Highlights for Children, Inc.

Trademark Trial and Appeal Board

Mar 21, 2016

No. 85838981 (T.T.A.B. Mar. 21, 2016)

This Opinion is a
Precedent of the TTAB

Mailed: March 21, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Highlights for Children, Inc.
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Serial No. 85838981

_____

Brian J. Downey of Barnes & Thornburg LLP,
for Highlights for Children, Inc.
Doritt Carroll, Trademark Examining Attorney, Law Office 116,
Michael W. Baird, Managing Attorney.
_____

Before Zervas, Ritchie and Hightower,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Highlights for Children, Inc. (“Applicant”) seeks registration on the Principal
Register of the proposed standard character mark IMÁGENES ESCONDIDAS for
“books and magazines for children” in International Class 16 based on an application
filed on February 1, 2013. Applicant alleges a bona fide intention to use the mark in
commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), and entered
a statement providing that the English translation of the proposed mark is “hidden
pictures.” In addition, Applicant claims in the alternative acquired distinctiveness of
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the mark pursuant to Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), and
ownership of three registrations, including Registration No. 28730631 for the mark
HIDDEN PICTURES in typed form2 for “magazines, puzzlebooks and an ongoing
feature in Highlights For Children magazine.”3 Registration No. 2873063, which
issued on the Principal Register under Section 2(f), includes a disclaimer of
PICTURES and recites June 15, 1946 as the date of first use and first use in
commerce.4
The Examining Attorney has refused registration of Applicant’s mark under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the
mark is merely descriptive of a feature of Applicant’s identified goods and has not
accepted Applicant’s claim in the alternative of acquired distinctiveness. After the
Examining Attorney issued a final Office Action, Applicant appealed and requested

1 Registered August 17, 2004 (renewed June 9, 2014).
2 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
A typed mark is the legal equivalent of a standard character mark. TRADEMARK MANUAL OF
EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (October 2015).
3 Applicant also claims ownership of:
● Registration No. 2847020 on the Supplemental Register for the mark HIDDEN
PICTURES for “computer software” with PICTURES disclaimed (registered May 25,
2004, renewed June 9, 2014); and
● Registration No. 2996030 on the Principal Register for the mark HIDDEN PICTURES
PLAYGROUND for “magazines, soft cover books, catalogs, newsletters, instructional
manuals containing educational and entertaining brainteasers, games, puzzles and
stories for children and young adults,” with PICTURES disclaimed and a claim of
acquired distinctiveness entered for HIDDEN PICTURES (registered September 13,
2005, Section 8 affidavit accepted).
4 In contrast to Applicant’s three existing registrations, each of which includes a disclaimer
of PICTURES, the involved application does not include a disclaimer of IMAGENES (the
Spanish word for “pictures”), a point we address later in this decision.
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reconsideration. The Examining Attorney denied the request for reconsideration, and
the Board resumed the appeal.
Section 2(e)(1) Mere Descriptiveness Refusal
A term is deemed to be merely descriptive of goods or services, within the meaning
of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the goods or services. In re
Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012); see also In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987);
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A
term need not immediately convey an idea of each and every specific feature of the
applicant’s goods or services in order to be considered merely descriptive; it is enough
that the term describes one significant attribute, function or property of the goods or
services. In re Chamber of Commerce, 102 USPQ2d at 1219. It is well-established that
the determination of mere descriptiveness must be made not in the abstract, but in
relation to the goods or services for which registration is sought. In re Abcor
Development, 200 USPQ at 218; In re Vehicle Identification Network, Inc., 32 USPQ2d
1542, 1544 (TTAB 1994) (descriptiveness of mark in an intent-to-use application
determined by services identified in application).
The Examining Attorney maintains that the wording IMÁGENES ESCONDIDAS
is equivalent to the term HIDDEN PICTURES, which is merely descriptive of a
feature of Applicant’s goods; that the foreign equivalent of a merely descriptive
English word is no more registrable than the English word itself, citing TMEP
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§ 1209.03(g); and that the doctrine of foreign equivalents applies to Applicant’s
proposed mark because the ordinary American purchaser with knowledge of Spanish
would stop and translate the foreign wording into its English equivalent. The
Examining Attorney cites In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489,
1492 (Fed. Cir. 2009), to support her contention that for modern languages such as
Spanish, “it is presumed that a consumer with knowledge of the language will stop
and translate” a term into English.5
Although Applicant provided a translation of the proposed mark as meaning
“hidden pictures,” it nonetheless asserts that the doctrine of foreign equivalents is
inapplicable to this case. In the alternative, Applicant contends that if the doctrine is
applicable, then it follows that any distinctiveness of its registered HIDDEN
PICTURES mark will readily attach to IMAGENES ESCONDIDAS. Each of these
arguments is discussed infra.
In descriptiveness cases:
It is a well[-]established principle of trademark law in this country
that the foreign equivalent of a merely descriptive English word is no
more registrable than the English word itself despite the fact that the
foreign term may not be commonly known to the general public. That is,
normally no distinction can be made between English terms and their
foreign equivalents with respect to registrability.

