Federal Express Corporation

Trademark Trial and Appeal Board

Dec 7, 2009

No. 78726303 (T.T.A.B. Dec. 7, 2009)

Mailed: December 7, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Federal Express Corporation

Serial Nos. 78726298; 78726303; 78726306; and 78726310
_______

Lisa Parker Gates of Baker & McKenzie LLP for Federal
Express Corporation.

Mark Rademacher, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Quinn, Hairston and Ritchie, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Federal Express Corporation has applied to register
the following marks in standard character form for “pick-
up, transportation, storage and delivery of documents,
packages and freight by land and air”: (1) FEDEX CUSTOM
CRITICAL SURFACE EXPEDITE NETWORK (SURFACE, EXPEDITE, and
NETWORK disclaimed); (2) FEDEX CUSTOM CRITICAL AIR EXPEDITE
NETWORK (AIR, EXPEDITE, and NETWORK disclaimed; (3) FEDEX
CUSTOM CRITICAL AIR EXPEDITE EXCLUSIVE USE (AIR, EXPEDITE,
and EXCLUSIVE USE disclaimed); and (4) FEDEX CUSTOM
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 78726298; 78726303; 78726306; and 78726310
2
CRITICAL SURFACE EXPEDITE EXCLUSIVE USE (SURFACE, EXPEDITE,
and EXCLUSIVE USE disclaimed).1
The trademark examining attorney refused registration
in each application on two grounds. First, the examining
attorney held that applicant’s marks are not registrable
under the provisions of Section 2(d) of the Trademark Act
because they are likely to cause confusion with four
previously registered marks.
Second, the examining attorney refused registration of
applicant’s marks in the absence of a disclaimer of the
additional wording CUSTOM CRITICAL. The examining attorney
maintains that CUSTOM CRITICAL is merely descriptive of
applicant’s identified services within the meaning of
Section 2(e)(1) of the Trademark Act.
After the examining attorney made the refusals to
register final, applicant appealed. Applicant and the
examining attorney have filed briefs.
In view of the common questions of law and fact that
are involved in the four applications, and in the interests
of judicial economy, we have consolidated the applications

1 Application Serial Nos. 78726298, 78726303, 78726306, and
78726310, respectively, each filed October 4, 2005, and asserting
a bona fide intention to use the mark in commerce.
Ser Nos. 78726298; 78726303; 78726306; and 78726310
3
for purposes of our final opinion.2 Thus, we have issued
this single opinion.
As a preliminary matter, we address an evidentiary
issue. Applicant submitted with its main brief in each
application copies of registrations it owns for marks that
include the term “FEDEX,” as part of its effort to overcome
the refusal of registration. These exhibits are untimely
and the examining attorney’s objection to them is
sustained. Trademark Rule 2.142(d). In view thereof, we
have not considered them.
Section 2(d) Refusal
We turn first to the refusal to register under Section
2(d). In connection with each application, the examining
attorney cited the following four registrations, all of
which are currently in force and cover, inter alia, pick-
up, transportation, storage/warehousing and delivery of
documents, packages and freight by land/air: Registration
No. 3055466 issued January 31, 2006 for the mark FILE,
PRINT FEDEX KINKO’S; Registration No. 3124984 issued August
1, 2006 for the mark FEDEX KINKO’S OFFICE AND PRINT CENTER
and design (OFFICE AND PRINT CENTER disclaimed);

