Highlights for Children publishes children’s puzzle books under the trademark HIDDEN PICTURES®. As you have probably guessed, the books feature hidden picture puzzles. Highlights owns registrations for the HIDDEN PICTURES mark, including one on the Supplemental Register and one on the Principal Register, based on a claim of acquired distinctiveness under Section 2(f) of the Trademark Act. In this case, Highlights sought to register IMÁGENES ESCONDIDAS, which is Spanish for “hidden pictures.”
The Examining Attorney refused registration of the mark on the ground the mark is merely descriptive, and did not accept Highlights’ alternative claim that the mark had acquired distinctiveness based on the distinctiveness of its foreign equivalent, “HIDDEN PICTURES.” Highlights appealed to the Trademark Trial and Appeal Board, and the Board’s opinion sets out a nice analysis of the doctrine of foreign equivalents.
Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine genericness, descriptiveness, and confusing similarity to English word marks. It is well-established that the foreign equivalent of a merely descriptive English word is no more registrable than the English word, despite the fact that the foreign term may not be commonly known to the general public. HIDDEN PICTURES is merely descriptive of the hidden picture puzzle books, thus, the Board ruled that refusal to register IMÁGENES ESCONDIDAS as merely descriptive was proper.
Highlights argued that the doctrine of foreign equivalents should not apply because consumers would not “stop and translate” the mark; both the Spanish-language mark and the English-language HIDDEN PICTURES mark appear on the books. Since Highlights was seeking to register IMÁGENES ESCONDIDAS by itself, however, the Board confirmed it must assume the mark will be used alone without the English translation. The Board went on to state that, when the foreign words appear next to the English language equivalents, purchasers will see the terms as equivalents because of the provided translation. Thus, the doctrine of foreign equivalents applies “whether a translation is made by the purchaser or provided to the purchaser.”
Highlights also argued that IMÁGENES ESCONDIDAS had acquired distinctiveness on the basis of Highlights’ registration on the Principal Register for HIDDEN PICTURES granted under Section 2(f). A prior registration for the same mark is prima facie evidence of distinctiveness of the applied for mark if the goods and services are sufficiently similar. But is IMÁGENES ESCONDIDAS the same mark as HIDDEN PICTURES? The Board ruled it is not. This was an issue of first impression and the Board found that “a proposed mark is the same mark as a previously-registered mark if it is the ‘legal equivalent’ of the previously-registered mark” and that marks are “legal equivalents” if they create the same consistent commercial impression. Highlights did not submit any evidence that consumers considered the marks to be the same. Absent any evidence, the Board found that because the two marks are entirely different aurally and visually, they are not legal equivalents and consumers would not consider them the same mark.
The Board confirmed the refusal of the application as being a merely descriptive foreign equivalent, and confirmed the refusal to allow Highlights to transfer the acquired distinctiveness in its HIDDEN PICTURES mark to IMÁGENES ESCONDIDAS because the marks are not legal equivalents.
In re Highlights for Children, Inc., Serial No. 85838981 (TTAB, March 21, 2016) [precedential].