Date 12/2/2009
Serial NO. 77/688497
Applicant: Donald J. Watkins
Docket NO. WJ-09-001-TM

DRAWING
In accordance with the present Office Action, the drawing is not acceptable because the
drawing is small and the mark is not clear and legible, thus not creating a high quality
image when reproduced. However, upon further examination of the submitted mark by
the Examiner, the submitted mark was enlarged so as to be clear and legible. Thus, the
rejection to the drawing should be withdrawn to the submitted drawing.

DUPLICATE ENTRY
The Examiner has graciously offered to remove the duplicate entry “swimming caps”,
which Applicant gratefully accepts.

REJECTION UNDER 15 USC 1052(d)
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C.
§1052(d), because the applicant’s mark, when used on or in connection with the
identified goods/services, so resembles the mark in U.S. Serial No. 76352411/ U.S.
Registration No. 2735488 as to be likely to cause confusion, to cause mistake, or to
deceive in the marketplace.

Applicant respectfully traverses the rejection.

In accordance with In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, the Examiner
suggests that the most relevant factors are the similarity of the marks, the similarity of the
goods and/or services, and similarity of the trade channels.

COMPARISON OF THE MARKS
As the Examiner has pointed out, In E.I. du Pont de Nemours & Co., 476 F.2d 1357
(herein after DuPont), the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation, and commercial impression are used as one of the
factors in DuPont.

With regard to similarity or dissimilarity of the marks, Applicants mark uses stylized
work “DAD wherein the “A” is taller then the “D”s on either side of the “A”. The mark
associated with Registration No. 2735488 is a compilation of Greek letters “??? “with
no exaggeration of the “?” or of any particular letter, thus giving Applicant’s “DAD” a
unique and distinctive appearance that is dissimilar and easily identified and
distinguishable in the marketplace.
With regard to sound, the pronunciation is “DAD”, whereas the pronunciation of “???”
is Delta Alpha Delta. Certainly, a “D” sounds different from a Delta and certainly an “A”
sounds different from an “Alpha”, thus giving Applicants “DAD” an entirely different
sound when pronounced either all together as a word or each letter individually from the
mark associated with Registration No. 2735488.

With regard to connotation, clearly, “DAD” has entirely different connotation then
“???”, where “DAD” connotes a father and “???” connotes the Greek letters Delta
Alpha Delta.

Lastly, the commercial impression of Applicant’s “DAD” is entirely different with
“DAD” giving a commercial impression of father, whereas the compilation of Greek
letters “???” giving the commercial impression of a college fraternity or sorority.

It should also be noted that Applicants mark also has a different look because of the
exaggeration of the “A” and the starburst above the “A”. Moreover, the star burst over
the enlarged “A” adds to the uniqueness and distinctiveness and thus further limiting any
confusion in the marketplace.

Moreover, while the analysis of the DuPont factors indicate that the Applicant’s mark
protectable under trademark law, the mark associated with Registration No. 2735488
should be view with a limited and narrow scope because of the number of marks
associated with ““dad””. A search of the United States Patent and Trademark,
Trademark Electronic Search System (TESS) shows that there are 725 records in which
“dad”is associated. Thus, there are a large number of marks in which ““dad”” is
associated, thereby narrowing the scope and breath of the mark found under Registration
No. 2735488. Thus, Applicants trademark registration should move forward and the
rejection dismissed.

The Examiner asserts that word portions are nearly identical in sound and meaning.

Applicants traverse this assertion.

As shown above, the word portions are not identical or even remotely similar. In re Shell
Oil Co., 992 F.2 1204, 1206, the courts states that “marks are considered in their
entireties, words and design.” Thus, both the design aspects and the words are to be
examined. In the case at issue, the nonsimilarity, distinctiveness and uniqueness of
Applicant’s mark has been described hereinabove. However, also present in the
Applicant’s mark is a “star burst” which further distinguishes Applicant’s mark from the
mark bearing Registration No. 2735488. Thus, Applicant’s mark is clearly
distinguishable and dissimilar to the mark bearing Registration No. 2735488.

COMPARISON OF THE GOODS AND/OR SERVICE
The Examiner asserts that the average purchaser wound be likely to conclude that
Applicant’s goods and the goods from the mark bearing Registration No. 2735488 would
emanate from a common source.
This assertion is respectfully traversed.

While Applicant’s goods and the goods from the mark bearing Registration No. 2735488
are similar and while the channels of distribution would also be similar, these facts by
themselves are not dispositive. Clearly, competition between similar goods takes place
everyday in the market place. And clearly, whether the consumer is sophisticated or not,
the consumer would be able to distinguished between “DAD” with an exaggeration “A”
with a “starburst” over the “A” and the mark bearing Registration No. 2735488, “???”,
could not be confused as originating from the same source.

CONCLUSION
The real question and principal here is whether there would be confusion between
the marks, thereby confusing the customer as to the source of the goods. Clearly,
Applicant’s mark is dissimilar, unique, and arbitrary from the mark bearing Registration
No. 2735488. Applicant’s mark has a different appearance, sound, connotation, and
commercial impression from that of the mark bearing Registration No. 2735488. The
over all appearance is made further dissimilar by the exaggerated “A” and the “starburst”
over the “A”.
Applicant’s respectfully requests reconsideration and allowance of Applicant’s
Trademark Application.
If there are any questions or problem, please do not hesitate to contact me.

Respectfully submitted,

ATTORNEY FOR APPLICANT

Date: December 3, 2009 /Gary F. Witting/
Gary F. Witting
Reg. No. 37,065

The Law Firm of Gary F. Witting
5834 East Oak Street
Scottsdale, Arizona 85257

Telephone: 480 947 2345
Facsimile: 480 947 2345