UNITED STATES DEPARTMENT OF Cog/IERCE
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`Patent and Trademark Office
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`SERIAL N0.
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`APPLICANT
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`FORM PT931525 (5-90)
`~ ~ ~-—— era
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`PAPER NO.
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`ADDRESS:
`Assistant Commissioner
`for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`Ifno fees are enclosed, the address should include the word
`"Box Responses - No Fee."
`Please provide in all correspondence:
`
`1. Filing Date, serial number, mark and
`Applicant's name.
`2. Mailing date ofthis Office action
`3. Examining Attorney's name and
`Law Ofice number.
`4. Your telephone number and ZIP code.
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`'
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`ACTION N0.
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`descriptive of the registrant’s services and offers little trademark significance.
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`The examining attorney must analyze each case in two steps to determine whether there is a
`likelihood of confusion. First, the examining attorney must look at the marks themselves for
`similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de
`‘ Nemours & Ca, 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
`In this case, applicant‘s mark
`for MAYO ONE and registrant's mark for MAYO AVIATION both contain the dominant term
`"MAYO" and are likely to have the same commercial impression. The wording AVIATION is
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`A PROPER RESPONSE TO THIS OFFICE ACTION MUST BE RECEIVED WITHIN 6
`MONTHS FROM THE DATE OF THIS ACTION IN ORDER TO AVOID ABANDONMENT.
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`For your convenience and to ensure proper handling ofyour response, a label has been enclosed.
`Please attach it to the upper right corner ofyour response. If the label is not enclosed, print or type
`the Trademark Law Office No, Serial No, andMgr in the upper right corner ofyour response.
`
`RE: Serial Number: 75/298180
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`The assigned examining attorney has reviewed the referenced application and determined the
`following.
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`LIKELIHOOD OF CONFUSION
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`The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C.
`Section 1052(d), because the applicant's mark, when used on or in connection with the identified
`services, so resembles the mark in US. Registration No. 2046966 as to be likely to cause
`confusion, to cause mistake, or to deceive. TMEP section 1207. See the enclosed registration.
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`VB
`Q‘l
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`A
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`75/298180
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`Second, the examining attorney must compare the goods or services to determine if they are
`related or if the activities surrounding their marketing are such that confusion as to origin is
`likely.
`In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone
`and Telegraph Corp, 197 USPQ 910 (TTAB 1978); Guardian Products Ca, V. Scott Paper
`Co., 200 USPQ 738 (TTAB 1978).
`In this case,
`the mark MAYO AVIATION has been
`registered for air taxi and ambulance services, whereas the Applicant seeks to register its mark
`for emergency medical services.
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`It is well settled that the issue of likelihood of confiision between marks must be determined on
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`the basis of the goods or services as they are identified in the application and the registration.
`Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490,
`l USPQ2d 1813
`(Fed. Cir. 1987), Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177
`USPQ 76 (CCPA 1973).
`Since the identification of the applicant's services is broad,
`it is
`presumed that the application encompasses all emergency medical services of the type described,
`including those in the registrant's more specific identification,
`that they move in all normal
`channels of trade and that they are available for all potential customers. Therefore,
`it
`is
`presumed in this case that the Applicant’s services will include ambulance services. Applicant’s
`specimens support this where it states “Mayo One provides high-level emergency care during
`the transportation of critically ill or injured patients.” See Applicant’s specimens.
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`
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`In addition, the Applicant’s emergency medical care provided at the scene of accidents and
`during transportation is likely to be viewed as complementary to ambulance services. Since the
`Applicant and registrant provide related and complementary medical and transportation services,
`it is likely that consumers may be led to believe that applicant's emergency medical services are
`provided by the same source that provides the registrant’s air taxi and ambulance services,
`Therefore, the referenced appllication is likely to cause confusion with the enclosed registration,
`and the examining attorney must refuse registration.
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`Although the examining attorney has refused registration, the applicant may respond to the
`refiisal to register by submitting evidence and arguments in support of registration.
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`If the applicant chooses to respond to the refusals to register, the applicant must also respond to
`the following informality.
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`PRIOR REGISTRATION S
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`If the applicant is the owner of Registration Nos. 2028929, 2025755, 1670238, 1614853, and
`1613827, the applicant must submit a claim of ownership.
`37 C.F.R. Section 2.36, TMEP
`section 812. Please note that although the Applicant claimed ownership of US. Registration
`No. 1589666 in the application, that registration has been canceled and will not be printed on a
`registration. TMEP section 812.
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`

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`75/298180
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`
`
`it new
`Daniel P. Vavonese
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`Examining Attorney, Law Office 109
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`If you have any questions, please do not hesitate to contact me at the number below.
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`(703) 308-9109 x148
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`

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`*** User: EX996029 *** flial Number: 74613200 ***
`
`Word Mark
`MAYO AVIATION
`
`Goods/Services
`IC 039; US 100 105; G & S: air taxi and ambulance services; FIRST USE:
`1978.05.01; FIRST USE IN COMMERCE: 1978.06.01
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`3 *** Document Number: 58 ***
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`Mark Drawing Code
`(1) TYPED DRAWING
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`Serial Number
`74-613200
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`Filing Date
`1994.12.20
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`Registration Number
`2046966
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`Registration Date
`1997.03.25
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`Owner Name/Address
`Inc. CORPORATION COLORADO 7765 S. Peoria
`(REGISTRANT) Mayo Aviation,
`Street Englewood COLORADO 80112
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`Disclaimer
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “AVIATION” APART FROM THE
`MARK AS SHOWN
`
`Type of Mark
`SERVICE MARK
`
`Register
`PRINCIPAL—2(F)
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`*** Search:
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