In re Optica International, 196 USPQ 775, 777 (TTAB 1977). “Foreign language
words, not adopted into the English language, which are descriptive of a product, are
so considered in registration proceedings despite the fact that the words may be

5 Examining Attorney’s Brief at unnumbered p. 5, 9 TTABVUE 6.
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meaningless to the public generally.” Nestle’s Milk Products, Inc. v. Baker Importing
Co., Inc., 182 F.2d 193, 86 USPQ 80, 82 (CCPA 1950) (citations omitted).
In Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005), the Federal Circuit stated:
Under the doctrine of foreign equivalents, foreign words from
common languages are translated into English to determine
genericness, descriptiveness, as well as similarity of connotation in
order to ascertain confusing similarity with English word marks. See In
re Sarkli, Ltd., 721 F.2d 353 (Fed. Cir. 1983); In re Am. Safety Razor Co.,
2 USPQ2d 1459, 1460 (TTAB 1987) (finding BUENOS DIAS for soap
confusingly similar to GOOD MORNING for shaving cream). When it is
unlikely that an American buyer will translate the foreign mark and
will take it as it is, then the doctrine of foreign equivalents will not be
applied. In re Tia Maria, Inc., 188 USPQ 524 (TTAB 1975) (no likelihood
of confusion between TIA MARIA for a Mexican restaurant and AUNT
MARY’s for canned vegetables).

***

The doctrine should be applied only when it is likely that the
ordinary American purchaser would “stop and translate [the word] into
its English equivalent.” In re Pan Tex Hotel Corp., 190 USPQ 109, 110
(TTAB 1976).

The “ordinary American purchaser” is not limited to those purchasers who speak
only English. “[R]ather, the term includes all American purchasers, including those
proficient in a non-English language who would ordinarily be expected to translate
words into English.” In re Spirits Int’l, 90 USPQ2d at 1492.6

6 Our consideration of the doctrine of foreign equivalents, therefore, is based on the implicit
presumption that the primary language of an ordinary American purchaser is English. See
In re Spirits Int’l, 90 USPQ2d at 1491 (“In Palm Bay, we noted that the doctrine of foreign
equivalents applies only in those situations where the ordinary American consumer would
stop and translate the mark into English … .”).
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Spanish is a modern language that is widely spoken in the United States, and
Applicant does not dispute this fact.7 See also In re La Peregrina Ltd., 86 USPQ2d
1645, 1648 (TTAB 2008) (“there is no question that Spanish is a common, modern
language”). Applicant, however, argues that consumers would not “stop and translate
the mark” because the manner in which it will use its proposed mark, described
below, obviates the need for translation:
Applicant will use the mark on bilingual puzzle books that build upon
the fame of Applicant’s HIDDEN PICTURES books. Attached to the
RFR [Request for Reconsideration] as Exhibit A are photos of the
IMÁGENES ESCONDIDAS books as currently sold internationally. As
can be seen, the IMÁGENES ESCONDIDAS mark always appears with
the English HIDDEN PICTURES mark (and the famous HIGHLIGHTS
mark).8

