The Saul Zaentz Company dba Tolkien Enterprisesv.Joseph M. Bumb

Trademark Trial and Appeal Board

Jun 28, 2010

No. 91156518 (T.T.A.B. Jun. 28, 2010)

Mailed:
6/28/10

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The Saul Zaentz Company dba Tolkien Enterprises
v.
Joseph M. Bumb
_____

Opposition No. 91156518
to application Serial No. 780836851

1 In addition to the present opposition proceeding involving
applicant’s application to register the LOTR mark for jewelry,
the parties are involved in two other opposition proceedings.
Opposition No. 91156452 involves applicant’s application Serial
No. 78083686 for registration of the mark MITHRIL. Combined
Opposition No. 91170589 involves applicant’s application Serial
No. 78085108 for registration of the mark MIDDLE EARTH JEWELRY
and his application Serial No. 78085111 for registration of the
mark ARAGORN.
Finding there to be common issues of law and fact in the
three oppositions involving the four applications, the Board
consolidated the three proceedings in orders dated July 23, 2004,
January 24, 2007 and February 9, 2007, with the MITHRIL
opposition serving as the parent case. The cases have proceeded
as consolidated cases for purposes of discovery, trial and
briefing.
However, we deem it appropriate for purposes of final
decision to decide the three cases separately, in separate
opinions. Although the three cases share common legal and
factual issues which warranted consolidation for purposes of
discovery, trial and briefing, the issues and evidence are not
identical in the three cases. In the interest of clarity, each
of the three cases warrants its own opinion at final decision.
We have considered the evidence in each case independently and we
are deciding each of the cases based on the evidence pertinent to
each case.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91156518
2
_____

Carole F. Barrett, Blake J. Lawit and Sarah J. Givan of
Howard Rice et al. for The Saul Zaentz Company dba Tolkien
Enterprises.

Joseph M. Bumb, pro se.
______

Before Grendel, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Introduction.
This opposition proceeding involves the famous series
of fantasy literary works by J.R.R. Tolkien set in his
imaginary world of Middle Earth (“the Tolkien works”). The
books include The Fellowship of the Ring, The Two Towers,
and The Return of the King (the “Lord of the Rings”
trilogy), and its prequel, The Hobbit. In The Hobbit, the
hero Bilbo Baggins, a hobbit (a smaller relative of
humans), goes on a journey across Middle Earth during which
he discovers the dangerous Ring of Power. The sequel “Lord
of the Rings” trilogy is the story of the perilous journey
across Middle Earth of the hobbit hero Frodo Baggins and
Opposition No. 91156518
3
his companions to destroy the Ring of Power and defeat the
armies of the evil wizard Saruman and the dark lord Sauron.2
Millions of copies of the Tolkien works have been sold
in the United States since their first publication in the
1950’s. In a 2008 Harris poll, the Tolkien works together
ranked as the third most popular book of all time among
American readers, trailing only The Bible and Gone With the
Wind.3
On September 12, 2001, Joseph M. Bumb (“applicant”)
filed an application (Serial No. 78083685) seeking
registration on the Principal Register of the mark LOTR for
goods identified in the application as “jewelry, namely,
rings, bracelets, pendants, charms, necklaces, earrings,
pins, tie pins and tie clasps, brooches, cufflinks, money
clips, all made of precious metal and alloyed precious
metal.” The application is based on 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 Saul Zaentz Company dba Tolkien Enterprises
(“opposer”) filed a notice of opposition to registration of

2 Undisputed evidence establishing these and other facts relating
to the plot and characters in the Tolkien works appears
throughout the record.

3 Drotos depo. (see below) at 46-48, 207-208; Imhoff depo. (see
below) at 39-40.

Opposition No. 91156518
4
the mark. In its amended notice of opposition, opposer
alleged, in pertinent part, (a) that it owns various
trademarks based on characters, places, things and events
described in the Tolkien works, and that these marks
include the marks LORD OF THE RINGS and (by extension) the
acronym LOTR; (b) that applicant lacked the requisite bona
fide intent to use the LOTR mark at the time he filed the
application to register that mark, rendering the
application void ab initio under Trademark Act Section
1(b), 15 U.S.C. §1051(b); and (c) that opposer is the prior
user of the marks LORD OF THE RINGS and (by extension) the
acronym LOTR, that applicant’s use of the LOTR mark he
seeks to register is likely to cause confusion with
opposer’s previously-used LORD OF THE RINGS and LOTR marks,
and that registration of applicant’s mark therefore is
barred under Trademark Act Section 2(d), 15 U.S.C.
§1052(d).4
Applicant answered the amended notice of opposition by
denying the salient allegations thereof.
Opposer submitted evidence at trial; applicant did
not. The case is fully briefed.

