Monday, March 28, 2016

Precedential No. 6: IMÁGENES ESCONDIDAS and HIDDEN PICTURES Not the Same Mark, TTAB Affirms Mere Descriptiveness Refusal

Ruling that the marks IMÁGENES ESCONDIDAS and HIDDEN PICTURES are not "the same mark" for Section 2(f) purposes, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal to register the former for "books and magazines for children." Although IMÁGENES ESCONDIDAS means "hidden pictures" in English, the Board ruled that the acquired distinctiveness of the registered HIDDEN PICTURES mark could not be transferred to IMÁGENES ESCONDIDAS. In re Highlights for Children, Inc., 118 USPQ2d 1268 (TTAB 2016) [precedential].

Mere Descriptiveness: Although applicant provided a translation of IMÁGENES ESCONDIDAS as "hidden pictures," it maintained that the doctrine of foreign equivalents would not apply because consumers would not "stop and translate the mark" in light of the manner in which the mark is used: i.e., the mark will always appear along with the English HIDDEN PICTURES on applicant's bilingual puzzle publications, and so there will be no need to translate the mark.

The Board was unmoved. First, because applicant is applying to register the mark IMÁGENES ESCONDIDAS alone, the Board must assume it will be used alone, without a translation. Second, when the translation is provided, the consumer will still recognize the terms as equivalent. In short, the policy basis of the doctrine of equivalents applies: "whether a translation is made by the purchaser or provided to the purchaser; the result is the same." (Emphasis by the Board).

Next, applicant argued that "hidden pictures" is not merely descriptive of a feature or characteristic of its goods because its puzzles involve locating objects that are not concealed, but rather are "right before your very eyes." Thus, according to applicant, "hidden" in this context is not descriptive but ironic. The Board again was unmoved. Dictionary definitions of "hidden" include "unseen" and "not readily apparent." The Board had no doubt that "hidden pictures" is merely descriptive of a feature of the goods.

Acquired Distinctiveness: Applicant claimed acquired distinctiveness under Section 2(f) in view of its existing Section 2(f) registration for HIDDEN PICTURES for "magazines, puzzlebooks, and an ongoing feature in Highlights for Children magazine," and also in view of the fame and recognition of the HIDDEN PICTURES mark.

As to the prior registration, Trademark Rule 2.41(a)(1) provides that ownership of a prior registration of the same mark" may be accepted as prima facie evidence of distinctiveness if the involved goods or services are sufficiently similar. In Dial-A-Mattress, the CAFC explained that a proposed mark is the "same mark" if it is the "legal equivalent" of that mark: "A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark. *** No evidence need be entertained other than the visual or aural appearance of the marks themselves." Id.

The question of whether a foreign translation of a registered English language is the "same mark" as the English language mark under Rule 2.41(a)(1) is an issue of first impression.

Applying the Dial-A-Mattress standard, the Board found the answer to be readily apparent: "IMÁGENES ESCONDIDAS, even though it has the same meaning as HIDDEN PICTURE, is not 'the same mark' as HIDDEN PICTURES." They are different aurally and visually, and according to Dial-A-Mattress no other evidence need be considered.

The Board observed that, according to the Supreme Court in Hana Bank, "the question of whether two marks give the same impression to consumers 'involves a factual judgment,'" but applicant did not provide any evidence "demonstrating that consumers would consider IMÁGENES ESCONDIDAS and HIDDEN PICTURES to be the same mark even if they understood the equivalence in meaning."

Contrary to applicant's argument, the legal equivalency of two marks for purposes of Rule 2.41(a)(1) is not dependent on whether a consumer will stop and translate the mark, but on whether the marks create the same commercial impression.

In other words, whether two marks are foreign equivalents is a different question than whether two marks give consumers the same commercial impression. As noted, the marks are not similar in sound or appearance, and there is no evidence in the record demonstrating that IMÁGENES ESCONDIDAS and HIDDEN PICTURES create the same continuing commercial impression.

The Board next considered whether the record evidence established the fame of the HIDDEN PICTURES mark, and if so, whether Spanish-speaking consumers who translate the applied-for mark to HIDDEN PICTURES will immediately recognize it as an indicator of source. Applicant's evidence, however, was minimal and primarily concerned its HIGHLIGHTS mark, rather than HIDDEN PICTURES. Nonetheless, in view of the length of use and the number of magazines in or on which the mark HIDDEN PICTURES has appeared, the Board found that HIDDEN PICTURES "has achieved recognition among the consuming public."

However, the strength of the HIDDEN PICTURES mark "does not ipso facto mean that Spanish speaking consumers will immediately recognize that IMÁGENES ESCONDIDAS represents the same source of "books and magazines for children" as HIDDEN PICTURES.

Without additional evidence showing that Spanish-speaking consumers in the United States recognize that IMÁGENES ESCONDIDAS is an indicator of origin in Applicant, especially when Applicant has not used IMÁGENES ESCONDIDAS in the United States, we find Applicant’s argument to be unconvincing.

The Board therefore affirmed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog comment: Interesting that applicant cold show acquired distinctiveness for the applied-for mark in the United States, even though the goods have not been sold in the United States.

Text Copyright John L. Welch 2016.


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