The Trademark Trial and Appeal Board (TTAB) recently decided that a foreign-language translation of a mark registered in English is not the 'same mark' as the previously registered mark. This means that a prior registration in English does not necessarily give its foreign-language translation acquired distinctiveness.
Highlights for Children, Inc is a producer of materials for children, such as its Highlights magazine. Highlights sought to register the standard character mark 'Imágenes Escondidas' for "books and magazines for children," alleging bona fide intent to use the mark in commerce. Highlights submitted a statement to the examining attorney that the English translation of 'imágenes escondidas' is 'hidden pictures'. Highlights also claimed that its 'Imágenes Escondidas' mark had acquired distinctiveness under Section 2(f) of the Trademark Act.(1) In doing so, Highlights put forth its ownership of three HIDDEN PICTURES registrations – with 'Pictures' disclaimed – for:
- puzzle books; and
- an ongoing feature in Highlights for Children magazine.
The examining attorney refused registration of the 'Imágenes Escondidas' mark under Section 2(e)(1) of the Trademark Act, finding that:
- 'Imágenes Escondidas' was equivalent to 'hidden pictures', which merely described the applicant's goods;
- the foreign equivalent of a term that is merely descriptive in English cannot be registered; and
- the doctrine of foreign equivalents applied to the applicant's mark.
The examiner also refused Highlights' alternative claim that 'Imágenes Escondidas' had acquired distinctiveness. Highlights appealed.
On the matter of mere descriptiveness, the TTAB found that 'Imágenes Escondidas' had a definite English translation, and a typical Spanish-speaking consumer would either stop and translate the proposed mark or recognise the terms as equivalent (because of the already provided translation). Highlights argued that the term 'Imágenes Escondidas' was not merely descriptive of a feature of its product, and maintained that the definition of 'hidden' is "kept out of sight, concealed", while its puzzles involved locating objects "right before your very eyes".
The TTAB disagreed, stating that definitions of 'hidden' can include terms such as 'unseen' and 'not readily apparent', both of which were characteristic of Highlights' product. Highlights' registration on the supplemental register and under Section 2(f) for previous HIDDEN PICTURES marks provided evidence that the mark was merely descriptive, and its registrations in Spanish-speaking countries were unpersuasive.
Next, the TTAB turned to Highlights' claim of acquired distinctiveness. Highlights relied on a previous registration for HIDDEN PICTURES – with 'Pictures' disclaimed – and on alleged fame and recognition of the HIDDEN PICTURES mark. It claimed Spanish-speaking consumers who translated the 'Imágenes Escondidas' mark would "immediately recognize it as an indicator o[f] origin in Applicant".
The issue of whether a foreign-language translation of a mark registered in English is the 'same mark' as the previously registered mark under Trademark Rule 2.41(b) was an issue of first impression for the TTAB. Turning to In re Dial-A-Mattress Operating Corp,(2) the TTAB reiterated that a proposed mark is the 'same mark' as a previously registered mark if it is the 'legal equivalent' of that mark; and a mark is a "legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark".
Using this standard, the TTAB asserted that 'Imágenes Escondidas' was not the same mark as HIDDEN PICTURES due to the readily apparent visual and aural differences between the marks, and that meaning alone was not enough to find the two marks the same. Highlights also provided no evidence that consumers would consider the two marks to be the 'same mark' even if they knew the two marks had the same meaning. Thus, 'Imágenes Escondidas' and HIDDEN PICTURES could not be considered the 'same mark', and the prior registration for HIDDEN PICTURES did not give 'Imágenes Escondidas' acquired distinctiveness.
The TTAB finally considered Highlights' argument of alleged fame and recognition of the HIDDEN PICTURES mark. Highlights offered information pertaining to alleged fame, but the submitted evidence was "minimal" and concerned the applicant's HIGHLIGHTS mark more than its HIDDEN PICTURES mark. The TTAB found that the evidence was enough to show recognition of HIDDEN PICTURES by consumers, but not enough to indicate that Spanish-speaking consumers who translated the mark would automatically recognise it as an indicator of the applicant. Therefore, the evidence was insufficient to demonstrate acquired distinctiveness of 'Imágenes Escondidas'. The 'Imágenes Escondidas' mark was merely descriptive of the goods and Highlights failed to make an adequate showing that the mark had acquired distinctiveness.
This decision should encourage applicants seeking a foreign-language mark with a registered English translation to offer substantial evidence that consumers would recognise the foreign-language mark as the 'same mark' as the registered mark.
For further information on this topic please contact Timothy J Kelly, Rachael Million-Perez or Kathryn E Easterling by telephone (+1 212 218 2100) or email ([email protected], [email protected] or [email protected]). The Fitzpatrick, Cella, Harper & Scinto website can be accessed at www.fitzpatrickcella.com.
(1) In re Highlights for Children, Inc (Serial No 85838981).
(2) In re Dial-A-Mattress Operating Corp, 240 F3d 1341, 57 USPQ2d 1807 (Fed Cir 2001).