4 Opposer also alleged a dilution claim, but has specifically
withdrawn that claim in its brief. (Opposer’s brief at 23, n.4.)
We shall give it no further consideration.

Opposition No. 91156518
5
After careful consideration of all of the evidence of
record and all of the arguments of the parties (including
evidence and arguments not specifically discussed in this
opinion), we sustain the opposition on the ground that
applicant lacked the requisite bona fide intent to use the
LOTR mark in commerce when he filed his intent-to-use
application to register the mark, rendering the application
void ab initio under Trademark Act Section 1(b), 15 U.S.C.
§1051(b).5

The Evidence of Record.
By rule, the evidence of record includes the file of
applicant’s opposed LOTR application. Trademark Rule
2.122(b)(1), 37 C.F.R. §2.122(b)(1).
In addition, opposer submitted the following
evidence at trial:

1. Opposer’s Notice of Reliance (“NOR”) on:

5 Because we find that opposer has established its standing and
its Section 1(b) ground of opposition to registration of
applicant’s mark, we need not and do not reach opposer’s Section
2(d) ground of opposition. See Research In Motion Ltd. v. NBOR
Corp., 92 USPQ2d 1926 (TTAB 2009). We note that opposer states
in its brief: “This issue of Applicant’s bona fide intent to use
is dispositive – if Applicant lacks a bona fide intent to use the
mark[] at issue, the Board need not expend resources and effort
on SZC’s likelihood of confusion ground for opposition.”
(Opposer’s brief at 28, n.7.)

Opposition No. 91156518
6
(a) status and title copies of its
numerous registrations of Tolkien-related marks
(NOR Exh. 1-38);

(b) applicant’s discovery responses (NOR
Exh. 40, 42 and 44), including his responses to
opposer’s interrogatories (“Int. No. __”),
requests for admissions (“RFA No. __”) and
requests for production of documents (“RFP No.
__”);

(c) numerous printed publications
referring to the Tolkien works and to opposer’s
movies based thereon (see below) (NOR Exh. 50-
112); and

(d) official USPTO records concerning
other intent-to-use applications filed by
applicant to register other Tolkien-related marks
(NOR Exh. 113-121);

2. the testimony deposition of applicant
Joseph Bumb (taken by opposer) and exhibits
thereto (“Bumb depo.”);

3. the testimony deposition of opposer’s
employee Frederica Drotos and exhibits thereto
(“Drotos depo.”);

4. the testimony deposition of opposer’s
vice-president Albert Bendich and exhibits
thereto (“Bendich depo.”);

5. the testimony deposition of David Imhoff
(senior vice-president of licensing and
merchandising for opposer’s licensee New Line
Cinema) and exhibits thereto (“Imhoff depo.”);

6. the testimony deposition of opposer’s
employee Juliet Mason and exhibits thereto
(“Mason depo.”) and

7. the testimony deposition of opposer’s
employee Laurie Battle (“Battle depo.”).

Opposition No. 91156518
7
Applicant submitted no evidence at trial.6

Opposer.
Opposer, The Saul Zaentz Company, d.b.a. Tolkien
Enterprises, is a film production company. (Bendich depo.
at 7.) In 1976, opposer, by mesne assignments, acquired
from the J.R.R. Tolkien estate the exclusive world-wide
performance, motion picture and ancillary rights in and to
the Tolkien works. (Bendich depo. at 7-17, exh. 270-274;
Drotos depo. at 21-22, 32-33.) Since acquiring the rights,
opposer has used and licensed the use of various trademarks
based on names, objects, places and events depicted in and