2 We also note that the briefs and evidentiary record in the four
applications are essentially the same. Citations to the briefs
refer to the briefs filed in application Serial No. 78726298.
However, we have, of course, considered all arguments and
evidence filed in each case.
Ser Nos. 78726298; 78726303; 78726306; and 78726310
4
Registration No. 3227997 issued April 10, 2007 for the mark
FEDEX KINKO’S OFFICE AND PRINT CENTER and design (OFFICE
AND PRINT CENTER disclaimed), with the colors purple, blue,
green and orange claimed as a feature of the mark; and
Registration No. 2935604 issued March 22, 2005 on the
Supplemental Register for the mark SURFACE EXPEDITE. The
first three registrations are jointly owned by applicant
and FedEx Office & Print Services, Inc. (hereinafter “FedEx
Office”); and the remaining registration is currently owned
by FedEx Custom Critical, Inc. (hereinafter “FedEx
Custom”). Applicant does not dispute that the services are
identical in view of the fact that each application and
each cited registration covers pick-up, transportation,
storage/warehousing and delivery of documents, packages and
freight by land/air. Neither does applicant dispute that
the mark in each application is similar to the mark in each
cited registration. Indeed, applicant makes no mention of
the similarities/dissimilarities between the marks and
services in its responses to the examining attorney’s
Office actions, request for reconsideration, and brief.
Rather, applicant argues that it and the owners of the
cited registrations have a common parent, that there is,
therefore, a “unity of control” under the holding of In re
Wella A.G., 5 USPQ2d 1359 (TTAB 1987), and thus, there is
Ser Nos. 78726298; 78726303; 78726306; and 78726310
5
no likelihood of confusion. Specifically, applicant states
that:
… because Fedex Corporation directly owns
Applicant (Federal Express Corporation), FedEx
Custom Critical, Inc. and Fedex Office and Print
Services, Inc., control over the mark at issue in
this case and the cited marks resides in a single
source. There is no likelihood of confusion as
to source between services offered by Federal
Express Corporation, FedEx Custom Critical, Inc.
and Fedex Office and Print Services, Inc. because
they all are wholly owned and controlled by Fedex
Corporation. Purchasers will know that services
emanating from subsidiaries of Fedex Corporation
emanate from a single source. Because Applicant
(Federal Express Corporation), FedEx Custom
Critical, Inc., and Fedex Office and Print
Services, Inc. are wholly owned and controlled by
the same parent company, Fedex Corporation, all
use of marks owned by these subsidiaries inures
to the ultimate benefit of Fedex Corporation.”
(italics in original; citations omitted)

Brief, p. 4.

In support of its position, applicant relies on the
following materials: (1) attachments to annual reports
submitted by FedEx Corporation to the United States
Securities and Exchange Commission. These documents list
applicant, FedEx Office, and FedEx Custom as wholly owned
subsidiaries of FedEx Corporation; and (2) an excerpt from
applicant’s 2006 annual report to the United States
Securities and Exchange Commission describing applicant’s
acquisition of all of the assets of Kinko’s, Inc.
Ser Nos. 78726298; 78726303; 78726306; and 78726310
6
The examining attorney, on the other hand, maintains
that because applicant, FedEx Office and FedEx Custom are
not wholly owned subsidiaries of one another, but rather
sister corporations which are subsidiaries of parent FedEx
Corporation, there must be evidence “to establish how one
sister corporation control[s] the trademark activities of
the other to establish unity of control to support the
contention that the sister corporations constitute a single
source.” Brief, unnumbered p. 5.
In Wella, the applicant Wella A.G. sought to register
the mark WELLASTRATE for hair care products. The examining
attorney refused registration under Section 2(d) in view of
the marks WELLA, WELLASOL, WELLA STREAK and WELLATONE for
various hair care products, all registered in the name of
Wella Corporation (Wella U.S.), a subsidiary of Wella A.G.
When an appeal was taken, the Board affirmed the refusal to
register. The Board held that Section 2(d) bars
registration of a mark that so resembles a mark registered
or used “by another” as to be likely to cause confusion and
that, because Wella U.S. was a separate legal entity from
Wella A.G., Wella U.S. was “another” within the meaning of
Section 2(d) and Wella A.G. was not entitled to
registration of the mark WELLASTRATE. Wella A.G. appealed
the Board’s decision to the U.S. Court of Appeals for the
Ser Nos. 78726298; 78726303; 78726306; and 78726310
7
Federal Circuit (CAFC). The CAFC vacated the Board’s
decision and remanded the application to the Board for
further action in accordance with its opinion. In
remanding the case for further action, the CAFC stated that
the Board had “taken an unduly, unnecessarily, and
improperly narrow view of Section 2(d)” and had failed to
address the question of whether the public is likely to
believe that the source of hair care products sold under
the WELLASTRATE trademark is Wella U.S., rather than Wella
A.G. or the “Wella organization,” which question the statue
required the Board to address. In addition, the CAFC
criticized the Board’s decision for affirming the refusal
to register under Section 2(d) without determining “whether
under the circumstances there was in fact any likelihood of
confusion, or to explain what that confusion would be.” On
remand, the Board reversed the Section 2(d) refusal stating
at 5 USPQ2d at 1361 that:
… a determination must be made as to whether
there exists a likelihood of confusion as to
source, that is, whether purchasers would believe
that particular goods or services emanate from a
single source, when in fact those goods or
services emanate from more than a single source.
Clearly, the Court views the concept of ‘source’
as encompassing more than ‘legal entity.’ Thus,
in this case, we are required to determine
whether Wella A.G. and Wella U.S. are the same
source or different sources. If we find that the
two entities are the same source, there could, of
course, be no confusion as to source, and the
Ser Nos. 78726298; 78726303; 78726306; and 78726310
8
refusal under Section 2(d) may not stand. The
question of whether Wella U.S. and Wella A.G. are
the same source is a question of fact.
The existence of a related company
relationship between Wella U.S. and Wella A.G. is
not, in itself, a basis for finding that any
‘WELLA’ product emanating from either of the two
companies emanates from the same source.
Besides the existence of a legal relationship,
there must also be a unity of control over the
use of the trademarks. ‘Control’ and ‘source’
are inextricably linked. If, notwithstanding the
legal relationship between entities, each entity
exclusively controls the nature and quality of
the goods to which it applies one or more of the
various ‘WELLA’ trademarks, the two entities are
in fact separate sources. Wella A.G. has made of
record a declaration of the executive vice
president of Wella U.S., which declaration states
that Wella A.G. owns substantially all the
outstanding stock of Wella U.S. and ‘thus
controls the activities and operations of Wella
U.S., including the selection, adoption and use
of the trademarks.’ While the declaration
contains no details of how this control is
exercised, the declaration is sufficient, absent
contradictory evidence in the record, to
establish that control over the use of all the
‘WELLA’ trademarks in the United States resides
in a single source.

