NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: P.T. ARISTA LATINDO,

Appellant

______________________ 

2017-1292

______________________ 

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

86499199.

______________________ 

Decided: November 13, 2017

______________________ 

 MICHAEL A. SHIMOKAJI, Shimokaji & Associates, P.C., 

Irvine, CA, for appellant.

 NATHAN K. KELLEY, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, for 

appellee Joseph Matal. Also represented by THOMAS L.

CASAGRANDE, CHRISTINA HIEBER, THOMAS W. KRAUSE,

PHILIP J. WARRICK. 

______________________ 

Before DYK, BRYSON, and REYNA, Circuit Judges.

PER CURIAM. 

Applicant P.T. Arista Latindo (“Arista”) appeals from 

the final decision of the Trademark Trial and Appeal 
 

 IN RE: P.T. ARISTA LATINDO

2

Board (“Board”) affirming the examining attorney's 

refusal to register the mark “SENSI” (“the mark”) related 

to goods in Class 5 (diapers), because it was likely to 

cause confusion with previously registered marks. We 

affirm.

BACKGROUND

Arista, an Indonesian company, filed an “intent-touse” application under Section 1(b) of the Lanham 

Trademark Act, 15 U.S.C. § 1051, to register “SENSI” for 

use with several goods. The goods included: adult and 

baby diapers, as well as diaper inserts (International 

Class 5); industrial gloves (Class 9); various kinds of 

operating-room goods (Class 10); and household gloves 

(Class 21).The Examining Attorney issued an initial office 

action refusing registration for the goods in Class 5 (adult 

and baby diapers and diaper inserts) under Section 2(d) of 

the Lanham Act, 15 U.S.C. § 1052(d), because of a likelihood of consumer confusion as to Class 5 with two previously registered marks.

Those marks are Registration No. 2618533 for 

“SENSI-CARE” in standard characters for “medicated

skin care preparations, namely, protectants for the prevention of skin irritation and preparations for the treatment and prevention of diaper rash,” and Registration No. 

3640455 for the stylized version 

for “[s]kin protectant preparations, namely, medicated 

skin care preparations; preparations for protecting the 

skin from irritation, namely, pharmaceutical skin lotions; 

preparations for treatment and prevention of diaper rash,

namely, medicated diaper rash ointments and lotions.” 

Both of these marks are owned by Convatec (“Registrant”). 

Arista appealed the rejection to the Board, arguing 

that the marks were dissimilar, the goods were unrelated, 

and that there were no actual instances of consumer 

confusion. 
IN RE: P.T. ARISTA LATINDO 3

Assessing the relevant confusion factors set forth in 

In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 

(C.C.P.A. 1973) (the “DuPont factors”), the Board compared the appearance, sound, and meaning of the marks. 

The Board rejected Arista’s argument that evidence 

extrinsic to the registration and application at issue could 

be employed to differentiate the marks. 

The Board next turned to the similarities between the 

goods, channels of trade, and classes of customers. The 

Board found that the goods, specifically diapers and 

diaper rash cream, are related, are sold through similar 

channels, and the classes of customers were similar. 

Based on the totality of the circumstances, the Board 

found that the marks as a whole were similar, that there 

was a high likelihood of confusion with the previously 

registered marks relative to diaper rash cream and affirmed the rejection of Arista’s marks. 

Arista appealed. We have jurisdiction pursuant to 28 

U.S.C. § 1295(a)(4)(B).

DISCUSSION

We review the Board's legal conclusions de novo and 

its factual findings for substantial evidence. In re Cordua 

Rests., Inc., 823 F.3d 594, 599 (Fed. Cir. 2016). “Within

the broader question of the similarity of the marks, determinations as to the appearance, sound, connotation and

commercial impression of the marks are . . . factual in 

nature.” In re Viterra Inc., 671 F.3d 1358, 1361 (Fed. Cir. 

2012). 

Section 1052(d) of Title 15 requires that marks not be 

issued when it is “likely, when used on or in connection 

with the goods of the applicant, to cause confusion, or to 

cause mistake, or to deceive.” Likelihood of confusion 

under Section 2(d) is determined on a case-by-case basis, 

assessing the relevant DuPont factors established by our 

predecessor court. See DuPont 476 F.2d at 1361. Only 
 

 IN RE: P.T. ARISTA LATINDO

4

those factors significant to the particular mark need be 

considered. Viterra, 671 F.3d at 1361.

On appeal, Arista does not challenge many aspects of 

the DuPont analysis conducted below. Indeed, Arista does

not challenge the Board’s findings that the marks look 

and sound similar, that the goods are related, and that the 

channels of trade and classes of customers are similar. 

Rather, Arista challenges the DuPont factor concerning 

the similarity or dissimilarity of the marks as to their 

connotation and commercial impression. See DuPont 476 

F.2d at 1361. 

Arista specifically challenges the Board’s refusal to

consider extrinsic evidence that Arista uses the tagline 

“Sensible way of living” on its Indonesian-address website 

(www.sensi.co.id) when it uses the mark. Arista argues 

that, considering the website, customers would assume 

that “SENSI” in the context of their mark means “sensible,” and that, in context, Convatec’s marks use “SENSI” 

to refer to “sensitive.” 

