Tagline Not In Trademark Application Cannot Distinguish Prior Mark

P.T. Arista Latindo (“Arista”) sought to register the trademark SENSI for diapers, among other things. The USPTO refused the registration in connection with diapers on the basis of two prior registrations for the mark SENSI-CARE (Tm Reg. Nos. 2618533, 3640455) for skin care products for treating and preventing diaper rash.

Arista argued that there was no likelihood of confusion between its mark and the SENSI-CARE marks because Arista uses a tagline “Sensible way of living” on its website. It argued that customers would assume its SENI mark means “sensible,” considering its tagline, whereas consumers would see SENI in the prior SENI-CARE marks as referring to “sensitive.”

The problem is that Airsta’s tagline was not in its trademark application. On appeal, the court said that the USPTO “must only compare the mark in the prior registration with the mark in the [present] application.” In re P.T. Arista Latindo, No. 2017-1292 (Fed. Cir. 2017). The court also said  “trade dress may not be used to prove that the commercial impressions are different, since trade dress may be changed at any time.”

The content of a trademark application is what is considered by the USPTO when deciding whether to register the mark. This is one reason it is important to do a trademark search prior to filing an application. A trademark search may help inform whether you should include a tagline, other words or characters, or graphical elements in your applied-for mark to increase the chance of distinguishing an already registered mark. Taglines, words, characters, or other elements that are not included in your application when it is filed probably will be of no help in distinguishing prior marks, as was the case for Arista.