Airescue International

Trademark Trial and Appeal Board

Feb 6, 2012

No. 77256390 (T.T.A.B. Feb. 6, 2012)

Mailed: February 6, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Airescue International
________

Serial No. 77256390
_______

Kristen M. Walsh of Nixon Peabody LLP for Airescue
International.

Barney L. Charlon, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Kuhlke, Taylor and Ritchie, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On August 15, 2007, Airescue International filed an
application to register AIRESCUE in standard characters on
the Principal Register for “fixed wing aircraft medical
service transport anywhere in the world” in International
Class 32. Applicant filed the application under Section
1(a) of the Trademark Act, 15 U.S.C. §1051(a), alleging
July 1, 1992, as the date of first use and first use in
commerce. In addition, applicant claims ownership of prior
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77256390
2
Registration No. 2092983 for the mark for
the same services. This registration includes a disclaimer
for the wording “AIR RESCUE.”
On May 6, 2008, in response to a refusal based on mere
descriptiveness under Section 2(e)(1) of the Trademark Act,
Trademark Act, 15 U.S.C. §1052(e), applicant amended the
application to seek registration under Section 2(f) of the
Trademark Act, 15 U.S.C. §1052(f), based on a claim of
acquired distinctiveness.
Initially, the examining attorney issued a final
refusal based on mere descriptiveness and applicant filed
an appeal to the Board on that ground alone. On August 24,
2009, the Board remanded the case to the examining attorney
for consideration of a request for reconsideration. On
September 15, 2009, the examining attorney, based on a
conversation with applicant’s prior counsel, issued a
priority action, indicating he would accept the showing of
acquired distinctiveness upon applicant’s approval of a
disclaimer of the wording AIR RESCUE. On March 16, 2010,
applicant, through new counsel, responded that the
requirement of a disclaimer was improper.1 Thereafter, the
examining attorney refused registration on the additional

1 As applicant notes this issue is not before the Board.
Serial No. 77256390
3
ground that the proposed mark is generic for the applied-
for services.2
The examining attorney has now made final the refusal
of the application under Section 2(e)(1) on the grounds
that (1) the proposed mark AIRESCUE is generic for the
applied-for services, or, in the alternative, (2) the
proposed mark AIRESCUE is highly descriptive and
applicant’s showing of acquired distinctiveness is not
sufficient to allow registration under Section 2(f) of the
Trademark Act.
GENERICNESS REFUSAL
Generic terms are terms that the relevant purchasing
public understands primarily as the common or class name
for the goods and/or services. TMEP 1209.01(c). Generic
terms are by definition incapable of indicating a
particular source of the goods and/or services, and cannot
be registered as trademarks and/or service marks; doing so
“would grant the owner of the mark a monopoly, since a
competitor could not describe his goods as what they are.”

2 Where an applicant responds to a mere descriptiveness refusal
under Section 2(e)(1) by asserting acquired distinctiveness and
the examining attorney determines the designation is generic, the
examining attorney must issue a new nonfinal action refusing
registration under Section 2(e)(1). TMEP §1209.02(a)(ii) (8th ed.
2011).

Serial No. 77256390
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In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987).
When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving
genericness by "clear evidence." Merrill Lynch, 4 USPQ2d
at 1143; see also In re Gould Paper Corp., 834 F.2d 1017, 5
USPQ2d 1110, 1111 (Fed. Cir. 1987); In re Wm. B. Coleman
Co., 93 USPQ2d 2019 (TTAB 2010). The critical issue is to
determine whether the record shows that members of the
relevant public primarily use or understand the term sought
to be registered to refer to the category or class of goods
or services in question. H. Marvin Ginn Corp. v.
International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986); In re Women's Publishing
Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992). Making this
determination “involves a two-step inquiry: First, what is
the genus of goods or services at issue? Second, is the
term sought to be registered ... understood by the relevant
public primarily to refer to that genus of goods or
services?” Ginn, 228 USPQ at 530. Evidence of the
public’s understanding of a term may be obtained from any
competent source, including testimony, surveys,
dictionaries, trade journals, newspapers and other
publications. Merrill Lynch, 4 USPQ2d at 1143, and In re
Serial No. 77256390
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Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ
961, 963 (Fed. Cir. 1985).
Turning to the first inquiry, the examining attorney
describes the genus as “air ambulance services” or
“aeromedical transport services.” The examining attorney
explains:
[T]he word AIR is defined as “Aircraft.” The
word “aircraft,” moreover, is defined as “an
airplane, helicopter, or other machine capable of
flight.” The word RESCUE is defined as “To set
free, as from danger or imprisonment; save.” The
term AIRESCUE, or “air rescue,” then, when
considered in connection with applicant’s “fixed
wing aircraft medical service transport anywhere
in the world,” denotes services in which aircraft
are used to save or free a person or persons from
medical danger, or, in other words, to rescue a
person or persons by air. Accordingly, by the
plain meaning of the designation AIRESCUE, or
“air rescue,” the class or genus of applicant’s
services, in that these services use aircraft to
provide emergency medical assistance, can be
defined as air ambulance or aeromedical transport
services, and these services may be performed
with the use of an airplane, helicopter or any
other machine capable of flight. ... Moreover,
two online directories categorize applicant’s
services as air ambulance services ... by virtue
of the plain meaning of the term AIRESCUE, or
“air rescue,” as well as applicant’s own
definition of its services and the definition of
applicant’s services in third-party business
directories, the class or genus of applicant’s
services can be defined as air ambulance or
aeromedical transport services.

