Rescue One Air

Trademark Trial and Appeal Board

Mar 16, 2017

No. 87000723 (T.T.A.B. Mar. 16, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: March 16, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Rescue One Air
_____

Serial No. 87000714
Serial No. 870007231
_____

Eugene Beliy, BreanLaw, LLC,
for Rescue One Air.

Renee McCray, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
_____

Before Zervas, Taylor, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Rescue One Air (“Applicant”) seeks registration on the Principal Register of the
mark RESCUE ONE AIR in standard characters and the mark shown below

1 We have consolidated these appeals, and decided them in one opinion, because they involve
very similar issues and have identical records. In re JJ206, LLC, 120 USPQ2d 1568 n.1
(TTAB 2016); In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012). References in this
opinion to the record are to the records in both cases.
Serial Nos. 87000714 and 87000723
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both for “HVAC contractor services; Installation, maintenance and repair of HVAC
units and systems,”2 in International Class 37.
The Trademark Examining Attorney has refused registration of both marks under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that they so
resemble the mark AIR RESCUE in standard characters, shown in Registration No.
3244502, and the composite word-and-design mark shown in Registration No.
3244512 and depicted below,

both for “air conditioning contractor services” and owned by the same registrant,3 as
to be likely, when used in connection with Applicant’s services, to cause confusion,
mistake, or deception.

2 Application Serial No. 87000714 to register the standard character mark and Application
Serial No. 87000723 to register the composite word-and-design mark were both filed on April
14, 2016 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), on the basis of
Applicant’s claims of first use of the marks at least as early as December 5, 2007 and first
use in commerce at least as early as March 4, 2016. The composite mark is described in the
application as consisting “of the wording RESCUE ONE AIR in a bold, stylized font. In the
row below it is the wording HEATING COOLING with a medical cross in a circle between
the two words. This second row of wording is in a rectangular box with rounded corners.”
Applicant has disclaimed the exclusive right to use HEATING and COOLING. Color is not
claimed as a feature of the mark.
3 Both registrations issued on May 22, 2007 and were renewed on August 18, 2016.
Serial Nos. 87000714 and 87000723
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After the Examining Attorney made the refusals final, Applicant timely appealed
in both cases. Applicant and the Examining Attorney have filed briefs in both cases.
We affirm both refusals to register.
I. Prosecution Histories and Records on Appeal
The Examining Attorney issued first Office Actions in both cases on July 29, 2016
refusing registration under Section 2(d) on the basis of the cited registrations. The
Examining Attorney made of record third-party registrations and Internet webpages
regarding the relationship between installation, maintenance and repair of HVAC
units and systems, and HVAC contractor services.
Applicant responded to both Office Actions on August 23, 2016. Applicant
traversed the refusals to register and made of record Wikipedia pages regarding New
York City Fire Department Rescue Company 1 and the Air Rescue Service of the
United States Air Force.
The Examining Attorney issued second Office Actions in both cases on September
3, 2016 making final the refusals to register and making of record Nexis excerpts
regarding the relationship between the services in the applications and in the cited
registrations. These appeals followed.
II. Likelihood of Confusion Analysis
Section 2(d) of the Trademark Act prohibits the registration of a mark that so
resembles a registered mark as to be likely, when used in connection with the goods
or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under § 2(d) is based upon an
Serial Nos. 87000714 and 87000723
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analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). We consider each du Pont factor that is relevant and
for which there is record evidence. See, e.g., M2 Software, Inc. v. M2 Communications,
Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v.
GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015).
In every case under Section 2(d), two key considerations are the similarities
between the marks and the similarities between the goods or services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
(“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods [or services] and differences
in the marks”).
As an initial matter, we will focus our analysis in both cases on a comparison of
Applicant’s marks to the standard character mark AIR RESCUE shown in
Registration No. 3244502, which we find to be the more relevant of the two cited
marks. If we find a likelihood of confusion as to the cited standard character mark,
we need not find it as to the cited composite word-and-design mark; conversely, if we
do not find a likelihood of confusion as to the standard character mark, we would not
find it as to the composite mark. See Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113
USPQ2d 1913, 1917 (TTAB 2015); In re Max Capital Grp., Ltd., 93 USPQ2d 1243,
1245 (TTAB 2010). We turn first to the similarity of the services, and the related
factors regarding the similarity of their trade channels and classes of customers.
Serial Nos. 87000714 and 87000723
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A. Similarity of the Services, Trade Channels, and Classes of Customers
Our determination of the similarity of the services is based upon the
identifications of services in the applications and in the cited registration. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The services do not have to be identical or
even competitive for confusion to be likely. “[L]ikelihood of confusion can be found ‘if
the respective [services] are related in some manner and/or if the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that they emanate from the same source.’” Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc.
v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
The identification of services in the cited registration of AIR RESCUE in standard
characters is “air conditioning contractor services.” The identifications of services in
both applications are “HVAC contractor services; Installation, maintenance and
repair of HVAC units and systems.” “HVAC” means “heating, ventilating, and air-
conditioning” or “heating, ventilation, and air-conditioning.” Merriam-Webster Online
Dictionary (www.merriam-webster.com).4 The services in the applications and in