6 At page 2 of his brief, in his “Description of the Record,”
applicant asserts that “Applicant’s record in this case” includes
“The Pleadings, including any and all of Applicant’s
declarations.” To the extent that applicant by this reference to
“declarations” might be referring to his June 28, 2007
declaration in opposition to opposer’s summary judgment motion,
we have given that declaration no consideration because it was
not made of record at trial. See, e.g., Levi Strauss & Co. v. R.
Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); see generally
Trademark Board Manual of Procedure (TBMP) (2d Ed., Rev. 2004) at
§528.05(a) and cases cited therein. We note that the Board, in
its July 29, 2008 order denying opposer’s summary judgment
motion, advised the parties (at footnote 2) that summary judgment
evidence is of record only for purposes of determining the
summary judgment motion. Additionally, applicant’s assertions in
his answer to the notice of opposition and in his final brief on
the case are not in themselves evidence of the facts asserted
except to the extent that they are supported by evidence at
trial, or except to the extent that they may have probative value
as admissions against interest. See TBMP at §706 and cases cited
therein. Finally, we add that our decision in this case would
have been the same even if we had considered these materials to
be evidence of record on applicant’s behalf.

Opposition No. 91156518
8
derived from the Tolkien works (the “Tolkien marks”), for a
wide variety of goods and services. (Drotos depo. at 50-
198, exh. 108-198.) Opposer owns numerous federal
trademark registrations of many of the Tolkien marks,
covering a variety of goods. (NOR Exh. 1-38.)7
In 2001-2003, opposer’s licensee, New Line Cinema,
produced and distributed a series of three feature films
based on the books of the Lord of the Rings trilogy, i.e.,
The Fellowship of the Ring, The Two Towers, and The Return
of the King. (Drotos depo. at 28-29; Mason depo. at 19.)
These movies are among the most successful movies in U.S.
box office history, having grossed approximately one
billion dollars in theaters. (Imhoff depo. at 41-42;
Drotos depo. at 48-50.) Beginning in 1999, well prior to
the release of the first film in December 2001, the trilogy
film project was the subject of substantial media attention
and great anticipation, especially among the devoted fans
of the Tolkien works. (Drotos depo. at 42-44; Imhoff depo.

7 Opposer’s registrations of Tolkien-related marks include
multiple registrations of the mark LORD OF THE RINGS and variants
thereof (see below at footnotes 9 and 10), and registrations of
the marks MIDDLE EARTH, ARAGORN, EVENSTAR, ONE RING TO RULE THEM
ALL, MORDOR, ARWEN, MY PRECIOUSSS, SARUMAN, GOLLUM, ELROND,
EOWYN, FRODO, GALADRIEL, RIVENDELL, THE ONE RING, and GANDALF.
Opposer does not own a registration of the mark involved in this
case, i.e., LOTR, but instead relies on its common-law rights in
that mark. See discussion below regarding opposer’s standing.

Opposition No. 91156518
9
at 32-34.)8 Tens of millions of DVD copies of the movies
have been sold in the United States. (Imhoff depo. at 41-
42.)
Over three hundred of opposer’s licensees and sub-
licensees have marketed thousands of different products
(including jewelry) under the Tolkien marks as part of
opposer’s extensive and highly successful merchandising
program based on the movies. (Imhoff depo. at 15-23;
Drotos depo. at 37.) The dollar amounts of opposer’s sales
and advertising expenditures in connection with the movies
and its related merchandising program have been submitted
under seal, but suffice it to say that they are very

8 Opposer’s notice of reliance includes press articles appearing
prior to the first film’s release which referred to opposer’s
trilogy film project, such as:

- Newsweek (April 24, 2000) (NOR Exh. 76): “J.R.R.
Tolkien fans downloaded the first ‘Lord of the Rings’
trailer nearly 1.7 million times in its first 24 hours
on the Net. ... Says a LOTR megafan, ‘It’s so amazing
to finally see this world come to life.’ If you haven’t
already, the first installment premieres Christmas –
2001.” ;

- Detroit Free Press (March 5, 2001) (NOR Exh. 72):
“The first of the three long-awaited ‘Lord of the Rings’
films doesn’t even open until Dec. 19, but the Internet
buzz has already reached heights unheard of, even in the
world of Hollywood hype.”; and

- Atlanta Journal and Constitution (April 30, 2001)
(NOR Exh. 77): “Based on the J.R.R. Tolkien classic,
the movie won’t debut until Christmas. But, realizing
that there was intense interest among LOTR fans, New
Line began its online promotions in May - of 1999.”