Ex. Br. pp. 6-7.
Applicant argues that the examining attorney “fails to
acknowledge that within the aeromedical transport industry
Serial No. 77256390
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the fixed wing business is separate and distinct from the
rotor-wing (i.e., helicopter) scene response business.”
Reply Br. p. 1. Thus, the examining attorney’s description
of the genus is “improper because it is overly broad and
would include medevac rescue operations using helicopters,
‘search and recover’ (SAR) missions, and military missions,
none of which are services provided by Applicant or claimed
in the Application.” Br. p. 7. Applicant does not dispute
that it operates in the aeromedical transport industry and
that it is listed in directories as an air ambulance
provider; however, applicant contends that there is no
legal basis for defining “the genus of services for
purposes of a genericness analysis to be the name of the
general industry in which a trademark applicant operates.”
Reply Br. p. 2. Rather, applicant contends that “the genus
of services at issue is properly determined by reference to
the identification of services set out in the application.”
Br. p. 6.
In general, the genus is adequately defined by the
identification in the application. Magic Wand Inc. v. RDB
Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991).
See also In re Country Music Association Inc., 100 USPQ2d
1828 (TTAB 2011). The problem with the examining
attorney’s approach is that he defines the genus by the
Serial No. 77256390
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proposed mark, rather than the recited services. The
examining attorney relies on Park ‘N Fly v. Dollar Park &
Fly, Inc., 469 US 189, 224 USPQ 327, 329 (1985), in
support of this approach. Specifically, the examining
attorney points to the statement that “A generic term is
one that refers to the genus of which the particular
product is a species.”
The Park ‘N Fly decision concerned the issue of the
incontestability provisions in the Trademark Act and did
not address the question of how to define the genus in
considering whether a term is capable or incapable for
purposes of registration. Park ‘N Fly, 224 USPQ at 329.
(“This case requires us to consider the effect of the
incontestability provisions of the Lanham Act in the
context of an infringement action defended on the grounds
that the mark is merely descriptive.”) That is not the
issue at hand here, however, and we find it more
appropriate to follow the standard set forth in Magic Wand,
a case issued in 1991, six years after Park ‘N Fly. There,
the Court stated:
The description in the registration certificate
identifies the services in connection with which
the registrant uses the mark. The Lanham Act
permits cancellation when a “registered mark
becomes the generic name for the goods or
services ... for which it is registered ...”
Thus, a proper genericness inquiry focuses on the
Serial No. 77256390
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description of services set forth in the
certificate of registration.

