Window into a foreign language? The answer’s hiddenScott J. Slavick
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In trademark law, the doctrine of foreign equivalents is intended to protect consumers from confusion or deception caused by the use of terms in different languages.
In some cases, an applicant will adopt as a trademark a word in a foreign language that is either generic or merely descriptive of its goods, or will adopt as a mark a foreign-language word which shares the same meaning as an existing mark to speakers of that language. The Trademark Manual of Examining Procedure states that the test for applying the doctrine of foreign equivalents is "whether, to those buyers familiar with the foreign language, the word would denote its English equivalent."
When the doctrine is applicable, the rule requires courts and the Trademark Trial and Appeal Board to translate foreign words, to determine whether they are registrable as trademarks or are confusingly similar with existing marks. With respect to descriptive or generic marks, the rule specifies that in determining whether a foreign term is entitled to registration, the test is whether the word would have a descriptive connotation or a generic one to those buyers familiar with the foreign language. Excepted from this proviso, however, are foreign words from dead or obscure languages that may be so unfamiliar to the current purchasing public that they should not be translated into English for descriptiveness purposes.
It is less clear, however, whether the test differs for asserted cases of likelihood of confusion. As the United States increasingly becomes a polyglot culture and as marketers continue to finely tune offerings to different communities in different languages, matters addressing the finer points of the doctrine before the Trademark Trial and Appeal Board are sure to continue.
The U.S. Court of Appeals for the Federal Circuit recently explained that when it is unlikely a buyer will translate the foreign mark and will take it as it is, then the doctrine of foreign equivalents should not be applied in determining a likelihood of confusion. The court in fact held that the doctrine of foreign equivalents is not an absolute rule and should be viewed merely as a guideline. In that case, the court specifically found that it was improbable that the average purchaser would stop and translate the French word veuve into its English equivalent, window.
This bring us to the TTAB's March 23 precedential ruling in In re Highlights for Children Inc., Serial No. 85/838,981, holding that the marks Imágenes Escondidas and Hidden Pictures were not the same mark for acquired distinctiveness purposes. The Board refused to register the former for being merely descriptive of "books and magazines for children." Even though the phrase imágenes escondidas means "hidden pictures" in Spanish, the Board ruled that the acquired distinctiveness of the registered Hidden Pictures mark could not be transferred to Imágenes Escondidas.
The Board acknowledged that Imágenes Escondidas translates directly to "hidden pictures." But it maintained that in this case the doctrine of foreign equivalents did not apply because consumers would not "stop and translate the mark" in light of the manner in which the mark is used. Here, the applicant always depicted Imágenes Escondidas right next to Hidden Pictures on the applicant's bilingual puzzle publications. Because they are always right next to each other, the Board felt that there would never been a need to translate the mark.
In response, the Board pointed out that the applicant was applying to register Imágenes Escondidas alone and therefore, the Board had to assume that Imágenes Escondidas would be used alone, without a translation. Second, the Board felt that when the translation was provided, the consumer would still recognize the terms as equivalent. In short, the Board felt that the policy basis behind the doctrine of foreign equivalents should apply whether a translation is made by the purchaser or provided to the purchaser, because the result is the same.
The applicant then 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." I found this a particularly interesting argument because it showed an incongruity between the mark itself and the goods for which the mark is used. 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 felt comfortable, based on those extended definitions, that hidden pictures was merely descriptive of a feature of the goods.
As a fallback, the applicant then argued that if the Board were not to accept that Imágenes Escondidas is inherently distinctive, then the phrase has at least acquired distinctiveness: this in view of the applicant's existing federal trademark registration for Hidden Pictures, which was based on acquired distinctiveness, for virtually the same goods and in view of the fame and recognition of the applicant's Hidden Pictures mark.
With respect to the prior registration argument, the Lanham Act does provide that ownership of a prior registration of the same mark may be accepted as prima facie evidence of distinctiveness if the involved goods are sufficiently similar. But the question of whether a foreign translation of a registered English language mark is the same mark as that English mark is an issue of first impression.
For example, in Dial-A-Mattress, the Federal Circuit has explained that a proposed mark should be considered the "same mark" if it is the "legal equivalent" of that mark. A mark is the legal equivalent of another mark if it creates the same, continuing commercial impression, so that the consumer encountering the new mark would consider it the same mark as the earlier registered version.
Applying the standard articulated in Dial-A-Mattress, the TTAB found the answer readily: Even though the Spanish phrase imágenes escondidas has the same meaning as hidden picture, it is not the same mark as Hidden Pictures. The Board explained that the two marks are obviously different aurally and visually and, following Dial-A-Mattress, no other evidence need be considered.
The Board also 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 the 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. Instead, the Board explained that the legal equivalency of two marks 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. Obviously, 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 properly established the fame of the Hidden Pictures mark, and if so, whether Spanish-speaking consumers who translate the applied-for mark Imágenes Escondidas to Hidden Pictures will immediately recognize it as an indicator of its source. The Board felt that the applicant's evidence was minimal on this point and primarily concerned its Highlights mark, rather than its Hidden Pictures mark. 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 mark had successfully achieved recognition among the consuming public.
However, the strength of the Hidden Pictures mark did not automatically mean that Spanish-speaking consumers would immediately recognize that Imágenes Escondidas represents the same source of as Hidden Pictures. Lacking additional evidence showing that Spanish-speaking consumers in the United States recognize that Imágenes Escondidas is an indicator of origin of the applicant's goods, especially when the applicant has not used Imágenes Escondidas in the United States, the Board rejected the applicant's argument.
The Board therefore affirmed the mere descriptiveness refusal. But it invites a further question: Had Highlights for Children, Inc. conducted a consumer survey, and had the results proven positive, might the organization might have prevailed? Was it just that Highlights for Children lacked strong independent evidence? Or would the Board have rejected the applicant's argument regardless, because no survey could show that Imágenes Escondidas and Hidden Pictures sound or look the same?
The question remains unanswered. It will be for the next applicant to put up a strong survey to see how the Board continues to create law in this area. With more and more applicants attempting to target speakers of languages other than English, this is an area of trademark law that certainly will continue to evolve.
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Reprinted with permission from the May 12, 2016 edition of Inside Counsel© 2016 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or email@example.com.