Background - Applicant P.T. Arista Latindo filed an intent-to-use application to register the word mark SENSI for multiple goods, including adult/baby diapers and diaper inserts (Class 5). - The USPTO examining attorney refused registration for the Class 5 goods under 15 U.S.C. § 1052(d) as likely to cause confusion with Convatec’s prior registrations for SENSI-CARE (standard characters) and a stylized SENSI mark, both covering medicated skin protectants and diaper-rash preparations. - The Trademark Trial and Appeal Board affirmed, finding the marks similar in appearance, sound, and commercial impression, and that diapers and diaper-rash products are related and share channels of trade and customers. - Arista argued (1) the marks convey different connotations because Arista uses the tagline “Sensible way of living” on its Indonesian website, (2) extrinsic evidence (trade dress, website, dictionaries) shows SENSI = "sensible," and (3) there was no evidence of actual confusion. - The Board declined to consider Arista’s extrinsic trade dress/website evidence for assessing the mark’s meaning, relying instead on the mark as applied for and the registered mark. It concluded substantial likelihood of confusion for Class 5 goods. - The Federal Circuit affirmed, applying the DuPont factors and holding that trade dress or extrinsic usage cannot be used to alter the applied-for mark’s commercial impression; dictionary evidence did not define “SENSI.” ### Issues | Issue | Plaintiff's Argument | Defendant's Argument | Held | |---|---:|---:|---:| | Whether SENSI is registrable for diapers given Convatec's prior SENSI marks | Arista: its website tagline shows SENSI connotes "sensible," distinguishing marks | Convatec/Examiner: marks are identical/similar; goods (diapers vs diaper-rash preparations) are related and share trade channels | Denied — likelihood of confusion; registration refused for Class 5 | | Whether extrinsic evidence (website/tagline/trade dress) may be used to change the mark's commercial impression | Arista: extrinsic evidence shows different commercial impression, so no confusion | Board/Convatec: only the mark as applied-for and the registered mark control; trade dress may change and cannot alter registrability | Denied — extrinsic trade dress/website use not considered to alter applied-for mark | | Whether dictionary evidence supports Arista's asserted meaning of SENSI | Arista: dictionary.com links SENSI to "sensible" | Convatec: no authoritative dictionary defines "SENSI" as "sensible" | Denied — dictionary.com did not define SENSI; evidence insufficient | | Whether lack of actual confusion weighs against refusal | Arista: no actual confusion shown | Convatec/Board: actual confusion not required; related goods and similar marks support likelihood | Denied — absence of actual confusion did not overcome other DuPont factors | ### Key Cases Cited E. I. DuPont de Nemours & Co. v. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) (establishing DuPont likelihood-of-confusion factors) In re Viterra Inc., 671 F.3d 1358 (Fed. Cir. 2012) (similarity of marks—appearance, sound, connotation—are factual inquiries) In re Cordua Rests., Inc., 823 F.3d 594 (Fed. Cir. 2016) (standard of review for Board factual findings and legal conclusions) In re Shell Oil Co., 992 F.2d 1204 (Fed. Cir. 1993) (registrability determined from application wording; usage restrictions not inferred) Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012) (identical marks may still differ in connotation based on goods/descriptions) Princeton Vanguard, LLC v. Frito‑Lay N. Am., Inc., 786 F.3d 960 (Fed. Cir. 2015) (public understanding of a mark may be shown by competent sources like dictionaries) Kimberly‑Clark Corp. v. H. Douglas Enters., Ltd., 774 F.2d 1144 (Fed. Cir. 1985) (trade dress generally not considered for word marks) Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669 (Fed. Cir. 1984) (trade dress may not be used to show absence of confusion for word marks)