In Re: P.T. Arista Latindo

NOTE: This disposition is nonprecedential.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
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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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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
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IN RE: P.T. ARISTA LATINDO
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-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 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 likeli-
hood of consumer confusion as to Class 5 with two previ-
ously registered marks.
Those marks are Registration No. 2618533 for
“SENSI-CARE” in standard characters for “medicated
skin care preparations, namely, protectants for the pre-
vention of skin irritation and preparations for the treat-
ment 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 (“Regis-
trant”).
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 com-
pared 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 af-
firmed 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, de-
terminations 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
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IN RE: P.T. ARISTA LATINDO
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 “sensi-
ble,” 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 regis-
tration 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 differ-
ent, 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 appli-
cant’s right to registration, only the mark as set forth in
the application may be considered . . . .”) (citations omit-
ted); 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 En-
ters., 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 specifical-
ly 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-
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IN RE: P.T. ARISTA LATINDO
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 applica-
tions 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 “alt-
hough 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 nei-
ther the Board nor the court based the decision on extrin-
sic evidence when assessing whether the marks were
similar. Both the court and the Board considered the
descriptions of the goods in the application and registra-
tion. 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, specif-
ically 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. Appel-
lant 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 word-
ing 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 evi-
dence that dictionaries actually define “SENSI” as “sensi-
ble.”
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, espe-
cially 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 im-
pressions. Substantial evidence supports the Board’s
decision.
AFFIRMED