IP Law Daily, TRADEMARK—TTAB: MERCADO LIBRE and MERCADO LIVRE marks not likely to cause confusion with registered mark FREEMARKET, (Jul 19, 2023)

By Anne H. Gibson, J.D., LL.M.

Applicant and Examining Attorney disagreed about appropriate translations of the marks; Examining Attorney chastised for citing online translation websites rather than authoritative sources.

Despite the Examining Attorney’s arguments to the contrary, the marks MERCADO LIBRE and MERCADO LIVRE were not so clearly equivalent in meaning to the registered mark FREEMARKET that they were likely to cause confusion, the Trademark Trial and Appeal Board has held. The Examining Attorney rejected the applications for both marks, arguing that the applicant had not submitted an appropriate English translation of the marks, which he felt should be “free market.” He also refused registration on the ground that, using his translation, the marks were likely to cause confusion with the existing mark FREEMARKET. The applicant argued, however, that “free market” was not the only possible or the most accurate translation of the marks from Spanish and Portuguese, respectively, and that, consequently, the marks were not similar to FREEMARKET and confusion was not likely. The Board agreed and reversed the refusal to register (In re: MercadoLibre, Inc., July 17, 2023, Coggins, R.).

MercadoLibre, Inc. sought to register the composite marks MERCADO LIBRE and MERCADO LIVRE, each accompanied by a design of a handshake in an oval, for “operating online marketplaces for sellers of goods and services,” and related activities, in International Class 35. The Examining Attorney refused registration on the grounds that MercadoLibre had not provided appropriate English translations of the marks and because, when translated, they were so similar to the registered mark FREEMARKET as to be likely to cause confusion. The standard character mark FREEMARKET is registered for “operating online marketplaces for downloadable electronic media; online trading services in which sellers post items to be auctioned and bidding is done electronically,” in International Class 35. MercadoLibre appealed.

Judicial notice of dictionary definitions. The Board first noted that MercadoLibre had offered 17 exhibits of new evidence with its appeal brief and had asked the Board to take judicial notice of them. The Board noted that it “may take judicial notice of U.S. dictionary definitions, including online dictionaries, definitions in technical dictionaries, and translation dictionaries that exist in printed format,” but not online translation services or foreign sources. Consequently, it took judicial notice of four of the exhibits, but disregarded the remainder.

English translation requirement. The Board then considered the Examining Attorney’s assertion that MercadoLibre had failed to provide “the most accurate translation” of MERCADO LIBRE and MERCADO LIVRE, from Spanish and Portuguese, respectively, as required. The Examining Attorney argued that Mercado Libre’s proffered translations of “independent marketplace” or “free commerce” were not the best translations, and that the most accurate translation of the marks was “free market.” He relied on online dictionaries and translation websites for this conclusion and did not provide evidence from the Trademark Librarian, as required by the Trademark Manual of Examining Procedure. MercadoLibre argued that the Examining Attorney’s view of the translation was too narrow, and that multiple translations of the words were possible. Additionally, there was no evidence provided that the phrases “mercado libre” in Spanish or “mercado livre” in Portuguese were directly equivalent to the phrase “free market” in English, even if each word could be translated in that way.

The Board agreed. “The lack of corroborating evidence from any authoritative source undercuts the Examining Attorney’s position which is based solely on translations conjured by online or machine-translating sites.” The Board also registered its frustration regarding the lack of authoritative sources cited by the parties and the fact that it was forced to consult dictionaries on its own. “The Board should not be left to chase down translations and meanings in this manner.” It found that the record did not support the Examining Attorney’s requirement that MercadoLibre submit a more accurate translation and that the applicant’s translations were in fact the more accurate. Accordingly, the refusal to register the marks based on MercadoLibre’s failure to submit a more accurate English translation was reversed.

Likelihood of confusion. The Board then turned to the question of the likelihood of confusion between the MERCADO LIBRE and MERCADO LIVRE marks and the registered mark FREEMARKET. The Board examined the DuPont factors for which there was evidence and argument. In particular, it looked at (1) the similarity of the services, channels of trade, and consumers, (2) the similarity of the marks, and (3) evidence of actual confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973).

Similarity of the services, trade channels, and classes of purchasers. Turning first to the factor of the similarity of the services offered, the Board found that the services offered were “legally identical in part.” Consequently, the trade channels and consumers were also presumed to be the same. These factors thus weighed in favor of a likelihood of confusion.

Foreign equivalents.The Board next looked at the issue of the similarity of the marks, noting that the parties disagreed about whether the rule of foreign equivalents should apply. Under this doctrine, “foreign words from common languages are translated into English to determine genericness, descriptiveness, as well as similarity of connotation in order to ascertain confusing similarity with English word marks.” The Board found that it did not apply in the current case. The doctrine was reserved for those situations in which the words are synonyms, and the fact that multiple translations could apply “persuades us that the doctrine does not apply here.”

Similarity of the marks. The Board determined that the marks MERCADO LIBRE and MERCADO LIVRE, without being translated, were not similar in sound or appearance, or in commercial impression to the registered mark FREEMARKET. “Moreover, in view of the lack of equivalency in meaning… any possible similarity in meaning does not outweigh the strong dissimilarities.” It found that the marks were not similar and that this factor weighed against a likelihood of confusion.

After determining that the lack of evidence of actual confusion was a neutral factor, the Board found that, on balance, the DuPont factors weighed against a likelihood of confusion. “The dissimilarities of the marks simply outweigh the other factors.” The Board thus reversed the refusal to register the marks based on a likelihood of confusion.

The Case is Serial Nos. 88950207 and 889504201.

Attorneys: Kristina Montanaro Schrader and Maia T. Woodhouse (Adams and Reese LLP) for MercadoLibre, Inc. Jason Nehmer, Trademark Examining Attorney, for USPTO.

Companies: MercadoLibre, Inc.

Cases: Trademark USPTO