Id. at 1552 (citations omitted).
Thus, we find that the genus of services at issue in
this case is adequately defined by applicant’s
identification of services, specifically, “fixed wing
aircraft medical service transport anywhere in the world.”
The evidence of record provides further clarification
that the genus includes “fixed-wing air ambulances”
provided on an “emergency” basis to “evacuate” and
transport patients. In re Reed Elsevier Properties Inc.,
77 USPQ2d 1649, 1655 (TTAB 2005)(the Board may look to the
record to interpret the nature of an applicant’s goods or
services), aff’d, 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed.
Cir. 2007). See also In re Steelbuilding.com, 415 F.3d
1293, 75 USPQ2d 1420 (Fed. Cir. 2005) The description of
applicant’s services in its brochure includes the provision
of “air ambulance jets,” “emergency operations” and “air
evacuation.” Applicant’s brochure attached to the October
7, 2010 Applicant Response. See also Copies of webpages
from applicant’s website attached to the November 4, 2010
Office Action which reference the services of “emergency
transports”. These aspects of the services are encompassed
by the identification “fixed wing aircraft medical service
Serial No. 77256390
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transport anywhere in the world.” But, as applicant points
out, it does not include “medevac rescue operations using
helicopters, ‘search and recover’ (SAR) missions, and
military missions.”
The record shows that the relevant purchasers would be
institutions (e.g., university medical centers),
corporations (e.g., insurance companies), the U.S.
military, and individuals and families.
Turning to the second inquiry, the examining attorney
argues that AIRESCUE or air rescue, is understood by the
relevant public primarily to refer to air ambulance or
aeromedical transport services. We will proceed in our
analysis of the evidence of record as it pertains to the
genus identified above. In support of his assertion that
the mark is generic the examining attorney submitted the
following dictionary definitions:
Air: 4. Aircraft: send troops to Europe by air.
The American Heritage Dictionary of the English
Language (3rd 1992), attached to November 24,
2007 Office Action p. 1;

Rescue: to set free, as from danger or
imprisonment; save. The American Heritage
Dictionary of the English Language (3rd 1992),
attached to November 24, 2007 Office Action p. 1;
and

Serial No. 77256390
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Evacuate: remove (someone) from a place of
danger to a safe place. Oxford University Press
(2011).3

He also submitted printouts from a variety of third-
party websites. Below are representative samples organized
according to the examining attorney’s categorization
(emphasis added):
i. Business
AirMed Air Ambulance In the News ... but as the
leading air rescue company, we do tend to get
attention near and abroad. Whether it’s for
missions to exotic locations, procedures rarely
done in the air, or for being pioneers in the
industry, we’re always grateful for the
recognition. After all, it allows us to cast an
even larger safety net across the world. Latest
news: Leading travel company, AVS, endorses
AirMed memberships to its clients.
(www.airmed.com, attached to May 21, 2008 Office
Action);

Air-Rescuetek.com ... Welcome to Air-
Rescuetek.com – your one-stop guide to worldwide
news, safety and product/technology development
today’s emergency aeromedical and air rescue
professionals. (www.air-rescuetek.com attached to
April 7, 2010 Office Action);

Urgent Communications ... Air Methods Corp. is
among several North American air-ambulance and
medical-transportation fleets that have switched
to Iridium Satellite of Bethesda, Md., for
mobile-satellite communication services. In
addition, the California Shock and Trauma Air
Rescue fleet of helicopters and fixed-wing

3 We take judicial notice of this dictionary definition. In re
Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). See also
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

Serial No. 77256390
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aircrafts have deployed the company’s voice,
automated-tracking and text-messaging services.
(http://urgentcomm.com attached to November 4,
2010 Office Action);

ii. Government

SBUH members flying air rescue soar through
certification exam ... The team provides
emergency medical scene response and transfers
critical-care patients between facilities. The
air response is provided in cooperation with the
Suffolk County Police Department aviation
section. (http://www.thecommunicator.org attached
to November 4, 2010 Office Action);

Air Rescue ... [Broward Sheriff’s Office] Air
Rescue Unit provides emergency medical helicopter
transport for all Broward County municipalities
and unincorporated areas.” (sheriff.org attached
to May 21, 2008 Office Action);

Air Rescue Team Formed In Brevard County
(cfnews13.com attached to December 16, 2008
Office Action);

iii. Media

Hondo new home to air rescue base ... Air Evac
Lifeteam is expanding Texas operations with a new
base in Hondo for air rescue in rural areas of
Southwest Texas. This is the air ambulance
service’s 83rd base and will serve rural hospitals
within a 70-mile radius of Hondo. Each crew has
a pilot, registered nurse and paramedic. While
most air ambulance services are based in large
cities at major hospital systems or public
hospitals, the private Air Evac locates in rural
areas and sells annual memberships ranging from
$50 to $60 per household and makes the pricey
flight free if the service is used. (San
Antonio-Express News (December 8, 2008) attached
to December 16, 2008 Office Action);