Opposition No. 91156518
10
substantial. (Imhoff depo. at 24-32; Mason depo. at 12-31,
exh. 103-104.)

Applicant.
Applicant, Joseph M. Bumb, owns a company called
American Precious Metals, formed in 1980. (Bumb 2004 depo.
at 17-18.) He operates a store at the San Jose Flea Market
in California, where he buys and sells a range of products
including jewelry, collectibles and memorabilia. (Bumb
depo. at 21-22.) Applicant also engages in the custom
design and manufacture of jewelry. (Bumb depo. at 24-27.)

Discussion.
To review, applicant seeks registration of the mark
LOTR for various jewelry items. Opposer’s ground of
opposition is lack of bona fide intent under Trademark Act
Section 1(b).

What is LOTR?
As discussed below in connection with opposer’s
standing, the record establishes that “LOTR” is commonly
used and recognized as an acronym for the phrase “Lord of
the Rings” in connection with the Tolkien works. (Drotos
depo. at 38-39; Imhoff depo. at 55-56; Saigh depo. at 34.)
Opposition No. 91156518
11
Applicant has admitted “that LOTR is an abbreviation for
‘The Lord of the Rings.’” (RFA No. 1 (NOR Exh. 42).)

Opposer’s Burden.
To prevail in this opposition proceeding, opposer must
establish its standing to oppose and at least one statutory
ground of opposition to registration of the mark. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000).

Opposer’s Standing.
To establish its standing to oppose registration of
the LOTR mark applicant seeks to register, opposer must
prove that it has a real interest in the outcome of this
proceeding and thus a reasonable basis for its belief that
it would be damaged by issuance of a federal registration
of the mark to applicant. See Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982); Time Warner Entertainment Co. v. Jones, 65
USPQ2d 1650 (TTAB 2002).
We find that opposer has standing in this case based
on its evidence of its rights in the phrase mark LORD OF
THE RINGS, and on its evidence which establishes that the
Opposition No. 91156518
12
designation LOTR is commonly recognized and used by the
public and press as an acronym for that phrase mark.
Our primary reviewing court has stated:

Moreover, even without use directly by the
claimant of the rights, the courts and the Board
generally have recognized that abbreviations and
nicknames of trademarks or names used only by the
public give rise to protectable rights in the
owners of the trade name or mark which the public
modified. Such public use by others inures to
the claimant's benefit and, where this occurs,
public use can reasonably be deemed use “by” that
party in the sense of a use on its behalf.

National Cable Television Association Inc. v. American
Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1428
(Fed. Cir. 1991) (emphasis in original; internal citations
omitted). See also J.T. McCarthy, McCarthy on Trademarks
and Unfair Competition, §7:18 (4th ed. 2009): “Americans
are prone to abbreviate recognized trademarks and to use
nicknames. Such abbreviations and nicknames are just as
entitled to legal protection as the original full
trademark.”
Applying this principle in the present case for
purposes of determining opposer’s standing, we find, first,
that opposer has established its rights in the phrase mark
LORD OF THE RINGS. Opposer has made of record status and
title copies of its numerous existing registrations of the
Opposition No. 91156518
13
marks LORD OF THE RINGS and THE LORD OF THE RINGS, covering
a variety of goods in Classes 6, 8, 14, 16, 20, 21, 25 and
28. (NOR Exh. 11-24.)9 Four of these registrations include
Class 14 jewelry in their identifications of goods. (NOR
Exh. 19-22.)10 The record also establishes that opposer has
common law rights in the phrase mark LORD OF THE RINGS
derived from its use and its licensing of others to use the
mark LORD OF THE RINGS essentially as a house mark on a
wide variety of licensed products to indicate that the
products are authentic merchandise. (Imhoff depo. at 11,
65.)
Second, the evidence of record clearly establishes
that the public and the press commonly use the acronym LOTR
interchangeably with the phrase mark “Lord of the Rings” in
referring to the Tolkien works and to opposer’s “Lord of
the Rings” movies. (Imhoff depo. at 24, 120; Drotos depo.
at 204, Exh. 201.) Opposer’s notice of reliance includes
the following excerpts from articles in the press:

- Chicago Sun-Times, May 20, 2001 (NOR Exh. 69):
“On a simple democratic standard measured by
sales figures and lists of readers’ favorite
books, The Lord of the Rings can claim a

9 Reg. Nos. 1553027, 2757847, 2765513, 2897946, 2944695, 2970997,
3095936, 3375772, 3375773, 3375774, 3378135, 3408340, 3507966,
and 3512255.