In short, Applicant argues that an ordinary purchaser will have no need to
translate a term that Applicant has already translated for the purchaser, and hence
the doctrine of foreign equivalents is inapplicable.
There are two fundamental problems with Applicant’s argument. First, its
application does not seek to register the English and Spanish terms asserted to be in
joint use outside the United States, and we must therefore assume that the applied-
for mark may be used without the translation. See, e.g., Denney v. Elizabeth Arden

7 The Examining Attorney did not introduce evidence to demonstrate that Spanish is widely
spoken in the United States. The 2012 U.S. Census Report, however, states that 38.3 million
U.S. residents age five and over spoke Spanish at home in 2012. See “Language Use in the
United States: 2012,” accessed at http://www.census.gov/prod/2013pubs/acs-22.pdf. Because
the U.S. census is a standard reference, we may, and do, take judicial notice of the
information. See In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1514 n.4 (TTAB
2001).
8 Applicant’s Brief at 4, 7 TTABVUE 7.
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Sales Corp., 263 F.2d 347, 120 USPQ 480, 481 (CCPA 1959) (“In determining the
applicant’s right to registration, only the mark as set forth in the application may be
considered; whether or not the mark is used with an associated house mark is not
controlling.”). Second, when foreign words appear next to the English language
equivalents, an ordinary purchaser will still recognize the terms as equivalents
because of the provided translation. See In re Aquamar, Inc., 115 USPQ2d 1122, 1127
(TTAB 2015) (“When consumers view Applicant’s MARAZUL packaging they will see
several Spanish words displayed next to their English equivalents, increasing the
likelihood that they will translate MARAZUL.”). Thus, the policy basis of the doctrine
explained by the Federal Circuit in In re Spirits Int’l clearly applies whether a
translation is made by the purchaser or provided to the purchaser; the result is the
same.
We recognize that there are situations in which the doctrine of foreign equivalents
does not apply, for example, when the literal translation of the foreign term would be
irrelevant even to ordinary purchasers familiar with the foreign language, or because
the term itself is well-known to ordinary purchasers and has become a part of the
English language, or the context in which the foreign term is used requires no
translation. See In re Spirits Int’l, 90 USPQ2d at 1492. These situations do not
present themselves in the case before us. Nor does Applicant, which has
acknowledged the literal equivalency of HIDDEN PICTURES and IMAGENES
ESCONDIDAS, seriously contend that any of these other circumstances apply.
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Thus, having concluded that the proposed mark has a definite English translation,
and that ordinary consumers familiar with Spanish will stop and translate the
proposed mark, we now consider whether IMÁGENES ESCONDIDAS (“Hidden
Pictures”) is merely descriptive of a feature or characteristic of the goods.
Applicant maintains that “Hidden Pictures” is not merely descriptive of a feature
or characteristic of books and magazines for children, citing to the Google definition
of “hidden,” submitted with the first Office Action, as “kept out of sight, concealed.”
According to Applicant, its puzzles involve locating objects that are not out of sight
or concealed, but involve locating an object that is “right before your very eyes.”9

9 Applicant’s Brief at 5, 7 TTABVUE 8.
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See, e.g., Exhibit C-3 to Applicant’s Request for Reconsideration,10 duplicated below:

According to Applicant, “‘Hidden’ in this context, is far from descriptive, it is
ironic. The whole premise of these endearing puzzles is that the objects are not hidden
at all. Far from being ‘kept out of sight’ or ‘concealed’, each object is out in the open.”11
The Examining Attorney disagrees, and points to the fact that Applicant’s
Registration No. 2847020 for HIDDEN PICTURES is on the Supplemental Register,
and that the marks of Registration Nos. 2873063 and 2996030 were both registered

