UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/639501
APPLICANT: DAK AMERICAS, LLC
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: MELT-TEK
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CORRESPONDENT’S REFERENCE/DOCKET NO: 273164US29
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 76/639501
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified services, so resembles the mark in U.S. Registration No. 648661 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. See the enclosed registration.
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).
The applicant applied to register the mark MELT-TEK, in typed form, for synthetic resins in Class 1, and Custom manufacture of resins; treatment of materials for the manufacture of resins, in Class 40.
The registered mark is MELTEX in typed from for [ hot, ] cold [ and reactive ] adhesive application machines [ and replacement parts therefor, namely, pumps, heater elements, glue guns, hoses, tanks and application heads ] .
The marks are very similar. The only differences in the marks is the additional letter “T” in the applciant’s mark.
When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference." Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).
The goods and services are very similar. Registrant’s goods could be used with applicant’s goods and services. Thus, the parties’ goods and services are so sufficiently related that consumers would conclude that they emanated from the same source. Therefore the likelihood of confusion exists
The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant, who has a legal duty to select a mark, which is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).
Consequently, the applicant’s mark is refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified services so resembles the registered marks herein as to be likely to cause confusion, to cause mistake, or to deceive.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following:
If applicant should fail to respond to this Office action within the six month time limit, then Class(es) 1 will be deleted from the application and the application will proceed forward for Class(es) 40 only. 37 C.F.R. §2.65(a).
The wording “Synthetic resin” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “Synthetic resin adhesives for laminating purposes,” if accurate. TMEP §1402.01.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.
Applicant is strongly encouraged to consult the Acceptable Identification of Goods and Services Manual available at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/ to ensure the appropriate specificity of goods and services.
If further information or assistance is needed in responding to this Office Action, please feel free to contact the trademark attorney listed below.
/Shari L. Sheffield/
Shari Sheffield
Trademark Attorney
Law Office 107
571-272-9373
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.