TTAB sustains the Cielo opposition to O EL CIELO VALLE DE GUADALUPE

The decision

Opposition No. 91287216 is Cielo e Terra, S.p.A. v. Hoteles y Viñedos del Valle de Guadalupe S.A. de C.V. The applicant sought to register the standard character mark O EL CIELO VALLE DE GUADALUPE for "wine" (Application Serial No. 97425137). The opposer relied on its Registration No. 2384406 for the standard character mark CIELO for wines and opposed under Section 2(d). In an opinion designated as a precedent of the TTAB, written by Administrative Trademark Judge Larkin for a panel with Judges Wellington and Goodman, the Board sustained the opposition.

The Board's findings

The Board found the goods identical, found the words EL CIELO to be the dominant portion of the applicant's mark, and concluded that consumers who know CIELO for wine are likely to believe mistakenly that wine sold under O EL CIELO VALLE DE GUADALUPE comes from the same source. It gave CIELO the normal scope of protection. The applicant argued that CIELO is weak, relying in part on third-party registrations of marks that include "sky" or "heaven" for wine under the doctrine of foreign equivalents. The Board held that the registered SKY-formative marks, none of which contains the word CIELO, are not probative of the conceptual weakness of the opposer's mark, while noting that a different factual record could make it appropriate to apply the doctrine of foreign equivalents to third-party marks.