Wednesday, December 09, 2009

Appying Wella, TTAB Reverses 12 out of 16 Section 2(d) Refusals

In this consolidated appeal involving four service mark applications, Federal Express Corporation faced four cited registrations [for a total of 16 Section 2(d) refusals]. The Board applied In re Wella A.G., 5 USPQ2d 1359 (TTAB 1987), in determining whether, as to the cited registrations, Applicant had at least partial control over the registered marks, thereby mooting the refusals to register. In re Federal Express Corporation, Serial Nos. 78726298, 78726303, 78726306, and 78726310 (December 7, 2009) [not precedential].

The Section 2(d) refusals were based on three registrations as to which Applicant was a joint owner and a fourth registration owned by FedEx Custom, a sister corporation to Applicant. Both Applicant and FedEx Custom are owned by parent FedEx Corporation. As to the first three registrations, the Board found that:

as a joint owner of the registrations, applicant is presumed to at least share control over the use of the marks ... and, thus, there is no issue that the services in these registrations and the 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.

As to the fourth registration, the Board noted TMEP Section 1207(b)(iii), which 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." Here, Applicant did not provide "evidence or an explanation which establishes how it and FedEx Custom each share or control the trademark activities of the other...." The Board therefore could not conclude that Applicant and FedEx Custom are the "same source for determining whether [the third registration] serves as a bar to registration of applicant's marks under Section 2(d)]."

The Board then found Applicant's four applied-for marks confusingly similar to the fourth cited registration [the details of which are too mundane to repeat here], and it affirmed the 2(d) refusals.

Finally, the Board reversed four disclaimer requirements for the term CUSTOM CRITICAL, finding it not merely descriptive of "pick-up, transportation, storage and delivery of documents, packages and freight by land and air."

TTABlog postscript: Pamela Chestek, ip ownership guru, questions (here) whether Federal Express Corporation owns these marks.

Text Copyright John L. Welch 2009.


At 9:27 PM, Anonymous Mitchell Stabbe said...

Isn't this decision contrary to the general rule that the addition of a house mark CAN be sufficient to overcome a likelihood of confusion if the common elements of the respective mark are descriptive or highly suggestive (or diluted)? See, e.g., In re Fiesta Palms LLC, 85 U.S.P.Q.2d 1360, 1364 (TTAB 2007).

Has this case ever been followed in another decision?

Mitch Stabbe


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