Likelihood of confusion under Section 2(d) is based on an analysis of the “facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion.” DowntownDC Bus. Improvement Dist. v. Clarke, No. 91275100, 2024 WL 4449409, at *18 (TTAB 2024) (citing In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”)). 

“The weaker an opposer's mark, the closer an applicant's mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Heil Co. v. Tripleye GmbH, No. 91277359, 2024 WL 4925901, at *21 (TTAB 2024) (quoting Juice Generation, 794 F.3d at 1338 (internal citations omitted)). 

In Cielo e Terra, S.p.A. v. Hoteles y Viñedos del Valle de Guadalupe S.A. de C.V., Opposition No. 91287216 (TTAB Sept. 3, 2026) (precedential), the TTAB provided an extensive discussion of commercial weakness in considering evidence of third-party marketplace use of CIELO-formative marks for wine as to whether customers have been educated to distinguish between different marks on the bases of minute distinctions under the sixth DuPont factor, citing Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373 (Fed. Cir. 2005);  Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1339 (Fed. Cir. 2015), and Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millenium Sports, S.L.U., 797 F.3d 1363, 1374 (Fed. Cir. 2015)).   

     In Palm Bay, the Federal Circuit found unpersuasive the applicant's evidence of “five different alcoholic beverages that use the term VEUVE” that “at various points of time appeared in an industry trade publication, the Beverage Media Guide, which lists all beverage products in the wine and spirits categories sold by wholesalers to restaurants and retail stores in New York State,” id., and the applicant's evidence, obtained by its private investigator, that “six New York stores displayed for sale a VEUVE DE VERNAY sparkling wine as well as internet web sites and restaurant lists.” Id. at 1374.

     On its face, the third-party use evidence here is even less potent than the evidence found wanting in Palm Bay because here we have only “snapshots” of five websites displaying wine under a CIELO-formative mark in April 2025, and no information regarding the extent of consumer exposure to these third-party marks through the websites or sales of the goods. In the absence of any evidence regarding the exposure of these five third-party marks, they have little probative value in diminishing the commercial strength of Opposer's mark unless they are sufficient in number to fall within an important exception to the general rule that the “probative value of third-party trademarks depends entirely upon their usage.” Palm Bay, 396 F.3d at 1373 (citation omitted).

     After Palm Bay, the Federal Circuit decided several cases in which the court held that evidence of the extent and impact of third-party marks may not be required if the third-party mark evidence is “powerful on its face.” Juice Generation, 794 F.3d at 1339. In Juice Generation, where the opposer's marks were “PEACE & LOVE” formatives for restaurant services, and the applicant's mark was PEACE LOVE AND JUICE and design for juice bar services, the applicant “introduced evidence of a fair number of third-party uses of marks containing ‘peace' and ‘love' followed by a third, product-identifying term,” involving at least 26 different marks. Id. at 1339 & n.1. The Federal Circuit held that the Board erred when it “discounted the evidence because there were no specifics regarding the extent of sales or promotional efforts surrounding the third-party marks and, thus, what impact, if any, these uses have made in the minds of the purchasing public.” Id. (quotation and quotation marks omitted). The court held that the applicant's evidence was “nonetheless powerful on its face” because the “fact that a considerable number of third parties use similar marks was shown in uncontradicted testimony.” Id.

     On the heels of Juice Generation, the Federal Circuit decided Jack Wolfskin, in which the opposer's mark was KELME (stylized) and a paw design for clothing and the applicant's mark was an angled paw print for clothing. The court stated that the applicant “presented voluminous evidence of paw print design elements that have been registered and used in connection with clothing, but the Board largely discounted these examples.” Jack Wolfskin, 797 F.3d at 1373. The “voluminous evidence” involved at least 14 different third-party paw print marks. Id. at 1373 & n.2. The court held that the Board erred in not considering the “extensive evidence of third-party registrations depicting paw prints and evidence of these marks being used in internet commerce for clothing.” Id. at 1373. Citing Juice Generation, the court held that “such extensive evidence of third-party use and registrations is ‘powerful on its face,' even where the specific extent and impact of the usage has not been established.” Id. (quoting Juice Generation, 794 F.3d at 1339). The court concluded that the applicant's

evidence demonstrates the ubiquitous use of paw prints on clothing as source identifiers. Given the volume of evidence in the record, consumers are conditioned to look for differences between paw designs and additional indicia of origin to determine the source of a given product. Jack Wolfskin's extensive evidence of third-party uses and registrations of paw prints indicates that consumers are not as likely confused by different, albeit similar looking, paw prints. The Board's conclusion that this factor was neutral is not supported by substantial evidence.

Id. at 1374.

     Juice Generation and Jack Wolfskin bring to mind the adage that “quantity has a quality all its own.” These cases and their progeny stand for the proposition that where there is “voluminous” or “extensive” evidence of use of third-party marks, the specifics of the uses need not be proven to make the evidence probative of commercial weakness. They do not establish exactly how many third-party marks are required to show “voluminous” or “extensive” evidence of third-party marks, but we note in that regard that in Juice Generation, the Federal Circuit “refer[red] to 26 third-party marks as ‘a considerable number,'” Apex Bank, 156 F.4th at 1235 (quoting Juice Generation, 794 F.3d at 1337 n.1), and that in Jack Wolfskin, the Federal Circuit “highlight[ed] fourteen ‘notable examples of third-party registration and use.” Id. (quoting Jack Wolfskin, 797 F.3d at 1373 n.2). 

Noting "there can be no bright-line number of required third-party uses" for this fact-dependent inquiry, the TTAB noted that "the United States wine market is a vast one consisting of both domestic and foreign sellers." In context of that market, five unverified websites using the term ‘cielo' in connection with wine was not voluminous or extensive or “powerful on its face,” so as to distinguish similar marks based on "minute distinctions." 

With respect to conceptual weakness, for a registered mark with no claim of
acquired distinctiveness under Section 2(f), it is presumed to be "inherently distinctive, i.e., that it is at worst suggestive of the goods." Heil Co., 2024 WL 4925901, at *18 (citing 15 U.S.C. § 1057(b)).

CIELO was translated as “sky” or “heaven”; and the record included third-party registrations for marks that include ‘cielo,' ‘heaven,' or ‘sky' for wine, beer, and spirits. But the TTAB found that the third-party registrations and uses do not show that CIELO has a normally understood and well-recognized suggestive meaning with respect to wine. Rather, they show that “cielo” is mildly suggestive of some celestial quality of the goods, which does not establish the CIELO mark as being conceptually weak.

The TTAB also considered "actual market conditions" under the eighth DuPont factor, namely that the wines were actually sold in different channels of trade (even though they were presumed to travel through the same channels of trade under the third DuPont factor because the respective goods, namely wine, were identical). Finding there was not a significant opportunity for confusion to have occurred, this factor was deemed neutral. 

With respect to the thirteenth DuPont factor for bad faith adoption of a mark with an intent to confuse, an inference of bad faith “requires something more than mere knowledge of a prior similar mark.” Quiktrip West, Inc. v. Weigel Stores, Inc., 984 F.3d 1031, 1036 (Fed. Cir. 2021) (quotation and quotation marks omitted). With no evidence of Applicant's intent to confuse, the thirteenth DuPont factor was deemed neutral. 

Based on the record as a whole, the TTAB concluded that consumers with a general recollection of Opposer's CIELO mark for wine who separately encounter Applicant's mark O EL CIELO VALLE DE GUADALUPE for wine are likely to believe mistakenly that the goods have a common source.