April 26th, 2017
The Board reversed a Section 2(d) refusal to register the mark CROSBY QUIC-TAG for “radio frequency identification (RFID) tags for material lifting equipment; computer software and firmware for reading radio frequency identification (RFID) tags for material lifting equipment,” finding it not likely to cause confusion with the registered mark QUICK TAG in the form shown to the right, for “metal identification tags” [TAG disclaimed]. The Board found that “although Applicant’s and Registrant’s goods are somewhat related, the dissimilarities in their respective marks, coupled with the mostly diverse channels of trade and sophisticated classes of purchasers, create ‘a confluence of facts which persuasively point to confusion as being unlikely.'” In re The Crosby Group LLC, Serial No. 86780353 (April 17, 2017) [not precedential] (Opinion by Judge Heasley).
The Marks: The Board found the word CROSBY to be the dominant element in applicant’s mark. Although CROSBY is a surname, applicant has used the mark CROSBY for more than five years and owns two registrations for the mark for various forms of material lifting equipment. The Board ruled that the acquired distinctiveness of the two registered marks carries over to the instant application. Moreover, the evidence demonstrated that “purchasers of material lifting equipment and related goods have been conditioned over time to associate CROSBY with a single source: Applicant.”
The words in the cited mark QUICK TAG are “at best highly suggestive and at worst generic.” The disclaimed word TAG is generic for metal identification tags. QUICK is highly suggestive because it indicates that Registrant’s tags are provided quickly [via vending machines]. The lightning bolt design element reinforces that suggestion. “QUICK TAG is thus highly suggestive―so much so that the addition of CROSBY, a dominant, distinctive component, suffices to distinguish it.”
The Goods: The issue of the similarity of the goods arises with respect to applicant’s RFID tags and registrant’s metal identification tags. The Board found that registrant’s metal tags “can be considered somewhat related to Applicant’s RFID tags.” The fact that they fall in different USPTO classes is irrelevant, since Section 2(d) makes no reference to classification. The evidence of third-party use showed that the goods may emanate from a common source, and may overlap at times.
Channels of Trade/Sophistication of Purchasers: Given the limitation of applicant’s goods to tags and readers used in connection with material lifting equipment, the only overlap in customers would be businesses that purchase and use material lifting equipment. Considering the nature of the material lifting equipment industry, “it stands to reason that its institutional purchasers will exercise greater care in making their purchases than the general purchasing public.”
Thus, while Registrant could offer its products to industries requiring material lifting equipment, it is unlikely that the purchasers in those industries will confuse its mark with Applicant’s CROSBY-formative mark.
Therefore the third and fourth du Pont factors favor applicant.
Conclusion: Considering the relevant factors, the Board found confusion unlikely and it reversed the refusal.