TTAB Blocks Registration of CUADRA Trademark Due to Lack of Intent to Use in U.S.

Summary:
The TTAB sustained an opposition against an application to register the mark CUADRA for alcoholic beverages, finding that the applicant lacked a bona fide intent to use the mark in U.S. commerce at the time of filing its application.

Background:
Manufacturera de Botas Cuadra, S.A. de C.V. (“Botas”), a Mexican manufacturer of leather goods, such as bags and shoes, filed a trademark application to register the mark CUADRA for use in connection with “alcoholic beverages, except beer; distilled spirits produced in Mexico in accordance with specific standards,” in International Class 33, under Section 1(b) of the Trademark Act, asserting a bona fide intent to use the mark in U.S. commerce.

Tequila Cuadra S. de R.L. de C.V. (“Tequila”), which had been exporting CUADRA tequila from Mexico to a Richmond, Virginia distributor, opposed the registration of Botas’s mark based on:

1. Botas’s lack of a bona fide intent to use the mark under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b); and
2. likelihood of confusion with Tequila’s previously used mark CUADRA for alcoholic spirits, under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).

Decision:

The Trademark Trial and Appeal Board (TTAB) sustained the opposition, determining that Botas lacked a bona fide intent to use the CUADRA mark in U.S. commerce as of the application’s filing date as required under Section 1(b) of the Trademark Act.  A bona fide intent to use a trademark in U.S. commerce requires an applicant to have a plan to use the mark in the ordinary course of trade, and not merely to reserve a right in a mark (15 U.S.C. § 1127). Further, according to TTAB precedent, the "bona fide" nature of an applicant's intent is judged objectively and requires that the applicant provide evidence of specific real-world plans or ongoing efforts to use the mark.  Typically, such evidence would consist of written business proposals, internal or external business documents showing pre-launch activities (e.g., labels or purchase orders), or communications with potential U.S. partners/distributors.

To support its claim to have had a bona fide intent to use the CUADRA mark in U.S. commerce for alcoholic beverages, Botas submitted the following evidence:

a) Testimony establishing that Botas had marketed alcohol beverages in its home country of Mexico since 2010 as part of its fashion product line under CUADRA mark;

b) business records and testimony showing that it had created CUADRA-branded bottles of alcohol, which were featured in social media posts; and

c) Testimony asserting that Botas had the capacity to grow the necessary raw ingredients, as well as to produce and distribute alcoholic beverages through its affiliated company, Viñedo San Miguel, a worldwide winegrower.

The TTAB, however, determined that the evidence relating to (a), (b), and (c) above was insufficient to establish a bona fide intent to use the mark in U.S. commerce, for the following reasons.

With regard to (a) and (b), although the advertisements and social media posts did feature CUADRA-branded bottles, these were merely used as props to promote the applicant’s leather fashion products. The labels on the bottles were in Spanish and did not appear to target U.S. consumers. Moreover, the social media posts originated from the account of Viñedo San Miguel and were not dated on or before the application filing date.

As for point (c), Botas did not submit any evidence demonstrating its own capacity—or that of its affiliate—to produce alcoholic beverages for the U.S. market.  At best, the evidence only showed the affiliate’s ability to produce and market alcoholic beverages in other countries such as Mexico.

Furthermore, the TTAB noted that Botas is a leather goods company that has never sold alcoholic products in the United States.  Botas failed to submit any concrete documentation—such as communications regarding a specific business plan for alcoholic production with affiliated companies, or supporting materials like invoices, marketing materials, regulatory filings, or purchase orders. Moreover, it had not even applied to the relevant U.S. alcohol regulatory authorities for authorization to import alcoholic beverages. Botas also failed to provide any specific explanation as to why it was unable to submit such documentation.

As a result, the TTAB concluded that none of Botas’s testimony or documentary evidence objectively demonstrated any intended use of the CUADRA mark in U.S. commerce. Accordingly, the TTAB found that Botas had not rebutted Tequila’s prima facie case and sustained the opposition based on Botas’s lack of bona fide intent to use the mark under Section 1(b) of the Trademark Act.

In light of the above finding regarding Botas’s lack of bona fide intent, the Board did not reach Tequila’s alternative claim of likelihood of confusion.

The case is Tequila Cuadra S. de RL de CV v. Manufacturera de Botas Cuadra, S.A. de C.V., Opposition No. 91282327.