10 Reg. Nos. 3375773, 3375774, 3378135 and 3408340.

Opposition No. 91156518
14
consistent preeminence unmatched by any other
single literary work of this century. Further,
LOTR established fantasy as a durable commercial
genre whose growth rate increases, as will be all
too apparent in the weeks leading up to Dec. 16,
when a new screen version of LOTR makes its
debut.”

- Chicago Sun-Times, July 8, 2001 (NOR Exh. 70):
“The first of three new film treatments of LOTR
from New Line Cinema will debut in theaters Dec.
19 ...”

- Village Voice, June 12, 2001 (NOR Exh. 73):
“Peter Jackson’s movie trilogy The Lord of the
Rings raises the bar on pop-cult hype’s global
ubiquity and behemothic scale. ... Hype easily
self-assassinates, but LOTR may be immune to
excess.”

- Newsweek, April 24, 2000 (NOR Exh. 76):
“J.R.R. Tolkien fans downloaded the first “Lord
of the Rings” trailer nearly 1.7 million times in
its first 24 hours on the Net. ... Says a LOTR
megafan, “It’s so amazing to finally see this
world come to life.”

- Atlanta Journal and Constitution, April 30,
2001 (NOR Exh. 77): “Based on the J.R.R. Tolkien
classic, the movie won’t debut until Christmas.
But, realizing that there was intense interest
among LOTR fans, New Line began its online
promotions in May - of 1999.”

- E Online, May 1, 2000 (NOR Exh. 92): “It’s
one of the most closely debated and frequently
asked questions surrounding LOTR: How will
Sauron be represented? Will he be a burning Red
Eye, as Tolkien describes him, or something else?

- Wired, Oct. 2001 (NOR Exh. 95): “She first
read LOTR in the sixth grade, and was always
fantasizing about living in Middle-earth.”
‘Everyone knows about LOTR, yet its influence is
so pervasive as to be almost invisible.’”

Opposition No. 91156518
15
- Orange County Register, Dec. 18, 2002 (NOR
Exh. 102): “Superb special effects and a rich
emotional canvas make the second ‘LOTR’ even
better than the first.”

In short, the record establishes that LOTR is
recognized and commonly used by the public as an acronym
for opposer’s phrase mark LORD OF THE RINGS in connection
with the Tolkien works and with opposer’s “Lord of the
Rings” movie trilogy based thereon. Based on this evidence
and in accordance with the authorities discussed above, we
find that opposer has a real interest in this proceeding
and thus a reasonable basis for its belief that it would be
damaged by issuance to applicant of a registration of the
mark LOTR. Accordingly, we find that opposer has
established its standing to oppose registration of
applicant’s LOTR mark.11

Opposer’s Section 1(b) Ground of Opposition.
Having found that opposer has standing, we turn next
to opposer’s Section 1(b) ground of opposition, i.e., its
claim that applicant’s LOTR application is void ab initio

11 Additionally, opposer’s standing is established by the evidence
of record which shows that one of opposer’s licensees, Badali
Specialty Jewelry, Inc., markets jewelry in the United States
under the mark “LOTR Box Sets” pursuant to a license from opposer
executed in August 2001. (Drotos depo. at 116-17, 128-29, Exh.
142, 150.)

