Third-party marks using a translation do not show a foreign-word mark is weak
Applicants who argue that a cited mark is weak must show third parties using the shared term itself, not its English meaning. And a handful of web captures will not prove a crowded field in a large national market, because the Board ties the number of uses needed to the number of sellers in that market.
When an applicant argues that a registered foreign-word mark is weak, third-party marks that contain only the English translation of that word do not count. Under the sixth DuPont factor, third-party marks show weakness when they share the element common to both parties' marks, and a shared meaning is not a shared element. The Board drew that line from the Federal Circuit's language in Spireon and Jack Wolfskin, and compared the situation to August Storck, the DANKE and MERCI opposition, in which the parties' own marks shared only a meaning (at 18 n.23, 28). The same opinion addresses how many third-party uses make a crowded field when the record says nothing about their extent. It reads Juice Generation and Jack Wolfskin as setting no number, and it ties the number needed to the size of the market (slip op. at 27–28, 37–38).
The rule
Translations are not the common element. The sixth factor asks about "similar marks in use on similar goods." The Federal Circuit has said that third-party registrations "containing an element that is common to both" parties' marks can show that the element has a well-recognized descriptive or suggestive meaning. The Board emphasized the word "common" and held that third-party marks without that element are not probative of its conceptual weakness under the sixth factor (at 27–28). The doctrine of foreign equivalents is ordinarily applied under the first factor, to compare the parties' own marks (at 27). The Board declined to carry it into the sixth factor on this record.
The limit is in a footnote: "there may be circumstances, based on a different factual record," where applying the doctrine to third-party marks under the sixth factor would be appropriate (at 28 n.29). The Board did not say what such a record would contain.
Volume without proof of extent is measured against the market. Third-party use evidence normally depends "entirely upon" the extent of the use (Palm Bay). The exception is evidence voluminous enough to be "powerful on its face," as in Juice Generation (26 marks) and Jack Wolfskin (14 notable examples). The Board held that those cases set no threshold. "There can be no bright-line number." The number needed depends on the facts of each case, "including the number of sellers in the United States market for the involved goods or services, and other factors" (at 34–38).
Smaller rules on the same evidence. Cancelled registrations and abandoned applications have no probative value, and the question is whether a registration subsists when the Board decides, not when the evidence was filed (at 22 & n.27). A third-party registration is read at its full scope, so "alcoholic beverages except beer" covers wine (at 23–24). Relatedness of the third parties' goods must be proven, and "there is no per se rule that holds that all alcoholic beverages are related" (at 24). An opposer that has enforced its mark against certain goods is "hard pressed to deny" that those goods are similar for sixth-factor purposes (at 25). Composite third-party marks that contain the common term still count under Spireon, for whatever weight they carry (at 29–30).
What it changes
The following is the editors' view, not part of the decision.
- Weakness arguments need the exact term. An applicant facing a foreign-word mark should search for third-party uses and registrations of that word, not its translation. Footnote 29 leaves room for a translation-based argument, but a party making one should expect to build a record showing why consumers would treat the translation and the foreign word as the same element.
- Use evidence needs exposure data or real volume. Screenshots without sales, distribution or other evidence of exposure will be weighed against the size of the market. In a large national market, a few captures will not be enough.
- Enforcement history cuts both ways. Oppositions an owner has brought against marks for neighboring goods can be used to show those goods are "similar" when the other side assembles third-party marks.
- Brand owners with foreign-word marks may find that registrations of the English equivalent by others do little to narrow their protection.
The case
Cielo e Terra, an Italian winery, has sold CIELO wine in the United States since 1978 and owns a registration for CIELO for wines. A Baja California resort applied to register O EL CIELO VALLE DE GUADALUPE for wine, with the geographic wording disclaimed (at 3–5). The applicant's weakness evidence was nineteen third-party records, including seven subsisting SKY marks for wine, and five winery web pages captured on one day in April 2025 (at 19, 22, 28, 32). With the SKY marks set aside and the remaining CIELO composites showing at most that "cielo" is "mildly suggestive of some celestial quality," the sixth factor was neutral (at 31–32, 38). The goods were identical, EL CIELO dominated the applied-for mark, and the Board found it "probably inevitable" that wine drinkers would shorten it to "El Cielo" when ordering. The opposition was sustained (at 10, 41–48, 56).
Data angle. The Board applied the same reasoning to both sides' numbers. The opposer's sales figures were "not negligible" but lacked the context to show their significance in a "vast" market, and the mark was found of average strength (at 15–17). The applicant's five uses failed for the same want of a denominator (at 38). Neither party put in evidence of how many wine brands are sold in the United States.
Two smaller points
The examining attorney's withdrawal of a §2(d) refusal carries no weight in an opposition; the Board called the contrary argument "specious" (at 8–9 n.11). And good-faith adoption "typically does not aid an applicant" (at 9 n.11).