Decisions · 85838981
In re Highlights for Children, Inc.
Serial No. 85838981 · Decided 2016-03-21 · Other
What happened
The Board refused Highlights for Children’s application to register IMÁGENES ESCONDIDAS (Spanish for “hidden pictures”) for children’s books and magazines, finding the phrase simply describes the hidden-object puzzles in the goods and that the long success of the English HIDDEN PICTURES mark did not carry over to the Spanish version, which had never been used in the United States.
The marks
Applicant
IMÁGENES ESCONDIDAS
"Books and magazines for children" in Class 16
How the marks compared
| Dimension | Finding | What the Board said |
|---|---|---|
| sound | Dissimilar | For the acquired-distinctiveness comparison, the Board found the Spanish and English marks entirely different aurally. |
| appearance | Dissimilar | The Board found the marks entirely different visually. |
| meaning | Similar | IMÁGENES ESCONDIDAS translates directly to “hidden pictures,” and applicant’s own translation statement conceded the equivalence in meaning. |
| commercial impression | Dissimilar | The marks do not create the same continuing commercial impression, and no evidence showed consumers would consider them the same mark. |
Despite identical meaning under the doctrine of foreign equivalents, the Spanish and English marks look and sound entirely different and do not create the same continuing commercial impression, so they are not legal equivalents.
Why this decision is significant
Precedential decision resolving an issue of first impression: a foreign-language translation of a registered English mark is not the ‘same mark’ for Trademark Rule 2.41(a)(1) purposes, so acquired distinctiveness in HIDDEN PICTURES could not be transferred to IMÁGENES ESCONDIDAS; a key doctrine-of-foreign-equivalents authority.
Research significance is Trademark Valet's editorial rating of how useful a decision is to practitioners. It is not a statement of precedential weight — that is the separate Precedential field, which comes from the Board.
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The original record
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