The facts in this case differ from those in Wella in
several respects. As previously noted, the applicant
herein is a joint owner of three of the cited
registrations, namely Registration Nos. 3055466, 3124984
and 3227997. As a joint owner of the registrations,
applicant is presumed to at least share control over the
use of the marks in these registrations and, thus, there is
no issue that the services in these registrations and the
Ser Nos. 78726298; 78726303; 78726306; and 78726310
9
involved applications are provided under marks controlled,
at least in part, by the same entity. In other words, with
respect to these registrations and the involved
applications, there is no question about “unity of control”
that must be addressed, as was required in Wella. In view
thereof, the Section 2(d) refusal to register in view of
these registrations is in error.
Insofar as cited registration Registration No. 2935604
is concerned, it is owned solely by FedEx Custom. Unlike
the applicant and the owner of the cited registration in
Wella, the applicant and FedEx Custom are not parent and
subsidiary, but rather sister corporations which are wholly
owned subsidiaries of parent FedEx Corporation. In this
regard, we note that TMEP §1201.07(b)(iii) states that:
If neither the applicant nor the registrant owns
all or substantially all of the other entity, the
applicant bears a more substantial burden to
establish that unity of control is present. For
instance, if both the applicant and the
registrant are wholly owned by a third common
parent, the applicant would have to provide
detailed evidence to establish how one sister
corporation controlled the trademark activities
of the other to establish unity of control to
support the contention that the sister
corporations constitute a single source. … The
applicant’s evidence or explanation should
generally be supported by an affidavit or a
declaration under 37 C.F.R. §2.20. (citations
omitted)