10 4 TTABVUE 33.
11 Applicant’s Brief at 5, 7 TTABVUE 8.
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under Section 2(f) with “PICTURES” disclaimed, indicating that the acquired
distinctiveness goes to HIDDEN, rather than PICTURES; and that “[n]othing about
the word ‘hidden’ requires that the pictures be concealed by a physical barrier. They
are equally ‘hidden’ if they are grouped together with many other images so that they
are difficult to detect.”12
We agree with the Examining Attorney that the proposed mark translated as
“Hidden Pictures” describes a feature or characteristic of the goods. One purpose of
Applicant’s puzzles is to have the reader search for certain objects which are not
apparent, i.e., are “hidden” within the puzzle. As the Examining Attorney points out
at unnumbered p. 4 of her Brief, the definition of “hidden” in the Google definition
from the first Office action includes “unseen.” In addition, one definition of “hidden”
in the online version of Merriam-Webster Dictionary, accessed at
http://www.merriam-webster.com/dictionary/hidden, is “1 : being out of sight or not
readily apparent.”13 A characteristic of Applicant’s puzzles (or pictures) published in
its books and magazines is that there are unseen (or not readily apparent) images or
“hidden pictures.” We find that the Examining Attorney therefore has established
that the term “Hidden Pictures” is merely descriptive of a feature of Applicant’s goods.
In addition, as the Examining Attorney pointed out in the first Office Action,

12 Examining Attorney’s Brief at unnumbered p. 4, 9 TTABVUE 5.
13 We take judicial notice of this definition. The Board may take judicial notice of dictionary
definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 213 USPQ 594, 596
(TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH,
78 USPQ2d 1375, 1377 (TTAB 2006).
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Applicant owns Registration No. 2847020 on the Supplemental Register for HIDDEN
PICTURES which registered for “Multimedia software recorded on CD-ROM
featuring computer puzzle games; computer software.”14 “Registration on the
Supplemental Register is prima facie evidence that, at least at the time of
registration, the registered mark was merely descriptive.” In re Future Ads LLC, 103
USPQ2d 1571, 1574 (TTAB 2012) (citing In re Central Soya Co., 220 USPQ 914, 917
(TTAB 1984)); see also Quaker State Oil Ref. Corp. v. Quaker Oil Corp., 453 F.2d 1296,
172 USPQ 361, 363 (CCPA 1972) (“We also agree with the observation of the board
that, when appellant sought registration of SUPER BLEND on the Supplemental
Register, it admitted that the term was merely descriptive of its goods.”). Further,
Applicant’s Registration No. 2873063 is registered under Section 2(f) of the
Trademark Act, and hence is a concession that the mark was merely descriptive of
the identified goods, at least at the time of application and registration. Yamaha Int’l
Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988)
(“Where, as here, an applicant seeks a registration based on acquired distinctiveness
under Section 2(f), the statute accepts a lack of inherent distinctiveness as an
established fact.”).
Applicant points to registrations it has received in Mexico and Chile as evidence
that the mark is not merely descriptive to Spanish speakers. The Federal Circuit, in

14 Applicant cancelled “Multimedia software recorded on CD-ROM featuring computer puzzle
games” from the registration when it filed its first renewal on May 20, 2014.
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addressing the mark ASPIRINA and a mere descriptiveness refusal, stated in In re
Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir. 2007):
Evidence of registration in other countries is not legally or factually
relevant to potential consumer perception of Bayer’s analgesic goods in
the United States. It is true that the relevant Spanish-speaking
consumer population may include people that travel to other countries
or to the United States or consumers that access published print and
electronic information originating in other countries. However, the fact
that ASPIRINA is registered in numerous Spanish-speaking countries
alone is not probative of the relevant consumer population’s perception
of the mark in the United States. … Thus, evidence of registration of
ASPIRINA in another country is of little value to our analysis of its
entitlement to protection in the United States ….