Arista uses the tagline “Sensible way of living” near 

the mark “SENSI” at the top of the webpages. When 

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. Indeed, it is well-established that 

the Board must only compare the mark in the prior registration with the mark in the application. “Registrability is 

determined based on the description in the application, 

and restrictions on how the mark is used will not be 

inferred.” In re Shell Oil Co., 992 F.2d 1204, 1207 n.4 

(Fed. Cir. 1993). Extensive precedent supports this.1

 

1

 See In re I.AM.Symbolic, LLC, 866 F.3d 1315, 1324 

(Fed. Cir. 2017) (“The correct inquiry requires comparison 

of the applied-for mark . . . .”); In re H.J. Seiler Co., 289 
IN RE: P.T. ARISTA LATINDO 5

It is well-established that trade dress may not be

used to prove that the commercial impressions are different, since trade dress may be changed at any time. See

Vornado, Inc. v. Breuer Elec. Mfg. Co., 390 F.2d 724, 727

(C.C.P.A. 1968) (“the [advertising] display of a mark

in a particular style is of no material significance since the

display may be changed at any time as may be dictated by

the fancy of the applicant or the owner of the mark.”).2

 

F.2d 674, 675 (C.C.P.A. 1961) (use of tagline “caterers 

since 1873,” which was not in the application, could not be 

considered); Denney v. Elizabeth Arden Sales Corp., 263 

F.2d 347, 348 (C.C.P.A. 1959) (“In determining the applicant’s right to registration, only the mark as set forth in

the application may be considered . . . .”) (citations omitted); Bellbrook Dairies Inc. v. Hawthorn-Mellody Farms 

Dairy, Inc., 253 F.2d 431, 433 (C.C.P.A. 1958) (“The fact 

that each of the parties applies and [sic] additional name 

or trade-mark to its product is not sufficient to remove the 

likelihood of confusion. The right to register a trade-mark

must be determined on the basis of what is set forth in the 

application rather than the manner in which the mark 

may be actually used.”) (citations omitted).

2

 See also Kimberly-Clark Corp. v. H. Douglas Enters., Ltd., 774 F.2d 1144, 1147 (Fed. Cir. 1985); Specialty 

Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 

674 (Fed. Cir. 1984) (“Ordinarily, for a word mark we do 

not look to the trade dress, which can be changed at any

time.”) (citations omitted); Tuxedo Monopoly, Inc. v. Gen.

Mills Fun Grp., Inc., 648 F.2d 1335, 1337 (C.C.P.A. 1981) 

(explaining that design features not inherent or specifically stated in the application are irrelevant). 

We note that there is language from Specialty Brands, 

to the effect that “[o]rdinarily, for a word mark we do not 

look to the trade dress, which can be changed at any time

. . . . But the trade dress may nevertheless provide evi-
 

 IN RE: P.T. ARISTA LATINDO

6

Arista suggests that Coach Services, Inc. v. Triumph 

Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012), supports 

the utilization of extrinsic evidence in assessing whether 

there is likelihood of confusion in an ex parte registrability 

proceeding. In that case, the fashion label Coach appealed 

from the decision of the Trademark Board’s decision 

dismissing its opposition to Triumph Learning’s applications to register the mark “COACH” for educational 

materials used to prepare students for standardized tests. 

Id. at 1360. The court affirmed the Board’s finding that 

there was no likelihood of confusion between the parties' 

“COACH” marks, despite the fact that the two marks 

were identical. Id. at 1368–69.

The court highlighted the Board’s finding that “although the marks are identical in terms of sight and 

sound, they differ as to connotation and commercial 

impression.” Id at 1368. Arista misreads Coach, as neither the Board nor the court based the decision on extrinsic evidence when assessing whether the marks were 

similar. Both the court and the Board considered the 

descriptions of the goods in the application and registration. See id. at 1360–62 (highlighting that Triumph’s 

applications were for educational goods while Coach’s 

trademark registrations were for fashion products). 

Arista further argues that dictionary evidence, specifically dictionary.com, shows that “SENSI” can and would 

be understood to mean “sensible.” To be sure, “[e]vidence 

of the public's understanding of the mark may be obtained 

 

dence of whether the word mark projects a confusingly 

similar commercial impression.” 748 F.2d at 674. Appellant may suggest that it is inconsistent to examine trade 

dress for one purpose, but not for another. We need not 

here resolve any apparent anomaly created by the wording in Specialty Brands, since it is well-established that 

trade dress may not be used to prove absence of confusion. 
IN RE: P.T. ARISTA LATINDO 7

from ‘any competent source, such as . . . dictionaries . . .,’”

Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 

F.3d 960, 965 (Fed. Cir. 2015) (quoting In re Northland 

Aluminum Prods., Inc., 777 F.2d 1556, 1559 (Fed. Cir.

1985)). The dictionary evidence here is not helpful to 

Arista, as dictionary.com did not actually define “SENSI”

at all. Rather, dictionary.com only noted that “sensible” 

was an alphabetically “nearby” word, hardly evidence that 

proves that “SENSI” means “sensible.” There is no evidence that dictionaries actually define “SENSI” as “sensible.” 

There is nothing in the application that indicates that 

“SENSI” should be understood to mean “sensible,” nor 

does the slogan “Sensible way of living” appear in Arista’s

application. The word “SENSI” is spelled the same as the 

prior mark in the application and registration. It is clear 

that there is a substantial likelihood of confusion, especially in products as closely related as diapers and diaper 

rash cream. Nothing in the marks or goods shown in the 

application and registration provides a basis to find that 

the identical terms used by Arista and Convatec have 

disparate definitions or connote different commercial impressions. Substantial evidence supports the Board’s 

decision. 

AFFIRMED