Ser Nos. 78726298; 78726303; 78726306; and 78726310
10
In this case, the mere fact that applicant and FedEx
Custom are sister corporations which are wholly owned
subsidiaries of parent FedEx Corporation is insufficient,
in and of itself, to establish unity of control.
Furthermore, unlike the applicant in Wella, the instant
applicant has not provided evidence or an explanation which
establishes how it and FedEx Custom each share or control
the trademark activities of the other, so as to establish
unity of control to support the contention that it and
FedEx Custom constitute a single source. So as to be
clear, there is nothing in the attachments and excerpts
from the annual reports submitted by applicant which
explain how applicant and FedEx Custom each control the
trademark activities of the other sufficient to establish
unity of control. Having failed to provide such evidence
or explanation, we are unable to conclude that applicant
and FedEx Custom are the same source for determining
whether Registration No. 2935604 serves as a bar to
registration of applicant’s marks under Section 2(d).
We turn then to a determination of the issue of
likelihood of confusion under Section 2(d). This
determination is based on an analysis of all of the facts
in evidence that are relevant to the factors bearing on the
likelihood of confusion issue. See In re E. I. du Pont de
Ser Nos. 78726298; 78726303; 78726306; and 78726310
11
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973);
See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (fed.
Cir. 2005); In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Restaurants
inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We begin our analysis with the second du Pont factor,
under which we determine the similarity or dissimilarity of
the services as identified in the applications and cited
registration, respectively. In this case, the services are
identical in that each of the applications and the cited
registration cover pick-up, transportation, storage and
delivery of documents, packages and freight by air.
Insofar as the third du Pont factor is concerned, in view
of the identity of the services, we must presume that the
channels of trade and purchasers for the services are
identical. As previously indicated, applicant does not
dispute the identity of the services, trade channels and
purchasers.
We next consider the first du Pont factor which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression.
Ser Nos. 78726298; 78726303; 78726306; and 78726310
12
With respect to the marks, we are mindful that where, as
here, the services are identical, the degree of similarity
necessary to find a likelihood of confusion need not be as
great as where there is a recognizable disparity between
the services. Century 21 Real Estate Corp. v. Century Life
of American, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
Applicant’s marks are: (1) FEDEX CUSTOM CRITICAL
SURFACE EXPEDITE NETWORK; (2) FEDEX CUSTOM CRITICAL AIR
EXPEDITE NETWORK; (3) FEDEX CUSTOM CRITICAL AIR EXPEDITE
EXCLUSIVE USE; and (4) FEDEX CUSTOM CRITICAL SURFACE
EXPEDITE EXCLUSIVE USE. The cited registered mark is
SURFACE EXPEDITE.
Although there are differences in each of applicant’s
marks and the cited registered mark, we nonetheless find
that the marks are sufficiently similar that when applied
to the identical services in this case, confusion is likely
to result. Specifically, persons are likely to view
applicant’s marks FEDEX CUSTOM CRITICAL SURFACE EXPEDITE
NETWORK, FEDEX CUSTOM CRITICAL AIR EXPEDITE NETWORK, FEDEX
CUSTOM CRITICAL AIR EXPEDITE EXCLUSIVE USE and FEDEX CUSTOM
CRITICAL SURFACE EXPEDITE EXCLUSIVE USE, and the cited
registered mark SURFACE EXPEDITE as variant marks
indicating pick-up, transportation, storage and delivery of
Ser Nos. 78726298; 78726303; 78726306; and 78726310
13
documents, packages and freight by air emanating from the
same source. Again, applicant does not dispute the
similarities in the marks.
We recognize that the cited registered mark SURFACE
EXPEDITE issued on the Supplemental Register. In other
words, we must presume that the cited registered mark is
merely descriptive of the identified services. It is well
settled, however, that even weak marks are entitled to
protection against registration of similar marks for
identical and/or closely related goods and services. See
King Candy Co. v. Eunice King’s Kitchen, Inc., 182 USPQ
108, 109 (CCPA 1974) [likelihood of confusion “is to be
avoided as much as between ‘weak’ marks as between ‘strong’
marks, or as between a ‘weak’ mark and a ‘strong’ mark”];
and In re The Clorox Co., 578 F.2d 305, 198 USPQ 337 (CCPA
1978) [ERASE for a laundry soil and stain remover held
confusingly similar to STAIN ERASER, registered on the
Supplemental Register, for a stain remover].
In view of the foregoing, we find that a likelihood of
confusion as to source would occur as a result of the
contemporaneous use of each of applicant’s marks and the
mark in Registration No. 2935604.

Ser Nos. 78726298; 78726303; 78726306; and 78726310
14
Disclaimer Requirement
We next address the issue of the requirement for a
disclaimer of the wording CUSTOM CRITICAL in applicant’s
marks FEDEX CUSTOM CRITICAL SURFACE EXPEDITE NETWORK, FEDEX
CUSTOM CRITICAL AIR EXPEDITE NETWORK, FEDEX CUSTOM CRITICAL
AIR EXPEDITE EXCLUSIVE USE and FEDEX CUSTOM CRITICAL
SURFACE EXPEDITE EXCLUSIVE USE. An examining attorney may
require an applicant to disclaim an unregistrable component
of a mark otherwise registrable. Trademark Act Section
6(a). Merely descriptive terms are unregistrable, under
Trademark Act Section 2(e)(1) and, therefore, are subject
to disclaimer if the mark is otherwise registrable.
Failure to comply with a disclaimer requirement is grounds
for refusal of registration. See In re Omaha National
Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re
Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975);
In re National Presto Industries, Inc., 197 USPQ 188 (TTAB
1977); and In re Pendleton Tool Industries, Inc., 157 USPQ
114 (TTAB 1968).
The examining attorney maintains that the term CUSTOM
CRITICAL is merely descriptive of a feature of applicant’s
services. Specifically, the examining attorney argues
that:
Ser Nos. 78726298; 78726303; 78726306; and 78726310
15
In the context of pick-up, transportation,
storage and delivery of documents, packages and
freight by land and air, the words CUSTOM
CRITICAL immediately inform consumers that the
services feature time-critical shipping where the
delivery time is customer-specific, i.e.,
customized.

