The use of foreign language words or phrases can create strong impressions on English speakers, even English speakers who are not familiar with the particular language that they hear. This power of words and phrases from foreign languages brings with it a temptation to use foreign language words and phrases as trademarks. But words from foreign languages raise a peculiar issue for marketers; some but not all of the target audience might understand the language in which the mark is presented. Thus, for the attorney who counsels these clients, there is a threshold issue of when and under what conditions, the foreign words and phrases will be deemed generic or descriptive because, if translated literally, the English equivalent would be categorized as either generic or descriptive.
This past spring, in In re Highlights for Children, 118 USPQ 2d 1268, 2016 WL 1380729 (Trademark Tr. & App. Bd 2016) the children’s magazine “Highlights for Children” was forced to confront this issue when it tried to register Imagágenes Escondidas for books and magazines for children. At the core, Highlights’ goal was to obtain trademark rights in this Spanish phrase for use in connection with its Hidden Picture puzzles in its magazines. In doing so, it raised an issue of first impression: whether a foreign language equivalent of a mark can establish acquired distinctiveness based on the existence of a prior registration of the English language trademark.