4 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed form or regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Applicant’s identical
specimen of use in both cases, which Applicant describes as “a saved, printable version of the
main page of Applicant’s website, demonstrating the mark in association with services
offered,” corroborates the dictionary definitions. It states that “[w]hen you choose Rescue One
Air, you can expect us to provide the most exceptional HVAC service. With the
Serial Nos. 87000714 and 87000723
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Registration No. 3244502 are thus identical in part because they both include “air
conditioning contractor services.”5
“Likelihood of confusion must be found if there is likelihood of confusion involving
any item that comes within the identification of goods [or services] in the involved
application.” In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing Tuxedo
Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981)). Although the additional services identified in the applications as “installation,
maintenance and repair of HVAC units and systems” appear to be encompassed
within the broad and unrestricted identification of “air conditioning contractor
services” in the cited standard character registration of AIR RESCUE, the identity of
the air conditioning contractor services is sufficient to support a finding of a likelihood
of confusion. In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (“[I]n
view of our findings with respect to Applicant’s fresh processed fish and frozen fish
and Registrant’s non-live fish and frozen fish, we need not make a determination as
to Applicant’s remaining goods as it is sufficient for finding a likelihood of confusion
if relatedness is established for any item encompassed by the identification of goods
within a particular class in the application.”). This du Pont factor supports a finding
of a likelihood of confusion as to both Applicant’s word mark and its composite mark.

