Extrinsic Evidence May Not Be Used To Distinguish the Commercial Impressions of Marks In An Ex Parte Likelihood-of-Confusion Analysis

In a non-precedential opinion, the Federal Circuit affirmed that in an ex parte proceeding, when analyzing the likelihood of confusion between a registered and an applied-for mark, evidence extrinsic to the application and cited registration may not be used to distinguish the commercial impressions made.

P.T. Arista Latindo applied to register the mark SENSI for adult and baby diapers, and diaper inserts.  The Examining Attorney refused registration, finding SENSI was likely to cause confusion with previously registered marks for SENSI-CARE that covered, among other things, medicated diaper rash ointments and lotions.  Arista appealed to the TTAB, arguing that the marks were dissimilar, the goods were unrelated, and there was no evidence of actual consumer confusion.  The Board disagreed. According to the Board, the goods, channels of trade, and classes of customers were all similar, as were the marks as a whole.  The Board also rejected Arista’s argument that evidence extrinsic to the registration and application could be used to differentiate the marks. 

On appeal to the Federal Circuit, Arista argued the Board should have considered Arista’s extrinsic evidence, which showed that its website used the tagline “Sensible way of living” near the mark SENSI at the top of its webpages.  According to Arista, given its website, customers would assume “SENSI” means “sensible,” whereas the cited registrations for SENSI-CARE, in context, refer to the term “sensitive.”  The Federal Circuit disagreed.

The Federal Circuit stated that under well-settled precedent, “[w]hen determining the meaning of two marks, it is the marks themselves, as set forth in the application and cited registration, not extrinsic evidence, which determines likelihood of confusion.”  Trade dress can be changed at any time and so cannot be used to prove differing commercial impressions.  The Court further rejected Arista’s argument that dictionary evidence showed that SENSI can be understood to mean “sensible.”  Artista’s cited dictionary did not define SENSI at all, but only noted that the word “sensible” was “nearby” alphabetically.  Nothing in the application indicated SENSI should be understood to mean “sensible,” and the slogan “Sensible way of living” did not appear in the application.  

Because the products were so closely related and nothing in the registrations or application provided any basis to find the terms would be understood differently, the Court affirmed the Board’s decision.

The case is In re: P.T. Artista Latindo, Case No. 2017-1292 (Fed. Cir. Nov. 13, 2017).