N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

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IN RE: P.T. ARISTA LATINDO, Appellant

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2017

- 1292

______________________ Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in No. 86499199.

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Decided: November 13 , 2017

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M ICHAEL A. S HIMOKAJ I , Shimokaji & Associates, P.C., Irvine, CA, for appellant.

N ATHAN K. K ELLEY , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for appellee Joseph Matal. Also represented by T HOMAS L. C ASAGRANDE , C HRISTINA H IEBER , T HOMAS W. K RAUSE , P HILIP J. W ARRICK

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Before D YK , B RYSON , and R EYNA , Circuit Judges.

P ER C URIAM

. Ap pl i ca n t P .T. A rista Latind o ( “A ri s ta”) appeals from the final decision of the Trademark Trial and AppealIN RE : P

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. ARISTA LATINDO 2

Board ( “Board”) affirming the examining attorney's refusal to regist er the mark “SENSI” (“the mark”) related to goods in Class 5 (diapers)

, b ecause it was likely to cause confusion with previously registered marks. We affirm.

B ACKGROUND Arista, an Indonesian company, filed an “intent

- to

use” application under Section 1(b) of the Lanham Trademark Act, 15 U.S.C. § 1051, to register “SENSI” for use with several goods. The goo ds in cluded : adu lt an d b aby dia p ers, as well as diap er i n se rt s (I nternation al Cla ss 5); i nd ustri al g lo v es (Cla ss 9); va riou s ki nd s of

op era ti ng -room go o ds ( Cla ss 10 ); and hous eho ld glove s (Cla ss 21 ). The Examin ing Attorney issued an initial o ffice action refusing registration for the goods in Class 5 (adult and baby dia pers and diaper inserts) under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), because of a likel ihood of consumer confusion as to Class 5 with two prev iously registered marks.

Those marks are Regi st rat io n No. 2 61 8 53 3 for

“ SENSI

- CARE ” in stan dard characters for “m edicated sk in ca re pr eparations, na m el y , pr otectant s fo r the preven ti on of sk in ir r it ation an d p rep ar ations for the tre a tm ent an d prevention of di aper ra sh ,” a nd Registration No. 3640455 for the st y liz ed ve rsi on for “ [s] kin pr otecta nt pr epa ra tio ns, na mely, m edic ated sk in ca re prepa r ations; pr epa rati on s for protect in g the ski n fr o m irr itat io n, na mely, phar m aceuti c al sk in l oti o ns ;
pr eparati on s for tre atm ent a nd pr evention of diap er r ash,

na mely, m edica t ed diap er r as h ointment s a nd lot io ns. ” Both of these marks are owned by Convatec (“ Regi strant”)

. Arista appealed the rejection to th e Board

, arguing that the marks were dissimilar, the goods were unrelated, and that there were no actual in stances of consumer confusion.IN RE : P

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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 co mpared 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 t rade, and classes of customers . T he Board found that the goods , sp ecifically dia pers 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 a ffirmed the rejection of Arista’s marks

. Arista appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B).

D ISCUSSION We review the Board's legal con clusions de novo and its factual findings for substantial evidence. In re C or dua R es ts., Inc.

, 823 F. 3d 59 4, 59 9 (F ed. Cir. 20 16). “W it h in th e b road er ques ti on of the si m ila r ity of the m arks, d eterm in at ion s as to th e a p pe a ranc e, sound

, connot ation and

co mm ercial impressio n of the mark s ar e

. . . fac tu a l in
natu re

. ” 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.” Likel ih oo d of confu si on unde r Sec ti on 2( d) is de term ined on a c a se -by- case b asi s,

as ses s in g the re levant DuPon t fa ct ors established by our predecessor court. See DuPont 4 76 F

. 2d at 1361

. Onl yIN RE : P

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th os e f actors significant to the particular mark nee d be

con sid ere d

. Vi te rra , 671 F.3 d at 136 1.
On appeal, Arista does not ch al lenge many aspects of the DuPont analysis conducted below. Indeed, Arista does not challenge the Boar d’ s find in gs th a t the mar k s lo o k

an d so un d sim il ar, that th e good s ar e rela ted, and t ha t th e chan nel s of trad e 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 4 76 F. 2d at 1361

. Aris ta specifically challenges the Board’ s re fus al to

co ns id er extrinsi c e v id ence th a t Ar is ta use s th e taglin e “S ensi ble w ay of li vin g” on it s In do ne si an- ad d re s s website ( www.sensi.co.id ) whe n i t use s th e mar k. Arista argues that , considering the website, customers would assume that “SENSI” in the context of their mark means “sens ible ,” and that

, in context, Convatec’s marks use “SENSI” to refer to “ sensitive .”

