Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87218504 DAYTON(Standard Characters, see http://uspto.report/TM/87218504/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

In a February 8, 2017 Office Action, Applicant's application was refused based on prior pending U.S. Trademark Application Nos. 87016479 and 86967274.

As the result of two successive assignment agreements recorded with the USPTO, Applicant is now the owner of U.S. Trademark Application No. 87016479. Common ownership of Applicant's application and U.S. Trademark Application No. 87016479 obviates this basis for refusal.

Applicant respectfully submits that there is no likelihood of confusion with U.S. Trademark Application No. 86967274 because the marks are very different, the respective goods are sold through different channels of trade at very different price points, and the respective purposes of the goods are different. Moreover, for the sake of consistency, because U.S. Trademark Application No. 87016479 was approved for publication despite the earlier-filed U.S. Trademark Application No. 86967274, this application should also be allowed to register alongside U.S. Trademark Application No. 86967274.

With respect to the differences between Applicant's DAYTON mark and the mark in U.S. Trademark Application No. 86967274, that mark is a logo for a soccer team containing the distinctive wording "DYNAMO" and a moving soccer ball design. In that mark, the word "DAYTON" is disclaimed because in that context it stands for the location of a minor league soccer team in the small, regional city of Dayton, Ohio.

In stark contrast, Applicant's DAYTON mark is not a logo for a professional sports team, but instead is the distinctive source identifier for Applicant's brand of goods, the most prominent of which are the work boots sold by Applicant and its predecessors since 1946. Applicant's work boots typically cost hundreds of dollars, and would never be confused with branded soccer team apparel sold to fans of the Dayton Dynamo minor league soccer team for under one hundred dollars. Moreover, DAYTON products, such as Applicant's work boots, are worn primarily for protection of the feet during physical work, whereas branded sports apparel for the Dayton Dynamo soccer team comprises screen-printed t-shirts, jackets, and other clothing purchased to be worn by fans of the soccer team to show loyalty to the team. No fan of the Dynamo would ever confuse Applicant's products with products sold by the soccer team, and vice versa.