professionalism and expertise we have acquired throughout the many years of being a
heating, ventilation, and air conditioning contractor company, we are sure to keep our
customers satisfied.” April 14, 2016 Specimens at 3.
5 Applicant does not address any du Pont factor in its briefs other than the similarity of the
marks, and thus does not dispute the identity of the services.
Serial Nos. 87000714 and 87000723
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Because Applicant’s services and registrant’s services are identical in part, we
must presume that the channels of trade and classes of customers for the identified
air conditioning contractor services are also identical, Aquamar, 115 USPQ2d at 1126
(citing In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)),
and include, as evidenced by Applicant’s specimen, the marketing and rendition of
those services to average homeowners. These third and fourth du Pont factors also
support a finding of a likelihood of confusion as to both Applicant’s word mark and
its composite mark. We turn now to the du Pont factor regarding the similarity of the
marks.
B. Similarity of the Marks
This factor focuses on “‘the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression.’” Palm
Bay Imps. Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The
proper test is not a side-by-side comparison of the marks, but instead whether the
marks are sufficiently similar in terms of their commercial impression such that
persons who encounter the marks would be likely to assume a connection between
the parties.” Coach, 101 USPQ2d at 1721 (quotation omitted).
The identity of the services in part reduces the degree of similarity between the
marks that is necessary for confusion to be likely. See, e.g., Shen Mfg. Co. v. Ritz Hotel
Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); In re Bay State Brewing
Co., 117 USPQ2d 1958, 1960 (TTAB 2016).
Serial Nos. 87000714 and 87000723
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The arguments of the Examining Attorney and Applicant regarding this du Pont
factor are virtually identical in both applications. We summarize them below before
turning to the analysis of the similarity of each of Applicant’s marks to the cited AIR
RESCUE standard character mark.
The Examining Attorney’s basic argument in both cases is as follows:
The marks share the identical, dominant wording
RESCUE and AIR and are therefore similar in appearance
and sound because of the identity of this wording. With
respect to connotation and commercial impression, the
examining attorney notes that, although the terms
RESCUE and AIR appear in reverse combinations, the
marks all convey that the parties will “rescue” consumers
from their “air” conditioning troubles. Thus, the marks are
confusingly similar because they share the identical
dominant wording RESCUE and AIR and convey the same
meaning and substantially similar commercial impression.
6 TTABVUE 6 (Serial No. 87000714); 6 TTABVUE 6-7 (Serial No. 87000723).
Applicant argues that “the marks share the terms ‘Air’ and ‘Rescue’ in common,
but that is insufficient to support a finding of likelihood of confusion, particularly
where there are a number of differentiating factors,” 4 TTABVUE 6 (Serial No.
87000714 and 87000723), including that the marks contain different numbers of
words and do not share all the words between them. 4 TTABVUE 6-7 (Serial No.
87000714); 4 TTABVUE 7 (Serial No. 87000723). Applicant acknowledges that the
marks “share some sounds between them,” but argues that “the order in which the
words appear imbues each mark with a distinct and different aural quality,” and that
its word mark “contains the sound of the word ‘one,’ which is absent from Registrant’s
marks,” 4 TTABVUE 7 (Serial No. 87000714), and its composite mark “contains the
sounds of the words ‘one,’ ‘heating,’ and ‘cooling,’ which are absent from Registrant’s
Serial Nos. 87000714 and 87000723
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marks.” 4 TTABVUE 7 (Serial No. 87000723). Applicant also argues that the “marks
in this case vary substantially in commercial impression” because Applicant’s mark
“brings to mind a team of elite, technically competent, and specially trained HVAC
contractors who arrive on site to address heating and air condition emergencies,”
while the cited marks bring “to mind air conditioning contractors arriving by air on a
helicopter or via parachute to fix broken air conditioning.” 4 TTABVUE 7-8 (Serial
No. 87000714); 4 TTABVUE 8-9 (Serial No. 87000723).
Application Serial No. 87000714
Applicant’s standard character mark RESCUE ONE AIR and the cited standard
character mark AIR RESCUE share the words “rescue” and “air.” We take judicial
notice that “rescue” means “to save someone or something from a dangerous, harmful,
or difficult situation,” while “air” means “the mixture of gases that surrounds the
earth and that we breathe;” “the space above, especially high above, the ground,” and
“flight above the ground, especially in an aircraft.” Cambridge Dictionary (American
English) (dictionary.cambridge.org/us). Applicant’s word mark contains the words in
the cited word mark, in transposed order and with the words AIR and RESCUE
separated by the word ONE.
Applicant correctly notes that it “has long been established under the ‘anti-
dissection rule’ that ‘the commercial impression of a trademark is derived from it as
a whole, not from its elements separated and considered in detail,’” and that it
“violates the anti-dissection rule to focus on the ‘prominent’ feature of a mark,
ignoring other elements of the mark, in finding likelihood of confusion.” 4 TTABVUE
Serial Nos. 87000714 and 87000723
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4 (quotation omitted). But “in articulating reasons for reaching a conclusion on the
issue of confusion, there is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in their entireties.” In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). For several reasons,
we give greater weight, in our analysis of the similarity of the word marks in their
entireties, to the shared word RESCUE than to the shared word AIR, or the word
ONE in Applicant’s mark.
The meaning of “rescue” as “sav[ing] someone or something from a dangerous,
harmful, or difficult situation” shows that RESCUE is a mild hyperbole when it is
used in marks for air conditioning contractor services. As such, it is only somewhat
suggestive and, in any event, the record is devoid of evidence that its distinctiveness
as a source-identifier for air conditioning contractor services has been weakened by
third-party uses or registrations of RESCUE-formative marks for those services. The
definition of “air” as “the mixture of gases that surrounds the earth and that we
breathe” indicates that AIR has limited source-identifying significance in marks for
air conditioning contractor services because conditioning air surrounding humans is
the defined object of those services. The word ONE in Applicant’s mark does not have
any immediate connection to the other wording in the mark (read as RESCUE ONE
or ONE AIR), but is not a particularly strong source identifier because it is the first
cardinal number and it is positioned in the mark in between the more prominent
words RESCUE and AIR.
Serial Nos. 87000714 and 87000723
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We find that the word marks are similar in appearance from the standpoint of an
average homeowner who requires air conditioning contractor services and “who
normally retains a general rather than a specific impression of trademarks.” In re
i.a.m.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015). Both marks display the
dominant and hyperbolic word RESCUE, either directly adjacent to, on in close
proximity to, the word AIR, and these two words are the most prominent ones in the
marks (and the only ones in the cited mark). The visual differences between the
marks argued by Applicant resulting from the transposition of these words, and the
presence of the word ONE, in Applicant’s mark, 4 TTABVUE 6, are readily apparent
only from a side-by-side comparison of the mark, which is not the proper means of
comparison. Coach, 101 USPQ2d at 1721.
With respect to sound, Applicant acknowledges that the marks “share some
sounds between them” but argues that “the order in which the words appear imbues
each mark with a distinct and different aural quality.” 4 TTABVUE 7. We disagree.
Both RESCUE and AIR are recognized words in the English language having well-
known meanings,6 and they will be pronounced identically when they are verbalized
in each mark. Cf. Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102
USPQ2d 1187, 1193 (TTAB 2009) (ordinary English-language words are exceptions