Another air-rescue for snake bite victim ... A
48-year-old man was airlifted to the University
of Virginia Medical Center in Charlottesville
Serial No. 77256390
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yesterday afternoon after suffering multiple
snake bites on the Blue Ridge Parkway.
(http://hikinginthesmokys.blogspot.com, attached
to April 7, 2010 Office Action);

CNN ... Tough air rescue launched for ailing
Arctic doctor … A rescue mission was under way
Thursday to evacuate a doctor who has been
treating herself for a lump in her breast while
on duty at the South Pole. Two LC130 cargo
planes left Travis Air Force Base on Thursday
morning en route to Hickam Air Force Base,
Hawaii, for the long trip to McMurdo Station in
Antarctica, then on to AmundsenScott Research
Station, where Jerri Nielsen is the bases only
doctor. ... If approved, one plane could fly as
early as Monday to AdmundsenScott.
(http://articles.cnn.com attached to November 4,
2010 Office Action);

DPS air rescues hurting ... If an injured hiker
on the San Francisco Peaks needs a state rescue
helicopter or a motorist crashes on I-40 late at
night, will DPS be there to answer the call? ...
confirms that 50 percent of all air rescue calls
go unanswered and that there are 61 fewer patrol
officers than in December 2008. (azdailysun.com
attached to November 4, 2010 Office Action); and

Air-rescue safety stressed ... More than 10
percent of the air ambulance helicopters designed
to assist emergency situations have crashed in
the past five years, according to USA Today.
(www.highbeam.com attached to November 4, 2010
Office Action).

In addition, the examining attorney points to
applicant’s specimen of use wherein the services are
described as “logistically difficult medical evacuations”
and that it has the “most experienced medical team in the
international air evacuation industry.” The examining
Serial No. 77256390
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notes that the words evacuate and rescue have similar
meanings. He argues that:
[The] distinction, then, between the words
‘evacuate’ and ‘rescue’ in the present case is
largely a semantic one in that both words are
intended to convey the notion of removing or
setting free from danger. ... Thus, applicant’s
own specimen of use clearly indicates that
applicant’s services can properly be defined as
using aircraft to evacuate or rescue someone from
danger. And as the evidence of record amply
demonstrates, the term AIRESCUE, or “air rescue,”
is understood by the relevant public to refer to
such services.

Br. p. 13.

In traversing the refusal, applicant states that it
“is a commercial entity that transports people who need
medical assistance while in transit. Applicant does not
rescue people in emergency situations or engage in so-
called ‘search and rescue’ missions.” Br. p. 1.
Applicant argues that the examining attorney’s
evidence does not support the refusal. Applicant observes
that none of the “Internet references” uses AIRESCUE or air
rescue as the common commercial name for “fixed wing
aircraft medical services transport anywhere in the world”
and most of the references are to emergency medical
helicopter transport or military and civilian search and
rescue missions. Applicant acknowledges that three
examples use the term air rescue in the context of air
Serial No. 77256390
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ambulance companies and one reference uses air rescue to
refer to medical evacuation services and a variety of
emergency and non-emergency services offered to members by
a travel insurer. Applicant contends this last reference
“appears to be an infringement of Applicant’s AIRESCUE
mark.” Br. p. 9. Applicant argues that:
[The] Internet references provided by the
Trademark Examining Attorney establish that the
term ‘air rescue’ is understood by consumers to
refer primarily to emergency medical helicopter
transport services – services not within the
correct “genus” of services for purposes of this
genericness analysis and, indeed, services not
even covered by the Application or provided by
Applicant under the AIRESCUE mark.

Br. p. 10.