Considering that confusion with U.S. Trademark Application No. 86967274 is wholly unlikely, and considering that Applicant is now the owner of U.S. Trademark Application No. 87016479, Applicant respectfully requests that the prior pending application basis for refusal be withdrawn and that Applicant's application be approved for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Footwear, namely, work boots and dress shoes; footwear, namely, motorcycle boots; clothing, namely, leather jackets, golf shirts, t-shirts, nylon shells and baseball hats; eyewear, namely, sunglasses, eyeglasses, eyeglass frames, non-illuminated signs; knives, knife sheaths, key fobs, key chains, key rings, license plate holders; motorcycle clothing, namely, motorcycle riding suits, bandannas, protective helmets, leather clothing, namely, jackets, vests, pants; clothing, namely, denims, sweaters, pants, rain suits, shirts, sweatshirts, sweat pants, tank tops, coats, rain coats, vests, shorts, coveralls, skirts, jeans, halter tops, jackets, jerseys, nightgowns, night shirts, pyjamas, underwear; clothing accessories, namely, belts, chaps, gloves, mitts, socks, belt buckles, suspenders, scarves, wrist bands; bags and luggage, namely, purses, wallets, trunks and travelling bags, backpacks, duffel bags, motorcycle saddlebags, pouches; headwear, namely, head bands, hats, knit hats, rain hats, caps, beanie caps; parts of footwear, namely, boot tips, sole plates, heel guards, decorative boot straps, boot chains, shoe buckles, shoe ornaments; money clips; playing cards
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA792915 registered 03/15/2011 with a renewal date of __________ and an expiration date of 03/15/2026 ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: footwear, namely, work boots and dress shoes; footwear, namely, motorcycle boots; clothing, namely, leather jackets, golf shirts, t-shirts, nylon shells and baseball hats; eyewear, namely, sunglasses, eyeglasses, eyeglass frames, non-illuminated signs; leather clothing, namely, jackets, vests, pants; knives, knife sheaths, key fobs, key chains, key rings, license plate holders; clothing, namely, denims, sweaters, pants, rain suits, shirts, sweatshirts, sweat pants, tank tops, coats, rain coats, vests, shorts, coveralls, skirts, jeans, halter tops, jackets, jerseys, nightgowns, night shirts, pajamas, underwear; motorcycle clothing, namely, motorcycle riding suits, bandannas, protective helmets, leather clothing, namely, jackets, vests, pants; clothing accessories, namely, belts, chaps, gloves, mitts, socks, suspenders, scarves, wrist bands; clothing, namely, denims, sweaters, pants, rain suits, shirts, sweatshirts, sweat pants, tank tops, coats, rain coats, vests, shorts, coveralls, skirts, jeans, halter tops, jackets, jerseys, nightgowns, night shirts, pyjamas, underwear; headwear, namely, head bands [headbands], hats, knit hats, rain hats, caps, beanie caps; clothing accessories, namely, belts, chaps, gloves, mitts, socks, belt buckles, suspenders, scarves, wrist bands; bags and luggage, namely, purses, wallets, trunks and travelling bags, backpacks, duffel bags, motorcycle saddlebags, pouches; headwear, namely, head bands, hats, knit hats, rain hats, caps, beanie caps; parts of footwear, namely, boot tips, sole plates, heel guards, decorative boot straps, boot chains, shoe buckles, shoe ornaments; money clips; playing cardsClass 025 for footwear, namely, work boots and dress shoes; footwear, namely, motorcycle boots; clothing, namely, leather jackets, golf shirts, t-shirts, nylon shells and baseball hats; leather clothing, namely, jackets, vests, pants; clothing, namely, denims, sweaters, pants, rain suits, shirts, sweatshirts, sweat pants, tank tops, coats, rain coats, vests, shorts, coveralls, skirts, jeans, halter tops, jackets, jerseys, nightgowns, night shirts, pajamas, underwear; clothing accessories, namely, belts, chaps, gloves, mitts, socks, suspenders, scarves, wrist bands; headwear, namely, head bands [headbands], hats, knit hats, rain hats, caps, beanie caps
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA792915 registered 03/15/2011 with a renewal date of __________ and an expiration date of 03/15/2026 ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant hereby adds the following class of goods/services to the application:
New: Class 009 for eyewear, namely, sunglasses, eyeglasses, eyeglass frames; non-illuminated signs; motorcycle clothing, namely, motorcycle riding suits, bandannas, protective helmets
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA792915 registered 03/15/2011 with a renewal date of __________ and an expiration date of 03/15/2026 ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant hereby adds the following class of goods/services to the application:
New: Class 018 for bags and luggage, namely, purses, wallets, trunks and travelling bags, backpacks, duffel bags, pouches
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA792915 registered 03/15/2011 with a renewal date of __________ and an expiration date of 03/15/2026 ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant hereby adds the following class of goods/services to the application:
New: Class 026 for belt buckles; parts of footwear, namely, boot tips, sole plates, heel guards, decorative boot straps, boot chains, shoe buckles, shoe trimmings
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA792915 registered 03/15/2011 with a renewal date of __________ and an expiration date of 03/15/2026 ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

FEE(S)
Fee(s) in the amount of $825 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /matthew homyk/      Date: 08/07/2017
Signatory's Name: Matthew A. Homyk
Signatory's Position: Attorney of record, Pennsylvania bar member
Signatory's Phone Number: 215-569-5360


Response Signature
Signature: /matthew homyk/     Date: 08/07/2017
Signatory's Name: Matthew A. Homyk
Signatory's Position: Attorney of record, Pennsylvania bar member

Signatory's Phone Number: 215-569-5360

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
RAM Sale Number: 87218504
RAM Accounting Date: 08/07/2017
        
Serial Number: 87218504
Internet Transmission Date: Mon Aug 07 11:27:12 EDT 2017
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20170807112712591
086-87218504-5109c10a195febc28f2e3dbedfe
d2c219e18c1f82b3d6ea96b6185732875139036-
CC-9730-20170807112211523867