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

Author:Mr Jonathan Uffelman
Profession:Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

In a non-precedential opinion, the Federal Circuit affirmed that in an ex parte proceeding, when analyzing the likelihood of confusion between a registered and an applied-for mark,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...

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