Haynes Boone successfully represented MTC, Inc. in a trademark opposition proceeding before the Trademark Trial and Appeal Board (TTAB), resulting in the denial of a trademark application filed by Tequilera de la Barranca de Amatitan S.A. de C.V. for the mark MI TIERRA in connection with alcoholic beverages.
Led by Haynes Boone Intellectual Property Litigation Partner William Nash and Counsel Jason Whitney, the firm demonstrated that the applicant did not use its MI TIERRA mark in commerce as of the application filing date, rendering the application void. The Board’s decision agreed that the applicant’s use of MI TIERRA occurring five years prior to filing, but then ceasing until after the application was filed, did not constitute use in commerce as of the filing date.
As part of the decision, Haynes Boone successfully moved to strike the entire testimony of the applicant’s sole witness for lack of personal knowledge and improper authentication. MTC separately opposed the application based on a likelihood of confusion with its own longstanding and registered MI TIERRA marks, which are most strongly associated with restaurant, catering and event coordination services, but the Board declined to address this additional opposition ground after finding nonuse.
“This decision reinforces the ability of longstanding trademark holders to protect their rights and challenge third parties using a variety of tools,” Nash said. “We are proud to have safeguarded our client’s unique MI TIERRA brand identity and marketplace presence.”
The case, Opposition No. 91253276, involved detailed analysis of the applicant’s nonuse of the mark, priority and likelihood of confusion, and the standards for providing witness testimony to the Board. The TTAB’s decision affirms that MTC possessed standing to oppose based on its own MI TIERRA marks and that MTC met its burden of proof in showing nonuse.
The Haynes Boone Trademark and Advertising Practice Group provides comprehensive counsel across the full trademark lifecycle, from clearance and registration to enforcement and litigation. The team advises leading companies across industries on brand management, portfolio strategy, advertising law and global protection programs. The group delivers practical, business-driven solutions that safeguard clients’ valuable intellectual assets in a competitive global market.
