 12-14.

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Opposition No. 91223574

documentary evidence corroborating its claim of bona [f]ide intention. Rather, the

focus is on the entirety of the circumstances, as revealed by the evidence of record.”

Lane Ltd., 33 USPQ2d at 1356; see also Swiss Grill Ltd. v. Wolf Steel Ltd., 115

USPQ2d 2001, 2009 (TTAB 2015) (quoting Lane Ltd.).

Here, however, the circumstances include facts beyond the mere passage of time.

First, no documents precede the filing of this proceeding on August 31, 2015, seven

months after the application. Second, Mr. Gabriel testified as follows regarding the

subject application: “I thought that it would be a good idea to have it [MEZQUILA]

trademarked as a brand name in case I wanted to bring in my own Tequila.”17 This

testimony is highly reminiscent of testimony the Court of Appeals for the Federal

Circuit emphasized in affirming the Board’s finding of no bona fide intent in M.Z.

Berger, 114 USPQ2d at 1899:

Critically, [Applicant’s principal] all but conceded that
Berger had not yet made a firm decision to use the mark in
commerce at the time of its application. J.A. 845 (“[I]f
[Berger] decided to do a — either a technology watch or
information watch or something that would have that type
of characteristics that [iWatch] would be a good mark for
it.”). See, e.g., Research in Motion, 92 USPQ2d at 1931
(applicant’s stated belief that the mark would be “a good
mark for future use” does not establish a bona fide intent
to use).

Third, Applicants filed an intent-to-use application for MEZQUILA for “mezcal”

in International Class 33 in 2000, which was abandoned for failure to file a statement

of use.18 This suggests that Applicants had the idea to use the term for many years

17 Gabriel Discovery Test., 21:11-15, 28 TTABVUE 234.
18 Exhibit A3 to Opposer’s Notice of Reliance, 27 TTABVUE 35-41.

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Opposition No. 91223574

but had not done so. The Trademark Act “was not intended to provide a warehouse

for unused marks.” Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 14

USPQ2d 1390, 1384 (Fed. Cir. 1990) (citing Exxon Corp. v. Humble Exploration Co.,

695 F.2d 96, 217 USPQ 1200, 1204-05 (5th Cir. 1983)).

Considering all the circumstances, including the timing of the creation of the

production timeline and initial labels in relation to this proceeding, we find that no

documentary evidence supports an objective bona fide intent to use the mark in

commerce as of the application filing date. The burden of production thus shifts to

Applicants to come forward with evidence adequately explaining or outweighing the

failure to provide such persuasive documentary evidence of their intent to use the

mark in commerce as of January 2015.

C. Applicants’ Evidence of Intent

Applicants identify several actions in support of their allegation that they had a

bona fide intent to use the MEZQUILA mark in commerce as of the application filing

date. We review the record relating to each of these actions in chronological order.

Discussions with Distilleries in February and September 2015

Mr. Gabriel testified that, in February 2015, Applicants met at their office with

representatives of Don Ramon Distillery and another distillery he could not recall

and asked them to distill a MEZQUILA product, but they declined due to pricing.19

However, Alejandro Valdes, the only other witness identified as being present at that

meeting, testified that although he recalled Mr. Gabriel discussing creating a

19Johnny Gabriel Trial Test. at 60:18-61:8, 70:1-73:15, 37 TTABVUE 61-74 & Exhibit 5, 37
TTABVUE 201.

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Opposition No. 91223574

beverage combining tequila and mezcal, he had no knowledge of the MEZQUILA

mark:

Q. Is it fair to say that you have no knowledge concerning
the applicants’ – that is, Johnny and Rosalie Gabriel –
intent to use the mark Mezquila?

A. Yes. Correct.

Q. And you certainly had no knowledge concerning Johnny
and Rosalie Gabriel’s intent to use the Mezquila mark
as early as February of 2015?

A. Correct.20

Next, Mr. Gabriel testified that Applicants traveled to Mexico September 3-6,

2015 for other purposes and, while there, met with representatives of the Sergio

Vivanco Distillery regarding producing a MEZQUILA product.21 Mr. Gabriel testified

that by the end of the meeting:

A. [ ] We knew we could not work with them because they
wanted to use the ends of the distillation, which is
usually the bad part.

