TTAB Rules Trademark Applicant Lacks Bona Fide Intent to Use, Resulting in Win for Rothwell Figg Client D&P Holding SA

The Trademark Trial and Appeal Board (TTAB) held that a trademark applicant lacked a bona fide intent to use a beer-related mark at the time of filing and denied the application, resulting in a victory for Rothwell Figg client D&P Holding SA (D&P).

Jose Monasterio filed an application for “New Yorker Fine Lager Beer” for use with beer-based cocktails, malt extracts, and related goods. D&P had previously worked with Mr. Monasterio to establish the “New Yorker” brand in Europe, resulting in a similar mark being registered in the European Union by Mr. Monasterio and assigned to D&P. However, the parties disagreed over Mr. Monasterio’s role at D&P at the time when he filed the application in the United States, whether he was authorized to file the application, and who owned the right to use the mark in the U.S. Eventually, D&P filed an application to register the mark in its own name. The USPTO suspended consideration of D&P’s application due to the conflict with Monasterio’s application, and D&P subsequently filed its opposition.

The TTAB found that D&P successfully proved that Mr. Monasterio lacked a bona fide intent to use the mark since D&P submitted evidence that Mr. Monasterio made no attempt to bring goods to market for three years after the date of filing, despite having the expertise to do so, and therefore, D&P’s opposition was sustained and the application was denied.

The Rothwell Figg team representing D&P in the opposition, D&P Holding SA v. Monasterio, Opposition No. 91246728, included Leo Loughlin and Davide Schiavetti.