6 This fact distinguishes this case from Nat’l Distillers & Chem. Corp. v. William Grant &
Sons, Inc., 505 F.2d 719, 184 USPQ 34 (CCPA 1974), the case cited by Applicant for the
proposition that “even when two marks are phonetically similar, no likelihood of confusion
exists if other differentiating factors can be established.” 4 TTABVUE 7. In that case, the
Court of Customs and Patent Appeals found that DUVET for brandy and DUET for canned
cocktails were dissimilar, “[r]egardless of how DUVET might be pronounced,” because
“DUET is a familiar word; DUVET is not” and “DUET has a clear and obvious meaning;
DUVET does not.” 184 USPQ at 35.
Serial Nos. 87000714 and 87000723
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to the rule that there is no correct way to pronounce a mark). AIR RESCUE and
RESCUE ONE AIR are phonetically quite similar. The transposition of the words
AIR and RESCUE, and the presence of the word ONE, in Applicant’s mark do not
significantly differentiate the impression of AIR RESCUE and RESCUE ONE AIR
on the ear when the marks are verbalized in the context of air conditioning contractor
services. Because of the common presence of RESCUE and AIR in the marks, they
will both be heard to identify a contractor who rescues consumers from their air
conditioning problems.
As noted above, Applicant’s mark contains the words that comprise the entirety
of the cited mark, in transposed order and separated by the word ONE. “[T]he
reversal in one mark of the essential elements of another mark may serve as a basis
for a finding of no likelihood of confusion only if the transposed marks create
distinctly different commercial impressions.” In re Nationwide Indus., Inc., 6
USPQ2d 1882, 1884 (TTAB 1988) (RUST BUSTER for rust-penetrating spray
lubricants found to be confusingly similar to BUST RUST for penetrating oil) (citing
Bank of Am. Nat’l Trust and Savings Ass’n v. Am. Nat’l Bank of St. Joseph, 201 USPQ
842, 845 (TTAB 1978) (BANKAMERICA and BANK OF AMERICA for banking
services found to be confusingly similar to AMERIBANC for the identical services)).
Applicant’s primary argument regarding the connotation and commercial impression
of the marks is that the transposed words RESCUE and AIR are used in the two
marks in ways that cause the marks to “vary substantially in commercial
impression.” 4 TTABVUE 7. The record does not support this claim, and we find that
Serial Nos. 87000714 and 87000723
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the marks are not “distinctly different” in commercial impression, but rather quite
similar.
Applicant argues that “RESCUE ONE AIR was adopted to invoke the spirit and
technical prowess of the famous Fire Department of New York City, Rescue 1 fire
engine company, FDNY Rescue 1” 4 TTABVUE 8, citing Wikipedia pages in the
record regarding that company, the first page of which is reproduced below:

Serial Nos. 87000714 and 87000723
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Applicant argues that “[i]n contrast, Registrant’s marks are a clever play-on-
words regarding the term ‘air rescue’” that “invoke[] the concept of a military air
rescue team,” and that “Registrant’s mark brings “to mind air conditioning
contractors arriving by air on a helicopter or via parachute to fix broken air
conditioning.” 4 TTABVUE 8 (Serial No. 87000714). As an example of a “military air
rescue team,” Applicant cites Wikipedia pages in the record regarding the Air Force
Air Rescue Service, the first page of which is reproduced below:

Serial Nos. 87000714 and 87000723
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The Wikipedia pages in the record do not persuade us that consumers of
Applicant’s services would recognize the association that Applicant seeks to make
with the New York City Rescue 1 fire company.7 4 TTABVUE 8. Applicant’s own
promotional materials do not help; its specimen uses the words Rescue One in a
manner consistent with the dictionary meaning of “rescue” as “sav[ing] someone or
something from a dangerous, harmful, or difficult situation” caused by broken air
conditioning.8 The specimen’s text does not refer or allude to fire departments in
general or the referenced New York City Fire Department rescue company in
particular, or compare Applicant’s “spirit” or “technical prowess” to that of
firefighters, even in its statements about “rescuing” customers. The specimen simply
touts the merits of Applicant’s services through statements such as the following:
There is nothing worse than having a broken A/C in the
summer (or a broken heater when we are having a rare cold
front). Rescue One is here to rescue you from the hot
summer sun. Our technicians arrive promptly when
dispatched, perform quality and reliable inspections, and
offer you affordable solutions to all of your heating and
cooling needs. Our priority is to rescue your comfort and
peace of mind!
and
With the professionalism and expertise we have acquired
throughout the many years of being a heating, ventilation,
and air conditioning contractor company, we are sure to
keep our customers satisfied. Be worry-free about the units

7 We note that the Wikipedia pages in the record identify the company as “Rescue Company
1” and “Rescue Co. 1,” as well as “Rescue 1.” They do not identify the company as “Rescue
One.”
8 The specimen states, for example, that “Rescue One Air is here to rescue you from the hot
summer sun” and that “[o]ur priority is to rescue your comfort and peace of mind!” April 14,
2016 Specimen at 3.
Serial Nos. 87000714 and 87000723
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you have at home or at work, give us a try! We guarantee
you will not be disappointed. We’ll get the job done right
the first time! If we can keep our customers happy and
satisfied, then we will be too.
April 14, 2016 Specimen at 3.
There is also nothing in the record to suggest that consumers of air conditioning
contractor services will understand RESCUE ONE AIR to allude to the New York
City Fire Department rescue company. Applicant’s specimen states that “Rescue One
Air is a Phoenix Air Conditioning company.” April 14, 2016 Specimen at 3 (emphasis
in original). We are not persuaded that Applicant’s Phoenix-area residential and
business customers, or any other potential consumers of air conditioning contractor
services, are familiar with New York City Fire Department Rescue Company 1 solely
on the basis of the Wikipedia pages devoted to the company. There is no other
evidence in the record to show that any consumers of air conditioning contractor
services would understand Applicant’s mark RESCUE ONE AIR to allude to the New
York City fire company.
Finally, there is no evidence in the record supporting Applicant’s argument that
the cited mark AIR RESCUE “invokes the concept of a military air rescue team” and
“brings to mind air conditioning contractors arriving by air on a helicopter or via
parachute to fix broken air conditioning.” 4 TTABVUE 8.9 As with the Wikipedia
pages devoted to the New York City Fire Department company, we are not persuaded

9 Applicant argues that this “impression is further solidified in the Registrant’s logo and its
patriotic waving flag background and red, white, and blue coloring that invokes an
impression regarding the U.S. military services.” 4 TTABVUE 8. We do not further consider
this argument because it pertains solely to the cited composite mark. As previously stated,
we limit our discussion to the cited standard character mark.
Serial Nos. 87000714 and 87000723
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that consumers of air conditioning contractor services are familiar with military air
rescue teams in general, or the Air Force Air Rescue Service in particular, on the
basis of the Wikipedia pages made of record by Applicant.10 Applicant did not make
of record any other evidence regarding public familiarity with military rescue teams,
or any evidence that is probative of the way in which any consumers of air
conditioning contractor services would perceive the cited AIR RESCUE mark.
When considered in their entireties and in the context of air conditioning
contractor services, the RESCUE ONE AIR and AIR RESCUE word marks both
connote, through their common use of the dominant word RESCUE, that the
contractors identified by the marks will not just fix a broken air conditioner, but will
metaphorically “save someone . . . from a dangerous, harmful, or difficult situation.”11
When the marks are used for the identical air conditioning contractor services, this
common hyperbolic meaning makes them “sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely

10 We further note that the first page of the Wikipedia entry states that the military’s Air
Rescue Service was disestablished in 1993. 4 TTABVUE 13.
11 Applicant’s argument in both cases regarding the commercial impressions created by the
marks does not dispute that they both connote the same image of a figurative “rescue” from
air conditioning woes. 4 TTABVUE 7-8 (Serial No. 87000714); 4 TTABVUE 8-9 (Serial No.
87000723). Instead, Applicant argues that the marks evoke different imagery of the
figurative types of rescuers (firefighters v. aviators) and means of arrival on scene (fire
engines v. aircraft). There is no evidence in the record that air conditioning contractors
emulate firefighters or aviators, or that they arrive at the job site by means other than
civilian vehicles such as vans or trucks. To glean the specific figurative meanings of the
marks argued by Applicant from the marks themselves, consumers of air conditioning
contractor services would need to use a degree of imagination that is unsupported by the
record and inconsistent with the accepted general principle that the average consumer
retains only “a general rather than a specific impression of trademarks.” In re i.a.m.symbolic,
llc, 116 USPQ2d at 1409.
Serial Nos. 87000714 and 87000723
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to assume a connection between the parties.” Coach, 101 USPQ2d at 1721. We find,
on this record, that the word marks’ similarity in connotation and commercial
impression is the most significant means of comparison in finding the marks to be
similar, because there is no evidence that any air conditioning contractors other than
Applicant and the registrant use marks that identify themselves as “rescuers.” M.C.I.
Foods, Inc. v. Bunte, 96 USPQ2d 1544, 1550 (TTAB 2010) (“In a particular case, any
one of these means of comparison may be critical in finding the marks to be similar.”).
This du Pont factor supports a finding of likelihood of confusion with respect to
Applicant’s standard character mark RESCUE ONE AIR.
Application Serial No. 87000723
The mark in this application is the composite word-and-design mark shown below:

We give greater weight, in our analysis of the similarity of this mark in its entirety
to AIR RESCUE in its entirety, to the shared word RESCUE than to the shared word
AIR, or the other visual and verbal elements of Applicant’s composite mark. We do so
for the reasons discussed above in connection with Applicant’s word mark, and for
the additional reasons that the descriptive words HEATING and COOLING lack
source-identifying significance and have been disclaimed, see In re Dixie Rests., Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (affirming finding that
“DELTA,” not the disclaimed word “CAFE,” was the dominant portion of the mark
THE DELTA CAFE for restaurant services), and that “[i]n the case of a composite
Serial Nos. 87000714 and 87000723
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mark containing both words and a design, ‘the verbal portion of the mark is the one
most likely to indicate the origin of the goods [or services] to which it is affixed,’” In
re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting CBS
Inc. v. Morrow, 708 F.2d 1579, 218, USPQ 198, 200 (Fed. Cir. 1983)), because “the
literal component of brand names likely will appear alone when used in text and will
be spoken when requested by consumers.” Id. at 1911. The latter principle is
illustrated by Applicant’s own use of “Rescue One Air” to identify itself in the text of
its specimen, a page from which is reproduced below:

Serial Nos. 87000714 and 87000723
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We find that Applicant’s composite mark is similar in appearance to the cited AIR
RESCUE mark. The most prominent visual element in Applicant’s composite mark
is what Applicant describes in the application as “the wording RESCUE ONE AIR in
a bold, stylized font.” Applicant’s word mark is the visual portion of its composite
mark that will be remembered by consumers. The word mark is visually more striking
than the descriptive and disclaimed words HEATING and COOLING displayed in
smaller and thinner letters beneath it. It is also visually more striking than the
bolded symbol that also appears beneath it, which is described by Applicant in the
application as “a medical cross in a circle.”12 The prominence of Applicant’s word
mark RESCUE ONE AIR in its composite mark makes the composite mark similar
in appearance, when considered in its entirety, to the cited AIR RESCUE standard
character mark, which covers all “depictions of the standard character mark
regardless of font style, size, or color.” Citigroup Inc. v. Capital City Bank Grp. Inc.,
637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011).
With respect to sound, Applicant argues that its composite mark differs in sound
from the cited marks because the composite mark “contains the sounds of the words
‘one,’ ‘heating,’ and ‘cooling,’ which are absent from Registrant’s marks.” 4 TTABVUE