Opposition No. 91156518
16
because applicant lacked the requisite bona fide intent to
use the mark in commerce when he filed his application.
In pertinent part, the Trademark Act provides 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....” Trademark Act Section 1(b)(1),
15 U.S.C. §1051(b)(1).
The Board has held that “...the determination of
whether an applicant has a bona fide intention to use the
mark in commerce is to be a fair, objective determination
based on all the circumstances.” Lane Ltd. v. Jackson
International Trading Co., 33 USPQ2d 1351, 1355 (TTAB
1994). The Board also has stated that the requirement that
an applicant must have a bona fide intent to use the mark
in commerce “must be read in conjunction with the revised
definition of ‘use in commerce’ in Section 45 of the
Trademark Act, which the Trademark Law Revision Act of 1988
amended to require that such use be ‘in the ordinary course
of trade, and not made merely to reserve a right in a
mark.’” Commodore Electronics Ltd. v. CBM Kabushiki
Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993).
Applicant filed his intent-to-use application for LOTR
on September 12, 2001. Prior to that, on August 17, 2001,
Opposition No. 91156518
17
he had registered the domain name “lotrjewelry.com.” (Bumb
depo. at 50.) Applicant has never taken any steps to
construct or operate a website under the “lotrjewelry.com”
domain name. (Bumb depo. at 69-70, Exh. 15.)
Applicant has admitted that aside from documents filed
with the USPTO pertaining to his intent-to-use trademark
application and documents pertaining to his registration of
the domain name, applicant has no documents relating to his
adoption of or intent to use the LOTR mark. (Bumb depo. at
85; RFP Nos. 1, 5, 7 and 19 (NOR Exh. 44).) We find that
applicant’s lack of any such documents suffices to
establish, prima facie, that applicant lacked a bona fide
intent to use the LOTR mark in commerce when he filed the
application to register that mark. See Research In Motion
Ltd. v. NBOR Corp., 92 USPQ2d 1926 (TTAB 2009); Boston Red
Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB
2008); and Commodore Electronics Ltd. v. CBM Kabushiki
Kaisha, 26 USPQ2d 1503 (TTAB 1993).
Moreover, opposer’s prima facie case is supported by
several express admissions by applicant in his testimony
deposition (taken by opposer) which establish that he
lacked a bona fide intent to use the mark, and that he
filed the application merely to reserve a right in the
mark. For example:
Opposition No. 91156518
18

Q. When you applied, you didn’t
necessarily want to use the term, LOTR?
A. Well, it was, like I said before, an
insulator. And yes, as the terms of the
Trademark Commission, you have to have an
intent for use. Well, I suppose I would have
an intent for use provided that channel opens
up to me.
(Bumb depo. at 98.)

Q. ... You applied for both a domain
name and the trademark application for LOTR.
A. Yes.
Q. Because you wanted to make jewelry to
associate in the minds of others Lord of the
Rings, right?
A. Well, going back to our previous line
of questioning, I really didn’t have an intent
of manufacturing an LOTR line of jewelry.
Q. True.
A. So it wasn’t with that in mind. It
was just kind of a protective device. I
needed insulation in my mind, that’s why.
Q. What did you need protection from;
what were you trying to protect?
A. A future business and how that would
come into play, could be anything. It would
be, that’s where I started.
(Bumb depo. at 56-57.)

After having considered all of the evidence of record,
we find that the preponderance of the evidence establishes
that applicant lacked the requisite bona fide intention to
use the LOTR mark in commerce when he filed his intent-to-
use application to register that mark. Specifically,
applicant has no documentary evidence to support his bona
fide intent claim, a fact which suffices in itself to
Opposition No. 91156518
19
establish that applicant lacked a bona fide intention to
use the mark when he filed his application. See Commodore
Electronics Ltd., supra, 26 USPQ2d at 1507; Research In
Motion Ltd., supra, 92 USPQ2d at 1931; and Boston Red Sox
Baseball Club LP, supra, 88 USPQ2d at 1587. Applicant
presented no evidence at trial to support a contrary
finding. See Research In Motion Ltd., supra, 92 USPQ2d at
1931 (“The absence of documentation coupled with
applicant’s failure to take testimony or offer any evidence
supporting its bona fide intent to use convince us that
applicant did not have a bona fide intent to use the
mark.”) Moreover, applicant’s testimony includes what
essentially are his admissions that he lacked a bona fide
intent to use the mark when he filed his application.
Thus, we find that opposer has established its
Section 1(b) ground of opposition to registration of
applicant’s LOTR mark based on applicant’s lack of bona
fide intent to use the mark when he filed his intent-to-use
application to register that mark, and that the application
therefore is void ab initio.
Conclusion and Decision.
Based on the entirety of the evidence of record, and
for the reasons discussed above, we conclude that opposer
has established its standing to oppose registration of
Opposition No. 91156518
20
applicant’s LOTR mark, and has established its Section 1(b)
ground of opposition to registration of that mark.

Decision: The opposition is sustained.

_______