We therefore find the argument unpersuasive.
Applicant also argues that any doubt as to the descriptiveness of the mark must
be resolved in its favor, citing In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB
2006). Suffice it to say, we have no doubts as to the descriptiveness of IMÁGENES
ESCONDIDAS as used in connection with Applicant’s goods.
In conclusion, the evidence of record establishes that Applicant’s proposed mark,
IMÁGENES ESCONDIDAS, when considered in relation to “books and magazines
for children,” immediately informs prospective purchasers as to a feature or
characteristic of Applicant’s goods. Thus, we conclude that Applicant’s proposed
mark, IMÁGENES ESCONDIDAS, when used in connection with the identified
goods, is merely descriptive.
Alternative Claim of Acquired Distinctiveness under Section 2(f)
Applicant claimed acquired distinctiveness under Section 2(f) in the alternative in
light of, inter alia, (a) its Registration No. 2873063 for the mark HIDDEN PICTURES
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on the Principal Register for “magazines, puzzlebooks and an ongoing feature in
Highlights For Children magazine,” with PICTURES disclaimed; and (b) the alleged
fame and recognition of its HIDDEN PICTURES mark. Applicant’s argument with
respect to the alleged fame and recognition of HIDDEN PICTURES is that “to the
extent that the doctrine of foreign equivalents applies and consumers who speak
Spanish translate Applicant’s mark to HIDDEN PICTURES, they will immediately
recognize it [IMÁGENES ESCONDIDAS] as an indicator o[f] origin in Applicant.”15
We first consider Applicant’s reliance on Registration No. 2873063 and then
consider its reliance on the alleged fame and recognition of the HIDDEN PICTURES
mark.
Registration No. 2873063
Trademark Rule 2.41(a)(1), 37 C.F.R. § 2.41(a)(1), states, “In appropriate cases,
ownership of one or more prior registrations on the Principal Register or under the
Trademark Act of 1905 of the same mark may be accepted as prima facie evidence of
distinctiveness if the goods or services are sufficiently similar to the goods or services
in the application … .” (Emphasis added.) “Thus, an applicant can establish acquired
distinctiveness in an intent-to-use application where it can show that ‘same mark’
acquired distinctiveness for related goods or services, and that this acquired
distinctiveness will transfer to the goods or services specified in the application when
the mark is used in connection with them.” In re Dial-A-Mattress Operating Corp.,

15 Request for Reconsideration at 15, 4 TTABVUE 15.
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240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001) (citing TMEP § 1219.09(a)
(1997)). The Federal Circuit in Dial-A-Mattress explained:
A proposed mark is the “same mark” as previously-registered marks for
the purpose of [former16] Trademark Rule 2.41(b) if it is the “legal
equivalent” of such marks. 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. (citing Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d
1866, 1868 (Fed. Cir. 1991)).
Applicant has not cited any legal authority providing that the foreign language
translation of an English mark is the “same mark” within the context of Trademark
Rule 2.41(b) (see current Trademark Rule 2.41(a)(1)), and we have not located any
Federal Circuit or Board cases addressing this issue. The question of whether a
foreign language translation of a registered English language mark is the “same
mark” within the context of Trademark Rule 2.41(a)(1), therefore, is an issue of first
impression. In addition, Applicant and the Examining Attorney have not cited any
Office comments offered in connection with the promulgation of this rule, and we have
not located any relevant comments.
We turn then to the Federal Circuit’s decision in Dial-A-Mattress for guidance. As
stated therein, a proposed mark is the same mark as a previously-registered mark if
it is the “legal equivalent” of the previously-registered mark and a “mark is the legal

16 The USPTO published a notice of final rulemaking in the Federal Register on June 11,
2015, at 80 F.R. 33170. By this notice, Trademark Rule 2.41 was amended; the substance of
Trademark Rule 2.41(b) now appears in Trademark Rule 2.41(a).
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equivalent of another if it creates the same, continuing commercial impression such
that the consumer would consider them both the same mark.” In re Dial-A-Mattress
Operating Corp., 57 USPQ2d at 1812. See also Hana Financial, Inc. v. Hana Bank,
135 S. Ct. 907, 113 USPQ2d 1365, 1367 (2015) (“[T]he general rule adopted by lower
courts has been that two marks may be tacked when the original and revised marks
are ‘legal equivalents.’ This term refers to two marks that ‘create the same,
continuing commercial impression’ so that consumers ‘consider both as the same
mark.’”).17 Under this standard,18 the result is immediately apparent; IMÁGENES
ESCONDIDAS, even though it has the same meaning as HIDDEN PICTURES, is not
“the same mark” as HIDDEN PICTURES. The marks are entirely different aurally
and visually, and we do not read Dial-A-Mattress as stating that marks with the same

