TTABlog Test: Are MERCADO LIBRE and MERCADO LIVRE Confusable With FREEMARKET for Online Marketplace Services?

The USPTO refused to register the marks MERCADO LIBRE and MERCADO LIVRE in the word-and-design forms shown below, for "Operating online marketplaces for sellers of goods and services," finding confusion likely with the registered mark FREEMARKET for "operating online marketplaces for downloadable electronic media; online trading services in which sellers post items to be auctioned and bidding is done electronically. The involved services overlap, but what about the marks? How about the translations? How do you think this came out? In re MercadoLibre, Inc., Serial Nos. 88950207 and 889504201 (July 17, 2023) [not precedential] (Opinion by Judge Robert H. Coggins).

Translation Requirement: The examining attorney contended that applicant’s proffered translations of the wording MERCADO LIBRE and MERCADO LIVRE as "independent marketplace" or "free commerce," were "not legally inaccurate." Rather, he maintained, the most accurate translation is "free market." The Board sided with the applicant.

We take judicial notice that “free market” means “[a]n economic market in which supply and demand are not regulated or are regulated with only minor restrictions.” *** There is no evidence adduced by the Examining Attorney to suggest that MERCADO LIBRE or MERCADO LIVRE means “free market” as thusly defined in English.

The Board found the record to be "inconclusive as to what the most accurate English translations of MERCADO LIBRE and MERCADO LIVRE would be to U.S. consumers. The Examining Attorney has not developed the record well enough to meaningfully defend the position that the most accurate translation of MERCADO LIBRE and MERCADO LIVRE is 'free market.'"

And so, the Board reversed the refusal to register based on the requirement under Trademark Rules 2.32(a)(9) and 2.61(b) that applicant to submit a more accurate, English translation of the foreign wording in the mark.

Likelihood of Confusion: The applicant did not dispute that the involved services are legally identical. The Board, therefore, must presume that they are offered through the same channels of trade to the same classes of purchasers. Thus the second and third DuPont factors weighed in favor of a finding of likely confusion.

As to the marks, the "crux" of the examining attorney's argument was that the wording in applicant's marks "translate into English as “free market” from either Spanish or Portuguese, which are each common, modern languages spoken in the United States, and as such, the ordinary American purchaser would likely stop and translate the foreign wording in Applicant’s marks into 'the same wording in the registered mark.'"

The Board, however, was persuaded that the doctrine of foreign equivalents does not apply here, observing that "where the evidence shows that the English translation is not exact, literal, or direct, the doctrine of foreign equivalents has generally not been applied to find the marks confusingly similar." Here, "[t]he record does not demonstrate that the English translation of MERCADO LIBRE and MERCADO LIVRE as 'free market' is unambiguously literal and direct, with no other relevant connotations or variations in meaning."

Viewing applicant's marks in there entireties, the Board concluded that "they are different in sound, appearance, and commercial impression. Moreover, in view of the lack of equivalency in meaning ... any possible similarity in meaning does not outweigh the strong dissimilarities. As such, the first DuPont factor favors Applicant."

Conclusion: Deeming the first factor dispositive, the Board reversed the Section 2(d) refusals.

Read comments and post your comment here.

TTABlogger comment: Maybe we should call it the doctrine of exact equivalents?

Text Copyright John L. Welch 2023.