12 A description of a mark “cannot be used to restrict the likely public perception of a mark”
because a “mark’s meaning is based upon the impression actually created by the mark in the
minds of consumers, not on the impression that the applicant states the mark is intended to
convey.” TRADEMARK MANUAL OF EXAMINING PROCEDURE Section 808.02 (January 2017). If
the symbol were perceived as a medical cross, it would connote first aid, and would reinforce
the notion of “rescue” conveyed by Applicant’s RESCUE ONE AIR word mark situated
directly above the design, because it would “emphasize, in a pictorial way, the main word
portion of the . . . mark.” In re Wine Society of America, 12 USPQ2d 1139, 1142 (TTAB 1989)
(in composite mark, design elements consisting of a map of North America, a bunch of grapes,
and a glass filed with wine, reinforced meaning of AMERICAN WINE SOCIETY word mark).
Serial Nos. 87000714 and 87000723
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7 (Serial No. 87000723). It is true that Applicant’s composite mark contains words
(and thus sounds) that are different from those in the cited AIR RESCUE mark, but
“‘[c]ompanies are frequently called by shortened names, such as Penney’s for J.C.
Penney’s, Sears for Sears and Roebuck (even before it officially changed its name to
Sears alone), Ward’s for Montgomery Ward’s, and Bloomies for Bloomingdales.’”
Anthony’s Pizza & Pasta Int’l v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1280
(TTAB 2009) (quoting Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321,
1333 (TTAB 1992)). In Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135 (Fed. Cir. 2015),
the Federal Circuit cautioned against assuming such truncation of marks without
supporting evidence, but the record here contains such evidence in the form of
Applicant’s own truncation of its composite mark to “Rescue One Air” alone.
Applicant’s specimen (depicted above) uniformly uses “Rescue One Air” to identify
Applicant in statements such as “When you choose Rescue One Air, you can expect
us to provide the most exceptional HVAC service.” April 14, 2016 Specimen at 3.
Applicant’s use of “Rescue One Air” alone shows that the disclaimed portions of
Applicant’s composite mark, the descriptive words HEATING and COOLING, will
rarely, if ever, be used when the composite mark is verbalized. Consumers who
“choose Rescue One Air” are likely to refer to the company orally in that manner, and
not as “Rescue One Air Heating [and] Cooling.” When the composite mark is
verbalized, it will sound similar to the cited mark AIR RESCUE because both marks
Serial Nos. 87000714 and 87000723
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will be heard to identify a contractor who rescues customers from air conditioning
problems.
With respect to the connotation and commercial impression of the composite mark,
Applicant makes the same arguments that it makes with respect to its word mark.
The primary words in the composite mark, Applicant’s word mark RESCUE ONE
AIR, connote the same hyperbolic image of “rescue” as the cited AIR RESCUE mark
for the reasons discussed above in connection with the word marks. As noted above,
if the “medical cross” symbol in the composite mark were perceived as such, the
composite mark as a whole would evoke first aid, an association that is not present
on the face of Applicant’s word mark. We cannot assume this perception simply from
Applicant’s description of the symbol in its composite mark, and there is nothing in
Applicant’s specimen or elsewhere in the record that promotes this perception. But
an association with first aid would not significantly differentiate the composite mark
in connotation and commercial impression from the cited AIR RESCUE mark, as this
association would reinforce the general figurative meaning of “rescue” from air
conditioning problems conveyed by the composite mark. The composite mark is
similar in connotation and commercial impression to the cited AIR RESCUE mark
when the marks are considered in their entireties.
This du Pont factor supports a finding of a likelihood of confusion with respect to
Applicant’s composite mark.

Serial Nos. 87000714 and 87000723
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Conclusion
All of the du Pont factors for which there is record evidence support a finding of a
likelihood of confusion in both cases with respect to Registration No. 3244502. The
services, channels of trade, and classes of customers in both cases are identical in
part, which reduces the degree of similarity between the marks that is required for
confusion to be likely, and the marks in both cases are similar. We find that confusion
as to the source or sponsorship of Applicant’s services is likely in both cases.
Decision: The refusals to register are affirmed.