17 In Pro-Cuts v. Schilz-Price Enters., Inc., 27 USPQ2d 1224, 1226-27 (TTAB 1993), the Board
compared legal equivalency to likelihood of confusion:
A party seeking to “tack” its use of an earlier mark onto its use of a later mark
for the same goods or services may do so only if the earlier and later marks are
legal equivalents, or are indistinguishable from one another. To meet the legal
equivalents test, the marks must create the same commercial impression and
cannot differ materially from one another. Thus, the fact that two marks may
be confusingly similar does not necessarily mean that they are legal
equivalents.
Specifically, the factors used to determine likelihood of confusion “are broad enough to
encompass any situation where the marks involved may be different yet alike either in sound,
appearance or significance” but the test for tacking requires that the marks involved “would
be recognized as one and the same mark.” Compania Insular Tabacalera, S.A. v. Comacho
Cigars, Inc., 167 USPQ 299, 303-04 (TTAB 1970) (cited in Van Dyne-Crotty, 17 USPQ2d at
1868).
18 Applicant agrees that this is the standard we must consider, stating, “[t]he standard is
whether or not the marks create ‘the same, continuing commercial impression such that the
consumer would consider them both the same mark,’” citing In re Dial-A-Mattress Operating
Corp., 57 USPQ2d at 1812. Applicant’s Brief at 10, 7 TTABVUE 13.
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meaning are “the same mark.”19 See also Green Spot (Thailand) Ltd. v. Vitasoy Int’l
Holdings Ltd., 86 USPQ2d 1283, 1287 (TTAB 2008) (in the context of a Morehouse
defense involving a mark containing Chinese characters and an English
transliteration and translation of that mark, the mark with the Chinese characters
and the English language mark “create wholly different commercial impressions;
here the marks are so different in their visual impressions that even if we were to
agree with applicant that the marks are similar in pronunciation or meaning, any
similarities are outweighed by the differences”). In fact, the Federal Circuit made
clear that “[n]o evidence need be entertained other than the visual or aural
appearance of the marks themselves.” In re Dial-A-Mattress Operating Corp., 57
USPQ2d at 1812.20
Moreover, although the question of whether two marks give the same impression
to consumers “involves a factual judgment,” see Hana Bank, 113 USPQ2d at 1368 n.2,
Applicant has provided no evidence demonstrating that consumers would consider
IMÁGENES ESCONDIDAS and HIDDEN PICTURES to be the same mark even if
they understand the equivalence in meaning. The only support for this proposition is

19 Similarity in appearance and sound may not necessarily result in a finding that two marks
are legal equivalents. See, e.g., In re Nielsen Business Media, Inc., 93 USPQ2d 1545, 1547
(TTAB 2010) (THE BOLLYWOOD REPORTER and THE HOLLYWOOD REPORTER “are
not legal equivalents because they have different meanings and engender different
commercial impressions”).
20 See also Van Dyne-Crotty, 17 USPQ2d at 1868, decided prior to Dial-A-Mattress, where the
Federal Circuit considered the legal equivalence of CLOTHES THAT WORK. FOR THE
WORK YOU DO and CLOTHES THAT WORK, and stated, “[i]t does not appear that the
Board entertained any other evidence concerning the legal equivalence of these two marks
except for the visual or aural appearance of the marks themselves. However, no more was
necessary.”
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Applicant’s attorney’s representation in its Brief which is not backed up by any
evidence, and “[a]ttorney argument is no substitute for evidence.” Enzo Biochem, Inc.
v. Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005). Thus, we
find that IMÁGENES ESCONDIDAS and HIDDEN PICTURES do not create the
same continuing commercial impression and Applicant has not established that the
consumer would consider them both “the same mark.” In other words, Applicant has
not demonstrated that any goodwill Applicant may have established in HIDDEN
PICTURES will transfer to IMÁGENES ESCONDIDAS.
Applicant points out that
[t]he Examining Attorney has held that the average American consumer
who sees IMÁGENES ESCONDIDAS will stop and translate it,
immediately, into “Hidden Pictures”. If the Examiner is correct, then
IMÁGENES ESCONDIDAS is the legal equivalent of HIDDEN
PICTURES and Applicant must be permitted to make a 2(f) claim.21