In addition, applicant argues that the evidence is
“insufficient with regard to how relevant consumers
understand AIRESCUE, as opposed to the separate words ‘air
rescue.’” Noting, that when the term is a compound word,
“particular consideration would be given to whether the
compound word has a meaning that is different from the
meaning of the separate words.” Br. p. 10. Specifically,
applicant argues that there is no evidence “that the
general public or the relevant consumers, that is, the
medical transport community, would attribute the same
meaning to AIRESCUE and ‘air rescue.’ Indeed, such a
Serial No. 77256390
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conclusion is belied by the thirty-two Customer’s
Statements previously submitted by Applicant.” Br. p. 11.
In support of its position, applicant submitted (1)
excerpts from Webster’s Third New International Dictionary
(Unabridged) and Merriam-Webster’s online dictionary
showing an absence of an entry for the term “air rescue,”
and (2) a search result listing based on the search of the
term “AIRESCUE” retrieved from the search engine Google,
that brings up applicant in the first 40 hits.
In addition, applicant submitted the declaration with
exhibits of Francine Vogler, MD, applicant’s founder,
President and Medical Director. The exhibits attached to
Dr. Vogler’s declaration include, applicant’s brochures,
awards received by applicant and its founder, media
references to applicant (print and television), and thirty-
two customer statements.
Dr. Vogler explains that applicant is a “global
aeromedical service which transports critical adult,
neonatal, and pediatric patients, including by fixed wing
aircraft.” Applicant’s October 7, 2010 Response, Vogler
Decl. She states that applicant has used the “name and
mark AIRESCUE” in connection with its services since 1992
and from that time “has made prominent use of Applicant’s
Mark on its airplanes, uniforms of in-flight physicians,
Serial No. 77256390
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nurses, and other medical personnel, medical equipment, and
in marketing and promotional materials.” Id. It is not
clear from the declaration if AIRESCUE was ever used
prominently by itself or always in the manner depicted in
the specimen of use and the advertising brochures submitted
with her declaration, i.e., with additional wording and
designs. She states further that applicant transports an
average of 10-15 patients a month and in 2002 generated
gross revenues of $2.5 million. Applicant and the founder
have received numerous awards. She asserts that applicant
does not engage in rescue operations “as that term is
widely understood in the area of emergency medical
response. Such activity is performed by 911 ‘first
responders’ – and when aviation assets are employed – it is
specially-equipped rotor wing aircraft (helicopters), not
fixed-wing aircraft, that are involved. Applicant does not
engage in ‘search and recovery’ (SAR) missions for lost
aircraft or persons, or in military missions.” Id.
The customer statements are presented as form
statements. The most pertinent paragraphs read as follows:
3. I am familiar with AIRescue International’s
trademark AIRESCUE which is used on AIRescue
International’s airplanes, on the uniforms of
AIRescue International in-flight physicians,
nurses, and other medical personnel, on AIRescue
International medical equipment, and in AIRescue
Serial No. 77256390
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International marketing and promotional
materials.

4. I have been a customer of AIRescue
International for ___ years and have used
AIRescue International to provide medical air
transport of patients, or air ambulance services,
by fixed wing aircraft.

5. I regard AIRESCUE as identifying the services
of AIRescue International only, and not of any
other company providing similar services, and
immediately associate AIRESCUE with AIRescue
International.

6. I am not aware of any other company using the
AIRESCUE mark in connection with similar
services.

7. Within the medical transport industry, use of
the mark AIRESCUE in connection with medical air
transport services indicates that such services
come from AIRescue International, and not from
any other company providing similar services.

8. AIRESCUE does not refer to a particular
class, or genus, of services, and is not a
generic term for “fixed wing aircraft medical
service transport anywhere in the world.”

