U
`
`I
`
`[(17in
`
`U.S. Palenl& TMOFCITM Mail chtDt. #01
`
`HIIIIIIIHIIIIIIIlllillllllllllllllllllllIIIHIII
`07284 998
`
`,
`‘
`.
`v THE UNITED STATES PATEN I AND TRADEMARK OFFICE
`
`Applicant:
`
`Mayo Foundation
`
`Serial No.:
`
`75/298,180
`
`Filed:
`
`Mark:
`
`May 27, 1997
`
`MAYO ONE
`
`Examining Attorney
`Daniel P. Vavonese
`
`Law Office 109
`
`—_________)
`
`C
`
`Signature
`
`The Examining Attorney has refused registration of the above-identified mark under
`my3V4”
`Section 2(d) of the Lanham Act because he believes that Applicant’s mark, MAYOFE.1:
`Express Mail mailing label number
`TB586319932US
`
`RESPOJSSJQ
`
`I
`
`Assistant Commissioner
`for Trademarks
`BOX RESPONSES-—NO FEE
`
`2900 Crystal Drive
`Arlington, VA 22202—35 13
`
`Dear Sir:
`
`This responds to Office Action No. 1, dated February 2, 1998, in which registration of the
`
`above-identified mark was refused under Section 2(d) of the Lanharn Act because the Examining
`
`Attorney believes that Applicant’s mark is confusingly similar to a registered mark. The
`
`Examining Attorney also inquired whether Applicant is the owner of certain registrations. This
`
`response addresses the Examining Attorney‘s concerns in the order they were raised.
`
`Registration No. 2,046,966
`
`Date of Deposit
`
`July 28, 1998
`
`I hereby certify that this paper or fee is being deposited with the
`United States Postal Service “Express Mail Post Office to
`Addressee” service under 37 CFR 1.10 on the date indicated above
`and is addressed to the Assistant Commissioner for Trademarks,
`2900 Crystal Drive, Arlington, Virginia 22202-3513
`Elvina Smith
`
`8 2
`
`4
`
`g
`
`‘*
`
`Name
`
`

`

`
`
`I!
`
`Q
`
`used in connection with the identified services, is likely to be confused with Registration No.
`
`2,046,966. Applicant respectfully disagrees with the Examining Attorney’s determination that
`
`confusion is likely. Applicant, however, has obtained Registrant’s consent to the registration of
`
`Applicant’s mark. This consent is the result of a negotiated Settlement Agreement entered into to
`
`resolve a dispute between the parties. Before executing the Agreement, Applicant and Registrant
`
`undertook a careful evaluation of their market situation and determined that confusion between
`
`“J’l/
`
`Applicant is the owner ofReg. Nos. 1,613,827; 1,614,853; 1,670,238; 2,025,755; and 2,028,929.
`
`the two marks was unlikely, based in part upon the coexistence of the marks for approximately
`
`fourteen years without any incidents of actual confusion occurring. A copy of this consent is
`
`8 attached hereto as Exhibit A.
`
`The Federal Circuit has repeatedly held that an agreement between two parties whereby
`
`the owner of a federally registered mark (or marks) consents to the federal registration of the
`
`other’s mark should be given considerable weight by the Examining Attorney and the PTO in
`
`determining whether there is a likelihood of confusion. In re Four Seasons Hotels Limited, 987
`
`F.2d 1565, 1566 (Fed. Cir. 1993). Here, those parties most interested in preventing confusion
`
`have reached an appropriate solution. The Federal Circuit has indicated that it is “desirable to
`
`encourage th[is] kind of cooperative dispute resolution.” Bongrain Int’l Corp. v. Delice de France
`
`Inc., 1 USPQ2d 1775, 1776 (Fed. Cir. 1987). Accordingly, the Examining Attorney should give
`
`considerable weight to this determination and approve Applicant’s mark for publication.
`
`Prior Registrations
`
`The Examining Attorney inquired whether Applicant is the owner of certain registrations.
`
`

`

`I»!
`
`‘0'
`
`CONCLUSION
`
`With the Examining Attorney’s reconsideration and withdrawal of his refusal of
`
`registration under Section 2(d) of the Lanham Act, the application appears to be in proper form for
`
`publication. Accordingly, Applicant respectfully requests that the mark be published in the
`
`Official Gazette pursuant to 15 U.S.C. § 1062(a).
`
`0,;ng ,
`
`_
`
`Respectfully submitted,
`
`_ / '
`
`Minneapolis, Minnesota 55402
`(612) 343—2178
`Attorneys for Applicant
`
`. Buckingham, Esq.
`urke, Esq.
`V
`Joshua J.
`Dorsey & Whitney LLP
`Pillsbury Center South
`220 South Sixth Street
`
`
`
`

`

`esident (
`
`said mark in connection with its services since May 1, 1978, believes that there is no likelihood
`
`of confusion with respect to the use of this mark, and hereby consents to the registration of the
`
`mark set forth in the above identified application by Mayo Foundation for the services set forth
`
`therein.
`
`Respectfully submitted,
`
`MAYO AVIATION, INC.
`
`Dateiwcfifia
`
`‘
`
`j:
`
`1,
`l‘s.
`'
`Gwendolyn Mayo,
`
`.
`
`.
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In Re Trademark Application of
`Mayo Foundation
`
`Serial No.2 75/298,180
`
`Filed: May 27, 1997
`
`For:
`
`51A Y 0 ONE
`
`axvvvvvvv
`
`V
`
`CONSENT
`
`Mayo Aviation, Inc, 7765 S. Peoria Street, Englewood, Colorado 80112, which is
`
`using the service mark MAYO AVIATION to identify its air taxi and ambulance services and
`
`which owns a United States Trademark Registration No. 2,046,966, and which has been using
`
`
`
`

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.

We are unable to display this document.

Connectivity issues with tsdrapi.uspto.gov. Try again now (HTTP Error 429: ).

Refresh this Document
Go to the Docket