The problem with Applicant’s argument is that legal equivalency is not dependent
on whether a consumer will stop and translate a foreign word mark. Legal
equivalency is dependent on whether the marks create the same continuing
commercial impression. In re Dial-A-Mattress Operating Corp., 57 USPQ2d at 1812.
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.

21 Applicant’s Brief at 9, 7 TTABVUE 12.
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Applicant also argues that “[w]hile it may be true that IMÁGENES
ESCONDIDAS and HIDDEN PICTURES are visually and audibly distinct, those
differences evaporate when the doctrine of foreign equivalents is applied, as the
Examining Attorney has done in this case.”22 We are guided by the statements of the
Federal Circuit and Board precedent, and such precedents do not suggest that
differences in marks disappear if the doctrine of foreign equivalents is applied. At the
end of the day, the record must demonstrate that any distinctiveness residing in the
HIDDEN PICTURES mark will transfer to the proposed IMÁGENES ESCONDIDAS
mark. Id. The record in this case does not persuade us that the acquired
distinctiveness in the prior mark will transfer to the proposed mark.
Thus, Applicant has not demonstrated acquired distinctiveness of its proposed
IMÁGENES ESCONDIDAS mark through its prior registration for HIDDEN
PICTURES. Moreover, even if Applicant were to prevail on appeal on this point and
establish that the distinctiveness of its registered marks would transfer to the current
mark, these registered marks include a disclaimer of PICTURES and thus there is
no distinctiveness in that term that is inherent or acquired. Accordingly, should
Applicant prevail on any appeal on its assertion regarding the significance of its prior
registrations, we conclude that Applicant would nonetheless have to enter a
disclaimer of IMAGENES as the admitted equivalent of PICTURES.

22 Applicant’s Reply Brief at 6, 10 TTABVUE 7.
Serial No. 85838981
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Alleged Fame and Recognition of HIDDEN PICTURES
We next consider whether the evidence in the record establishes fame and
recognition of HIDDEN PICTURES and, if so, whether, the record demonstrates that
because “consumers who speak Spanish translate Applicant’s mark to HIDDEN
PICTURES, they will immediately recognize it as an indicator o[f] origin in
Applicant.”23
Applicant’s attorney has offered the following information regarding the alleged
fame of the HIDDEN PICTURES mark:
(a) Applicant has featured HIDDEN PICTURES in its Highlights
magazine since June 1946;

(b) Applicant has included a HIDDEN PICTURES puzzle on page 14
of each monthly issue of Highlights since the late 1960s;

(c) “For many years some of the front covers of a monthly issue of
Highlights magazine would refer to the HIDDEN PICTURES puzzle
contained inside to delight the child receiving the magazine at home or
school and to attract attention on newsstands, kiosks and books stores
to increase single copy sales”;24

(d) Applicant’s August 2006 issue celebrated 60 years of publishing
and “exceeded one billion (1,000,000,000) copies of Highlights magazine
in print”;25

(e) The U.S. Postal Service and Applicant jointly presented the
Smithsonian’s National Postal Museum in Washington, D.C. with a
1946 copy of Highlights and a copy of the 1 billionth print run of the
August 2006 issue, which are now part of the Museum’s historical
collection; and