Applicant’s October 7, 2010 Response, Vogler Decl. Exh. D.
The examining attorney contends that these statements
are of lesser probative value because “they are in the
nature of standard form declarations that have been
completed by customers and parties who otherwise have a
relationship with applicant rather than by competitors of
applicant.” Ex. Br. pp. 21-22.
Applicant contends that the statements are highly
probative because they include industry experts, for
Serial No. 77256390
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example, a past senior executive of a global leader in
emergency travel insurance, the Chief of Emergency Medicine
at UCLA Medical Center, a leading author in the field of
air medicine, emergency physicians and nurses, medical air
transport directors and administrators for leading
hospitals, and members of ground ambulance crews. Further,
applicant argues that it “is unfair and inappropriate to
question the veracity of these highly qualified
individuals, merely because they also happen to have a
relationship with Applicant, and there is absolutely no
reason to believe that any of them failed to tell the truth
to help Applicant in this case. ... as leaders in the
medical air transport services industry, these individuals
are the most knowledgeable and best positioned to speak to
the meaning of AIRESCUE in the marketplace.” Br. pp. 18-
19.
“[F]orm statements may be used to show acquired
distinctiveness, and ... it is not necessary that the forms
include a declaration as provided in Trademark Rule 2.20.”
In re Lorillard Licensing Co., LLC, 99 USPQ2d 1312 (TTAB
2011), citing, In re EBSCO Industries Inc., 41 USPQ2d 1913,
116 (TTAB 1996). However, there are some limitations to
the probative value of such declarations. Where such
declarations or affidavits are sought and collected by an
Serial No. 77256390
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applicant “from its customers who have dealt with applicant
for many years, [the] evidence is not altogether persuasive
on the issue of how the average customer” for applicant’s
medical transport services by fixed-wing aircraft would
perceive the term AIRESCUE in connection with an air
medical evacuation on an emergency basis. In re The Paint
Products Co., 8 USPQ2d 1863, 1866 (TTAB 1988) (PAINT
PRODUCTS CO. so highly descriptive for paints it cannot
function as a mark).
In In re Petersen Manufacturing Co., Inc., 229 USPQ
466, 468 (TTAB 1986), the Board specifically stated that “a
more persuasive case could by made if each declaration
filed was written in the declarant’s own words and more
clearly showed the declarant’s perception of the function
of each designation sought to be registered.” Further, one
reason that the Board found it reasonable in that case for
the applicant to have submitted form declarations was
because they were the only practical format due to the
large number of applications applicant had filed (16), and
the large number of declarations for each one.
In In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB
1991), the Board expressed concern about whether the people
signing the form declarations, which were presumably
drafted by applicant’s counsel, understood the legal
Serial No. 77256390
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concepts recited in the declarations. And in Aromatique,
Inc. v. Gold Seal, Inc., 28 F.3d 863, 31 USPQ2d 1481, 1487
(8th Cir. 1994), the Court found that thirty-two letters
were unacceptable to prove secondary meaning, in part
because “the letters are merely copies; in some cases
simply photocopies with the blank spaces filled in, of a
form letter provided by Aromatique” and that “in substance,
they amounted to hardly more than a carte blanche approval
of that which had been formulated by a party naturally and
understandably desirous of serving its own interest.”
We find the customer statements here, although
restricted by the same limitations discussed above, are
more probative than those presented in cases involving less
sophisticated consumer goods. Here, the customer
statements represent a good cross section of applicant’s
consumer base. They do not, however, cover future
consumers, both institutions and individuals, and are not
dispositive on the issue. They simply add to the mix of
evidence we must weigh and balance.
Certainly, the evidence of record establishes that the
term AIR RESCUE is generic for first responder rescue
helicopter operations and search and rescue missions. See,
e.g., sheriff.org and highbeam.com. Applicant does not
dispute this; rather, it is applicant’s contention that its
Serial No. 77256390
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services are distinctly different from these rescue
services and, as such, AIR RESCUE would not be understood
by the relevant consumer as the generic term for its “fixed
wing aircraft medical” service. However, other examples in
the record show a broader use of the term AIR RESCUE,
including ones that incorporate applicant’s services. See
www.airmed.com (“AirMed Air Ambulance ... as the leading
air rescue company”).
In addition, applicant’s fixed-wing medical transport
services can and sometimes are performed in tandem with the
first responder air rescue service. One of the articles
submitted by applicant illustrates this relationship. The
article describes an air rescue by helicopter of a mountain
climber who had fallen 1000 feet while climbing. After the
helicopter brought him to a hospital in Patagonia,
applicant provided the air medical transport needed to fly
the patient from Patagonia to Long Island, New York.
“Rescue in the Mountains” Newsday (February 24, 1995)
attached to Request for Remand (August 17, 2009).
In addition, a Certificate of Recognition from the
California State Assembly was presented to AIRESCUE
INTERNATIONAL / Los Angeles Fire Department Air Operations,
which underscores the relationship between applicant’s and
first responder’s services. Request for Reconsideration
Serial No. 77256390
22
(August 17, 2009). The commendation from the City of Los
Angeles describes applicant as “a leading emergency,
global, aeromedical company that evacuates and repatriates
critically-ill or injured patients aboard medical
aircraft.” Id.
In an interview on a CNN segment titled “Business
Unusual,” Dr. Vogler explains that “You may have to
organize local response units, depending upon how
critically ill the patient is and whether or not they can
wait. You may have to organize a local helicopter. And
we’ve done all of that.” Id.
The article titled “Rescue from the air” from the
Malibu Times includes the following excerpts:
Rescuing and fighting for her patients in extreme
physical emergencies worldwide is Fran Vogler’s
passion. ... AIRescue International, a worldwide
medical air ambulance and air evacuation service
company ... [Dr. Vogler’s] work in medical air
transport began with UCLA’s clinical faculty and
its helicopter MedStar program, until it closed
down. “It was an integrated transfer program
involving helicopters, ground ambulance and
fixed-wing air ambulance. ... Vogler said “[Dr.
Vogler] wanted to find a way to provide
continuity in the fixed-wing area to transport
patients who were ill or injured that needed to
be moved in or out of the United States” said
David Percelay, husband and spokesperson for
Vogler. In response to the gap in these
services, Vogler created AIRescue, a 24/7
emergency air medical company, based at Van Nuys
Airport. It’s a first-responder for a number of
university medical programs, including Stanford
University’s Lucile Packard Children’s Hospital.
Serial No. 77256390
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“...I don’t let go until I get it done, whether
that be plucking someone off a coral atoll in the
middle of the Pacific Ocean, when all you get are
longitude, latitude and the coordinates and you
don’t actually know where someone is located and
you have to figure out how to get them out- a
combination of maybe a boat, a helicopter, and a
jet- or rescuing a young man who fell 1,000 feet
while ice climbing in Patagonia,” Vogler said.

