The Board says O EL CIELO VALLE DE GUADALUPE cannot register for wine over CIELO

Precedent Alert · September 3, 2026 decision · Precedential

The Trademark Trial and Appeal Board (the Board) is the U.S. Patent and Trademark Office panel that decides challenges to trademark registrations and appeals from refused applications. The Board designated this opinion precedential, meaning it binds the Board in later cases.

Hoteles y Viñedos del Valle de Guadalupe S.A. de C.V. sought a registration, a formal trademark record, for O EL CIELO VALLE DE GUADALUPE for wine. Cielo e Terra, S.p.A., which holds a CIELO registration for wines, filed an opposition, a challenge to the requested registration. The Board found that buyers could think the two wines came from the same source and refused the requested registration. Opinion, pp. 1–2, 56.

Source: the Board’s complete opinion in case 91287216, with page citations below. This report describes the decision; it is not legal advice.

What later cases must follow

For the sixth DuPont factor, one consideration in the Board’s list for judging whether buyers may confuse the source of goods, the Board held that other owners’ SKY wine registrations did not show CIELO was weak because those marks lacked the word shared by the parties’ marks. It left open whether translations of other businesses’ marks could matter on a different factual record. The Board also applied a rule requiring evidence that another alcoholic drink is similar to wine before a mark for that drink can count in judging the strength of a wine mark. Here, it treated Cielo e Terra’s earlier challenges involving agave liquor as enough evidence to consider an agave liquor mark. Opinion, pp. 24–25, 28.

Hoteles y Viñedos argued that registrations held by others showed CIELO was a common industry word and a weak signal of who made the wine. It also pointed to five winery websites using CIELO within longer wine names. Cielo e Terra responded that the websites did not show how much buyers had seen those names. Opinion, pp. 20, 33.

Cielo e Terra’s evidence showed sales of more than four million bottles of CIELO wine in the United States between 2013 and 2024. The Board found that the sales figures lacked context showing how they compared with the wider wine market. It found CIELO to be of average strength. The Board found that the five website snapshots did not show how many buyers encountered the other CIELO wine marks. Opinion, pp. 12, 15, 17, 35.

The Board treated the wines as identical and presumed they would reach the same buyers through the same sales channels. It found EL CIELO was the main part of the requested mark because those were its first significant words. Hoteles y Viñedos disclaimed VALLE DE GUADALUPE, meaning it did not claim an exclusive right to those words apart from the complete mark. It found wine buyers would probably shorten the requested name to EL CIELO when saying it aloud. The Board found the marks similar in appearance, sound and meaning. Opinion, pp. 2, 10, 41, 47–48.

Hoteles y Viñedos argued that years of simultaneous sales without evidence of actual buyer mix-ups weighed against a finding that buyers would confuse the wines. The Board found that the evidence did not show buyers had enough opportunity to encounter both marks for that absence to carry weight. Opinion, pp. 49–50.

The Board found no evidence that Hoteles y Viñedos intended to confuse buyers when choosing its mark. It sustained Cielo e Terra’s challenge because buyers could mistakenly believe the two wines came from the same source. Opinion, pp. 54, 56.

This report describes the decision as issued; it does not follow any later appeal.

Sources

• The Board’s complete opinion; GleanMark case record.