Q. Okay. So at the price point you wanted to sell your
Mezquila brand, they were not willing to give you the
quality you wanted at that price?

A. Correct.22

20Valdes Test. at 24:12-24, 25:25-26:15, 41 TTABVUE 25-27; see also Rosalie Gabriel Test.
at 51:16-25, 53:5-7, 39 TTABVUE 52, 54 (“Q. Do you think you’ve ever talked to Alejandro
Valdes about Mezquila? A. No.”).
21Johnny Gabriel Trial Test. at 73:16-75:5, 37 TTABVUE 74-76; see also Valdes Test. at 19:3-
12, 41 TTABVUE 20 (testifying that his company paid for the plane tickets for the Gabriels
to visit the Don Ramon distillery in Guadalajara, Jalisco, in conjunction with a new product
release).
22Johnny Gabriel Trial Test. at 74:21-75:2, 37 TTABVUE 75-76. Rosalie Gabriel testified
that she did not recall any conversations with Sergio Vivanco. Rosalie Gabriel Test. at 44:17-
22, 39 TTABVUE 45.

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Opposition No. 91223574

This record at most supports a finding that Applicants had two meetings within

seven months after the application was filed in which inquiries concerning distillation

of a MEZQUILA product were raised and immediately dropped. Considering all the

record evidence, we find that these meetings do not explain or outweigh Applicants’

failure to provide persuasive documentary evidence of an objective intent to use the

mark MEZQUILA in commerce as of the application filing date in January 2015.

Applicants’ MEZQUILA Product

Beginning in November 2015, Applicants took a series of steps that resulted in

their offer of tequila under the MEZQUILA mark in retail liquor stores in the fall of

2017. The weight of the evidence indicates, however, that these goods were offered in

an attempt merely to reserve a right in the MEZQUILA mark rather than in the

ordinary course of trade.23

Under Texas law, the alcohol system requires separate actors in three tiers:

supplier/manufacturer, distributor, and retailer.24 Applicants are retailers who had

not produced tequila before filing the application.25 They first engaged in negotiations

with an importer and bottler (Azar Distilling, LLC) and distributor (A to Z Wholesale

Wine and Spirits, LLC) that did not result in a product being brought to market.26

23Opposer also contends that the goods did not have proper regulatory approval, but did not
introduce evidence sufficient to establish such a finding.
24Azar Test. at 10:9-15, 49 TTABVUE 11; see also Johnny Gabriel Trial Test. at 30:4-17, 37
TTABVUE 31 (describing plan requiring distillery, importer, and distributor).
25See Johnny Gabriel Trial Test. at 96:13-17, 37 TTABVUE 97 (“Q. Okay. So despite you
having 40, 50 years of experience in the liquor industry, you weren’t a sophisticated tequila
producer, correct? A. I have never distilled or produced any tequila in my life.”).
26 See, e.g., Romero Test. at 25:20-26:5, 40:18-41:4, 44 TTABVUE 26-27, 41-42.

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Opposition No. 91223574

Ultimately, Applicants did enter into an agreement with a tequila distillery based

in Arandas, Jalisco, Mexico, Compania Tequilera de Arandas (“CTA”), to

manufacture and bottle Applicants’ MEZQUILA tequila; and with Bazaco

Enterprises, Inc. of Dallas (“Bazaco”) to import and distribute the product.27 On

August 14, 2017, Gabriel Holdings, Ltd. (the company majority owned by Applicants’

children28) purchased 990 cases of Mezquila Gold Tequila and 550 cases of Mezquila

Silver Tequila from Bazaco.29 Bazaco imported one shipment of MEZQUILA-branded

tequila into the United States around September 1, 2017.30

The record indicates, however, that these sales are not producing income for either

Applicants or their business partners and are not a bona fide use in the ordinary

course of trade but were undertaken merely to reserve rights in the MEZQUILA

mark. Johnny Gabriel testified that his agreement with CTA and Bazaco provides no

royalties for the MEZQUILA mark and no compensation to him from sales of

MEZQUILA tequila: “Q. So with respect to the [redacted] cases that you anticipate