Brief, unnumbered pp. 5-6. In support of his position, the
examining attorney submitted the following definitions from
the Encarta online dictionary:
critical: 4. essential: absolutely necessary for
the success of something.

custom: adjective 1. made to order: made or
built to order

The examining attorney also points to the following
statement in a press release describing the services:
“FedEx Custom Critical provides customized surface and/or
air solutions with the timing, handling expertise and
transportation mode you require … .”
Applicant, in urging reversal of the refusal to
register in the absence of a disclaimer, argues that the
term CUSTOM CRITICAL does not immediately convey to
consumers the nature of applicant’s services, and is, at
best, suggestive of the services. Applicant also maintains
that it owns four registrations for marks that include the
term CUSTOM CRITICAL, without a disclaimer thereof, for
essentially identical services. Thus, it is applicant’s
Ser Nos. 78726298; 78726303; 78726306; and 78726310
16
position that it should not be required to disclaim CUSTOM
CRITICAL in the involved applications.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Further, it is well-established that the determination of
mere descriptiveness must be made not in the abstract or on
the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the term is being used or is intended to be used on
or in connection with those goods or services, and the
possible significance that the term would have to the
Ser Nos. 78726298; 78726303; 78726306; and 78726310
17
average purchaser of the goods or services. In re
Recovery, 196 USPQ 830 (TTAB 1977).
If, however, when the goods or services are
encountered under a term, a multistage reasoning process,
or resort to imagination, is required in order to determine
the attributes or characteristics of the product or
services, the term is suggestive rather than merely
descriptive. See In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215 (CCPA 1978); and In re Atavio, 25 USPQ2d
1361 (TTAB 1992). To the extent that there is any doubt in
drawing the line of demarcation between a suggestive term
and a merely descriptive term, such doubt is resolved in
applicant’s favor. In re Atavio, supra at 1363.
Applying these principles to the evidence of record,
we conclude that CUSTOM CRITICAL, as used in applicant’s
marks, has not been proven to be merely descriptive of
pick-up, transportation, storage and delivery of documents,
packages and freight by land and air. As used in the
marks, CUSTOM CRITICAL modifies SURFACE EXPEDITE and AIR
EXPEDITE, respectively. However, SURFACE EXPEDITE and AIR
EXPEDITE are not “custom critical,” as such. It requires
some imagination and mental steps to conclude from CUSTOM
CRITICAL in applicant’s marks FEDEX CUSTOM CRITICAL SURFACE
EXPEDITE NETWORK, FEDEX CUSTOM CRITICAL AIR EXPEDITE
Ser Nos. 78726298; 78726303; 78726306; and 78726310
18
NETWORK, FEDEX CUSTOM CRITICAL AIR EXPEDITE EXCLUSIVE USE
and FEDEX CUSTOM CRITICAL SURFACE EXPEDITE EXCLUSIVE USE,
that applicant’s services involve “custom” pick-up,
transportation, storage and delivery of “critical”
documents, packages and freight by land and air services.
Therefore, we conclude that the examining attorney has
not established that the term CUSTOM CRITICAL, when applied
to applicant’s services is merely descriptive; that some
mental processing or cogitation is required in order for
customers and prospective customers for applicant’s
services to understand the significance of the term CUSTOM
CRICIAL as it pertains to applicant’s services.
Decision: The refusal to register under Section 2(d)
is reversed in each application notwithstanding the
existence of Registration Nos. 3055466, 3124984, and
3227997. The refusal to register in each application in
the absence of a disclaimer of CUSTOM CRITICAL also is
reversed. However, the refusal to register under Section
2(d) is affirmed in each application in view of
Registration No. 2935604.