As the record demonstrates, first responder helicopter
rescue is often closely integrated with fixed-wing
evacuation.
In addition, the common meanings of the individual
terms “air,” aircraft or by air, and “rescue,” to set free
from danger or save, precisely name what applicant does.
Even applicant’s founder refers to its services as
“rescuing” a patient. The fact that applicant may be the
first fixed wing medical transport service to use this term
also does not obviate the refusal. In re Nat’l Shooting
Sports Found., Inc., 219 USPQ 1018 (TTAB 1983). Moreover,
the separate words retain their generic significance in
applicant’s telescoped compound term AIRESCUE. AIRESCUE
has “a meaning identical to the meaning common usage would
ascribe to those words as a compound.” In re Gould Paper
Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111-1112.
The specific use of the term AIR RESCUE with the
integrated first responder services, the more general use
of this term in the air medical transport industry,
Serial No. 77256390
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including for fixed wing air ambulance services, and the
common meanings of the individual terms “air” and “rescue”
clearly show that AIR RESCUE would be understood by
relevant consumers as referring to what the service is.
The fact that AIR RESCUE is generic for first responder
helicopters does not foreclose it from being generic for
other AIR RESCUE services.
While the record does not reveal widespread use of the
term AIR RESCUE for applicant’s specific services it does
support a finding that the relevant public (beyond
applicant’s current customers) would primarily understand
it to refer to applicant’s services. Ginn, 228 USPQ at
530.
Finally, as the examining attorney notes, a novel
spelling or an intentional misspelling that is the phonetic
equivalent of a generic term is also generic if purchasers
would perceive the different spelling as the equivalent of
the generic term. In re Greenliant Systems Ltd., 97 USPQ2d
1078, 1083 (TTAB 2010) (NANDRIVE equivalent to NAND DRIVE
and the telescoping of the terms is immaterial in
genericness analysis). See also Micro Motion Inc. v.
Danfoss A/S, 49 USPQ2d 1628, 1631 (TTAB 1998) (holding
MASSFLO generic for mass flow meters). Here, applicant’s
telescoped mark AIRESCUE is the phonetic equivalent of AIR
Serial No. 77256390
25
RESCUE. Further, in view of our finding regarding the
meaning of AIRESCUE in the context of applicant’s services,
the argument that the relevant public would not attribute
the same meaning to AIRESCUE as to the individual terms air
rescue is not persuasive.
ACQUIRED DISTINCTIVENESS
For completeness we address the alternative refusal
that AIRESCUE is merely descriptive and the showing under
Section 2(f) is insufficient to establish acquired
distinctiveness.
Inasmuch as applicant has amended its application to
seek registration under Section 2(f) based on acquired
distinctiveness, applicant has conceded that AIRESCUE is
merely descriptive, and the only issue before us is
applicant’s assertion of acquired distinctiveness. Yamaha
Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6
USPQ2d 1001, 1005 (Fed. Cir. 1988); In re Cabot Corp., 15
USPQ2d 1224, 1229 (TTAB 1990). We note, in any event, that
the examining attorney has submitted ample evidence to
establish that AIRESCUE is merely descriptive, as discussed
above, in relation to the refusal based on genericness.
It is applicant’s burden to prove acquired
distinctiveness. Yamaha, supra, 6 USPQ2d at 1006; In re
Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295
Serial No. 77256390
26
(CCPA 1954) (“[T]here is no doubt that Congress intended
that the burden of proof [under Section 2(f)] should rest
upon the applicant”). “[L]ogically that standard becomes
more difficult as the mark’s descriptiveness increases.”
Yamaha, supra, 6 USPQ2d at 1008. A claim that applicant
has been using the subject matter for a long period of
substantially exclusive use may not be sufficient to
demonstrate that the mark has acquired distinctiveness.
See In re Gibson Guitar Corp., 61 USPQ2d 1948, 1952 (TTAB
2001) (66 years of use). The amount and character of
evidence required to establish acquired distinctiveness
depends on the facts of each case, Roux Laboratories, Inc.