27E.g., Gabriel Dec. at ¶ 13 & Exhibit H, 35 TTABVUE 4 & 36 TTABVUE 26-31 [confidential].
Opposer’s objection to this document on the ground that it was produced late is overruled.
The last signature on the agreement is dated October 17, 2017 and the document was
produced in supplemental production just six days later, on October 23, 2017, before
Opposer’s trial period opened. See Applicant’s Response to Opposer’s Evidentiary Objections
at 6, 54 TTABVUE 62; Declaration of Brandon T. Cook ¶ 6 & Exhibit B, 54 TTABVUE 70,
73-74.
28 Opposer’s Brief at 43, 48 TTABVUE 44.
29Gabriel Dec. at ¶ 10, 35 TTABVUE 4. Opposer’s objections as to lack of foundation and
hearsay are overruled. The record shows that Applicants retain an ownership interest in
Gabriel Holdings. See Johnny Gabriel Trial Test. at 12:1-10, 37 TTABVUE 13; Rosalie
Gabriel Test. at 6:3-8, 39 TTABVUE 7.
30 See Gabriel Dec. at ¶ 14, 35 TTABVUE 4.

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Opposition No. 91223574

receiving in Texas before the end of the year, are you going to be paid any amount for

those? A. At this time, no.”31

Raul Romero Ornelas of CTA testified, moreover, that his company would produce

no more MEZQUILA-branded products as a favor to Johnny Gabriel because the

agreement was not profitable for any of the parties.32

Q. Okay. So under this agreement, [Mr. Gabriel’s] not
receiving any money from the sale of the product. Is that
your understanding?

A. Yeah, really – I – that’s my understanding. This
agreement – the purpose of this agreement was, first of
all, he wanted to make sure that he owns the trademark
first. . . . .

…

Q. Did you just enter into this agreement as a favor to
Mr. Gabriel?

A. Yeah, as I said, the main purpose was to – for him to be
sure that the trademark belongs to him. That was the –
the most important issue.33

Similarly, Mr. Romero testified later in his deposition that:

Q. [ ] Do you anticipate working with Mr. Gabriel in the
future to sell any more Mezquila product?

A. I don’t believe so. He said in the last meeting that he will
not agree to the price that we’re giving him. He’s going
to look maybe for a U.S. producer. It’s going to be
complicated. It takes a really long time, but so – maybe
he ha[d] in mind – and I’m trying to second-guess – but

31Johnny Gabriel Trial Test. at 117:12-15, 37 TTABVUE 118; see also id. at 115:3-7, 37
TTABVUE 116.
32See, e.g., Romero Test. at 19:19-20:19, 25:14-27:9, 55:5-60:1, 44 TTABVUE 20-21, 26-28,
56-61.
33 Id. at 26:21-28:10, 44 TTABVUE 27-29.

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Opposition No. 91223574

maybe he had in mind just to use the brand because
there are some rules under U.S. PTO that you have to
really use a trademark. Maybe he had that in mind, but
I don’t know.34

D. Conclusion as to Bona Fide Intent To Use

We have carefully considered all of the parties’ arguments and evidence of record,

even if not specifically discussed herein. We find, based on the record before us, that

Applicants’ intent at the time they filed their application was merely to reserve a

right in the MEZQUILA mark in case they decided to begin developing an associated

product at some future time, rather than to use that mark on the identified goods in

commerce as defined in Section 45 of the Trademark Act, 15 U.S.C. § 1127. Cf.

Research In Motion Ltd., 92 USPQ2d at 1931 (finding the fact that applicant’s chief

executive officer “believed BLACK MAIL to be a good mark for future use does not

establish a bona fide intent to use”). Viewing all circumstances objectively, we cannot

conclude that Applicants’ actions reveal a bona fide intention to eventually use the

mark in a real and legitimate commercial sense on the identified goods at the time

they filed the application. Therefore, we find that Opposer has established, by a

preponderance of the evidence, that Applicants lacked a bona fide intent to use the

mark MEZQUILA at the time they filed their application.

Decision: Because we have found for Opposer on its claim of lack of bona fide

intent to use, we need not reach the merits of its other claims. See Multisorb Techs.,

Inc. v. Pactiv Corp., 109 USPQ2d 1170 (TTAB 2013). Specifically, we make no

34 Id. at 76:7-18, 44 TTABVUE 77.

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Opposition No. 91223574

findings as to whether MEZQUILA is descriptive, generic, or misdescriptive for

alcoholic beverages, including beverages made from a mix of mescal and tequila.

We sustain the opposition under Trademark Act Section 1(b).

18