Aris t a us e s the tagline “S ensi ble w ay of l iv in g ” ne ar the m ark “S EN SI” at the top of the we bp age s. W he n determining th e meanin g of tw o mark s , it is the marks themselves, as set forth in the application and cited registration, not extrinsic evidence

, which determines likeli hood of confusion. Indeed, it is well- established that the Board must only compare the mark in the prior regi stration 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, 120 7 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 a pplied

- for mark . . . .”); I n re H. J. Se ile r C o ., 28 9IN RE : P

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It is well

- established that trad e dres s ma y no t be used to prove that the commerc i al impress i ons are diffe rent, since trade dress may be changed at any time. See Vo rnado, Inc. v. Breuer Elec. Mfg. Co.

, 390 F.2d 724, 727 (C .C.P.A. 1968) (“the [adve r tising] display of a mark in a particular style is of no material signifi c ance 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.2 d 674, 67 5 (C .C.P.A. 1961) (use of ta gl in e “ caterers si nc e 1 87 3,” wh ich was not in th e a pp li catio n, coul d no t be consider ed) ; Denn ey v. Eliz abet h Arden Sale s Corp

., 26 3 F.2 d 34 7, 348 (C .C.P.A. 1 959) (“I n d eterm ining the ap pl icant’s right to re gis t ration, only the m ark as set forth in th e a ppl ic at io n may be c onsidered

. . . .”) ( c it ations omi tte d); Be llbrook Da irie s Inc . v. Hawt ho rn- Mel lody F ar m s Dairy, Inc ., 25 3 F .2d 43 1, 43 3 (C .C.P.A. 1958) (“T he fact tha t ea ch of the pa rt i es ap pl ies an d [sic] addition al na me or tr ade-m ark to it s pr od uct is not su f fi cie nt to re move the likel ih oo d of co nf us io n. Th e r igh t t o r egist er a tra d e-m ark

mu st be de term ined on th e b asi s of wh at is se t fo rth in the

a pp li catio n ra ther th an the m anner i n wh ic h the m ark

may be ac tua lly us ed. ”) (ci ta ti on s o m itt e d).

2 See also Ki mber ly -Cla rk Corp. v. H. Doug la s E nte rs ., L td

., 774 F.2 d 1144, 11 4 7 (Fe d. Cir. 1985); Sp e cia lt y Br a nd s, Inc. v. Coffee Bea n Dist ri bs ., I nc ., 748 F.2 d 66 9, 67 4 (Fe d. Cir . 1984) (“Or dinari ly, for a wor d mar k we d o not loo k to the trad e dr e ss, wh ic h c a n be cha ng e d a t any ti me. ”) (ci tati on s o m itt ed); Tu xed o Mo no poly, Inc . v. Ge n. Mill s Fu n G rp ., Inc ., 64 8 F.2 d 1335, 13 3 7 (C .C.P.A. 1 98 1) ( explaining that design feat ur e s no t inherent or specifica lly stated in the appl ic at io n 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 ev i-IN RE : P

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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 app ealed from the decision of the T rademark Board’s decision dismissing its opposition to Triumph Learning’s applic ations to register the mark “COACH” for educational materials used to prepare students for standardized tests. Id. at 1360. T he c ourt 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 –6 9.

T he court highlighted the Board ’s finding that “ al though the marks are identical in terms of sight and sound, they differ a s to connotation and commercial impres sion.” Id at 1368

. Arista misreads Coach , as n e ither the Board nor the c ourt based the decision on extri nsic evidence when assessing whether the marks were similar . B oth the c ourt and the Board considered the descriptions of the goods in the application and registration

. See id . at 136 0

– 62 (highlighting that Triumph’s applications were for educational goods while Coach’s trademark registrations were for fashion products).

Aris ta further argues that dictionary evidence, speci fically diction ary.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. Appe llant 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 wor ding in Specialty Brands , since it is well

- established that trade dress may not be used to prove absence of confusion.IN RE : P

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from ‘any competent source, such a s . . . 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.” T here is no ev idence that dictionaries actua lly define “SENSI” as “sens ible.”
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. T he wor d “ SENS I” i s spel le d the sa m e as the prior m ark i n th e ap plicat io n an d re gist ratio n. I t is clear that there is a substantial likelihood of confusion, esp ecially in products as closely related as diapers and diaper rash cream. Noth in g i n the mar k s or good s s ho w n i n the

ap pl i ca tion an d reg ist ra t io n prov ide s a bas is to fi n d th a t the identi cal te rm s used by Arista and Convatec have disparate definitions or connote different commercial i mpressions

. Substantial evidence supports the Board’s decision.

AFFIRMED