CAFC Affirms TTAB's Section 2(d) Refusal of SENSI for Diapers: Extrinsic Evidence of Meaning Irrelevant

In a nonprecedential per curiam opinion, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision (here) that upheld a Section 2(d) refusal of the mark SENSI for diapers. The Board found the mark likely to cause confusion with the registered mark SENSI-CARE for diaper rash ointments. On appeal, Applicant Arista did not challenge most of the Board's du Pont analysis, focusing only on the similarity or dissimilarity of the marks as to connotation and commercial impression. In re P.T. Arista Latindo, Appeal No. 2017-1292 (November 13, 2017) [not precedential].


Arista disputed the Board's refusal to consider certain "extrinsic" evidence, namely, use of the tagline "Sensible way of living" on Arista's website. According to Arista, customers seeing SENSI in that context would assume that SENSI means "sensible" in its mark, whereas in the context of the cited mark it means "sensitive." The CAFC was unmoved:

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).

It is well-established, the CAFC observed, that one may not resort to trade dress to prove that the commercial impressions of two marks are different, since the trade dress may be changed at any time.

The court found nothing in the application indicating that SENSI should be understood to mean "sensible." And nothing in the marks or goods of the application and the cited registration provided a basis for concluding that the identical term used in the marks have "disparate definitions or connote different commercial impressions."

And so the court concluded that substantial evidence supported the Board's decision.

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TTABlog comment: Is this a WYHA? You may recall that in the recent FIRST TUESDAY case (TTABlogged here), the CAFC ruled that the Board did not err in considering the explanatory text appearing on applicant's specimens of use in determining the issue of descriptiveness. So sometimes it's okay to look at external evidence. But not to distinguish marks under Section 2(d).

What about looking at extrinsic evidence (trade dress) to show that two marks create a confusingly similar commercial impression? The Specialty Brands case in footnote 1 says that this is permitted.

Text Copyright John L. Welch 2017.