v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (CCPA 1970), and
more evidence is required where a mark is so highly
descriptive that purchasers seeing the matter in relation
to the goods or services would be less likely to believe
that it indicates source in any one party. See In re
Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727
(Fed. Cir. 1990). Evidence of acquired distinctiveness can
include the length of use of the mark, advertising
expenditures, sales, survey evidence, and affidavits
asserting source-indicating recognition. However, a
successful advertising campaign is not in itself
necessarily enough to prove secondary meaning. In re
Serial No. 77256390
27
Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed.
Cir. 1999) (claim based on annual sales under the mark of
approximately eighty-five million dollars, and annual
advertising expenditures in excess of ten million dollars,
not sufficient to establish acquired distinctiveness in
view of highly descriptive nature of mark).
It is the examining attorney’s position that AIRESCUE
is highly descriptive and applicant’s evidence is not
sufficient to establish acquired distinctiveness.
As discussed above in relation to the genericness
refusal, we are persuaded by the evidence of record that
the term AIRESCUE is highly descriptive of applicant’s
services.
As proof of acquired distinctiveness, applicant relies
on the same evidence which includes advertising materials,
print and broadcast news coverage of applicant and its
services, inclusion of applicant’s mark in the ER
television series, and awards received by applicant and its
founder. As to the print and broadcast news coverage, for
the most part the references are to applicant’s entire name
AIRescue International, rather than simply AIRESCUE. More,
importantly, the record does not reflect a widespread
reference to it in the press, either by submission or
declaration attesting to how frequently they appear in the
Serial No. 77256390
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press and how widely the various publications are
distributed. The few examples of brochures do not provide
information as to how much they have been distributed or
how often potential customers are exposed to the proposed
mark, in particular, simply the word AIRESCUE without other
wording, e.g., INTERNATIONAL or design elements. With
regard to the television show, there is no information as
to how frequently the word AIRESCUE actually appeared in
connection with the air medical transport services on the
show and whether it appeared by itself or closely
associated with other wording and design elements.
Based on the Vogler declaration, applicant has used
the term AIRESCUE for approximately twenty years. While
this is long time, the use has not been exclusive in the
industry and the record includes some examples of the term
being used in connection with fixed wing aircraft and air
ambulances. As to the sales figures, only one year of
figures was provided without any context of what that
amount means within the air ambulance industry and with
regard to consumer exposure to AIRESCUE.
Finally, while the form customer statements are
probative, in particular with these types of services,
given the widespread use of the term “air rescue” in the
medical transport industry (for purposes of this analysis
Serial No. 77256390
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we are not limited to the genus determined for the
genericness analysis), which includes applicant’s services,
and the highly descriptive nature of the term air rescue
based on the dictionary definitions of the individual terms
and the lack of any incongruity in the combination AIRESCUE
when used in connection with applicant’s services, the
evidence submitted by applicant is simply inadequate to
demonstrate that AIRESCUE has acquired distinctiveness as a
trademark for applicant’s identified services.
After a careful review of the record, we find that in
view of the highly descriptive nature of the term AIRESCUE,
applicant’s evidence of acquired distinctiveness is
insufficient to show that it has acquired distinctiveness.
Decision: The refusal based on genericness is
affirmed. The refusal based on mere descriptiveness
and applicant’s insufficient showing of acquired
distinctiveness is affirmed.