Entitlement to a statutory cause of action (f/k/a "standing") is a threshold issue in every inter partes Board proceeding. Oppose Energy Beverages failed to clear that relatively low hurdle in this opposition to registration of the mark BURNERWATER for dietary supplements and vitamin-containing water. Energy Beverages alleged that the applicant lacked a bona fide intention to use the mark in commerce but it failed to plead or prove its entitlement to a cause of action. Energy Beverages LLC v. Burner Water Beverages Ltd., Opposition No. 91253791 (January 11, 2023) [not precedential] (Opinion by Judge Michael B. Adlin).


Energy Beverages alleged that it owns several pending applications for the mark BURN for energy drinks enhanced with vitamins. It stated that it is "a manufacturer of beverages and believes that it will be damaged by registration of the Application (sic)." It also alleged that registration would "damage the integrity of the register in International Class 32." Energy did not explain how damage to the register would occur, nor how "the integrity of the register" would affect it. Energy further alleged that it is "arguably a potential competitor in the industry."

The Board found Energy's pleading insufficient. Energy "neither explains how or why Opposer, as a 'manufacturer of beverages,' believes it would be damaged by registration of Applicant's involved mark Opposer's allegation that it manufactures beverages is not enough, standing alone, to establish that a cause of action for lack of a bona fide intent to use is within Opposer's 'zone of interests.'"

[T]he Trademark Act does not protect against trademark registrations by competitors, unless those registrations would have harmful consequences falling within a plaintiff's zone of interests . For example, the Trademark Act protects against a competitor's registration of a mark which is likely to dilute a plaintiff's mark, falsely suggest a connection with the plaintiff or be descriptive of or generic for goods or services which the plaintiff offers or desires to offer.

Energy did not state a basis for reasonably believing that it would be damaged by the mere registration of applicant's mark. Thus, it failed to sufficiently plead its entitlement to a cause of action.

Moreover, even if Energy had sufficiently pleaded its "standing," the pending applications that it submitted in support have no probative value. They evidence only that the applications were filed. They do not establish that Energy is a manufacturer of beverages or a competitor of the applicant. Nor do they show that applicant's mark will damage "the integrity of the register."

In short, Opposer has not established that its alleged but unexplained and unproven interests "have anything to do with trademark concerns (whether its own trademark concerns or concerns about how others' trademark rights might endanger its business model)."

And so, the Board dismissed the opposition.

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TTABlogger comment: Another hat tip to FOB Roberto Ledesma.

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