23 Request for Reconsideration at 15, 4 TTABVUE 14-15.
24 Id.
25 Id.
Serial No. 85838981
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(f) “Beginning with the cover for November 2010, every cover of
Highlights magazine specifically markets the fact that the magazine
contains a HIDDEN PICTURES puzzle because that is far and away the
most famous feature of the magazine.”26

It is preferable for an applicant to submit information of this nature in a showing
of acquired distinctiveness in a declaration or an affidavit. See In re U.S. Tsubaki,
Inc., 109 USPQ2d 2002, 2006 (TTAB 2014) (“Moreover, there is no actual proof to
support these statements in the record. We have only Applicant’s counsel’s
statements as to how Applicant and its competitors sell chains and sprockets. Putting
aside whether a declaration from outside counsel could ever qualify as acceptable
proof of these sort of facts, we have here no foundational information about counsel’s
investigation of, or understanding of, Applicant’s business, that would put him in a
position to make statements regarding the marketing of the products at issue, which
in this case is essential to our analysis of the registrability of the mark.”); In re
EBSCO Indus., Inc., 41 USPQ2d 1917, 1923 n.5 (TTAB 1997) (“such information is
more properly submitted in the form of an affidavit or declaration signed by an officer
of the applicant … .”). Because Applicant has submitted documentary evidence which
supports its attorney’s statements, however, we find that the statements are
otherwise adequately addressed in the record. Cf. Martahus v. Video Duplication
Services Inc., 3 F.3d 417, 27 USPQ2d 1846, 1849 (Fed. Cir. 1993) (“mere attorney
arguments unsubstantiated by record evidence are suspect at best”).

26 Id.
Serial No. 85838981
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In Coach Services, Inc., v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1720 (Fed. Cir. 2012), the Federal Circuit identified “sales, advertising, length
of use of the mark, market share, brand awareness, licensing activities, and a variety
of goods bearing the mark” as considerations in determining whether a mark is
famous. Applicant has not submitted much evidence of the type mentioned in Coach
Services. In fact, Applicant’s evidence is minimal and primarily concerns its
HIGHLIGHTS mark, not its HIDDEN PICTURES mark. The fact that HIDDEN
PICTURES appears in Highlights, which has had a large distribution for a
considerable period of time, with over a billion issues printed, does not necessarily
translate to fame for the HIDDEN PICTURES mark. It has only regularly appeared
in a prominent location, on the cover of Applicant’s magazine, since 2010. However,
in view of the length of use and the number of Highlights magazines which have
displayed the HIDDEN PICTURES mark inside the magazines or on its covers, we
are persuaded that HIDDEN PICTURES has achieved recognition among the
consuming public.
We are not persuaded, however, that “to the extent that the doctrine of foreign
equivalents applies and consumers who speak Spanish translate Applicant’s mark to
HIDDEN PICTURES, they will immediately recognize it as an indicator o[f] origin in
Applicant.”27 The strength of the HIDDEN PICTURES mark does not ipso facto mean
that Spanish speaking consumers will immediately recognize that IMÁGENES

27 Request for Reconsideration at 15, 4 TTABVUE 15. See also Applicant’s Brief at 12, 7
TTABVUE 15.
Serial No. 85838981
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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. Thus, while we have found that Spanish-speaking consumers will stop
and translate IMÁGENES ESCONDIDAS into English, Applicant’s evidence does not
demonstrate that such consumers, if they know of Applicant’s HIDDEN PICTURES
mark, would recognize Applicant as the source of “books and magazines for children”
bearing the proposed IMÁGENES ESCONDIDAS mark.
For the reasons set forth above, based on a review of the evidence of record,
Applicant has not demonstrated acquired distinctiveness of its proposed IMÁGENES
ESCONDIDAS mark through its reliance on its use of its HIDDEN PICTURES mark.
Decision: The mere descriptiveness refusal under Section 2(e)(1) of the
Trademark Act is affirmed. In addition, Applicant has failed, in the alternative, to
make a sufficient showing of acquired distinctiveness to permit registration of
IMÁGENES ESCONDIDAS on the Principal Register under Section 2(f) of the
Trademark Act.