In a non-precedential decision in In re The Crosby Group LLC, Serial 86780353 (April 17 2017), the Trademark Trial and Appeal Board (TTAB) held that there was no likelihood of confusion between the applicant’s CROSBY QUIC-TAG mark for, among other things, radio frequency identification (RFID) tags for material lifting equipment in Class 9 and the registered mark QUICK TAG and design (disclaiming TAG) for metal identification tags in Class 6. It therefore reversed the refusal to register under Section 2(d) of the Trademark Act. The decision turned on the weakness of the marks, the sophistication of the purchasers and the addition of a house mark.

The TTAB noted that CROSBY was the dominant portion of the applicant’s mark because it was the most prominently displayed element and most likely to be remembered by purchasers. Although ‘Crosby’ is a surname, which is generally considered inherently weak under US trademark law, the applicant had two prior registrations for CROSBY, both for various forms of material lifting equipment, as well as the substantially exclusive use of the mark for over five years on material lifting equipment. The TTAB therefore attributed the acquired distinctiveness of the CROSBY element to the subject application.

The TTAB noted that the addition of a distinctive mark to another mark can help to render marks distinguishable, if the other mark is highly suggestive or descriptive. In this case, the TTAB found the registrant’s mark to be highly suggestive because the term ‘Quick’ and the lightning bolt element, which stylised the ‘Q’, reinforced the suggestion that the registrant’s goods were dispensed quickly.

Turning to the relatedness of the goods, the TTAB was unpersuaded by the applicant’s argument that the goods were different in kind because they fell into different classes. The TTAB found the goods to be somewhat related, based on the examining attorney’s evidence that metal identification tags and RFID tags are sometimes offered under the same mark. Further, the TTAB determined that while one good was not an essential element of the other and there was no assumption that they would be used together, the goods could nonetheless emanate from the same source and overlap at times.

Despite the potential relatedness of the goods, the TTAB found that the only point of overlap with regard to channels of trade would be businesses that purchase and use material lifting equipment, and those businesses exercise greater care than the general public when making purchases. Therefore, the TTAB concluded that such purchasers would not be confused.

The addition of a distinctive or house mark to another mark may not eliminate the likelihood of confusion. However, as this case illustrates, it is possible to overcome a likelihood of confusion refusal when a distinctive or house mark is combined with a term that is highly suggestive or descriptive. This is especially true when there are clearly defined channels of trade and customers are conditioned to exercise great care when making purchases.

The article was originally published on May 16th, 2017 in the World Trademark Review (WTR).