UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/519343
APPLICANT: Anacomp, Inc.
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CORRESPONDENT ADDRESS: JOHN M. KIM GRAY CARY WARE & FREIDENRICH LLP 4365 EXECUTIVE DRIVE, SUITE 1100 SAN DIEGO, CA 92121-2133
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom102@uspto.gov
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MARK: IMAGE EXPRESS
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CORRESPONDENT’S REFERENCE/DOCKET NO: T05388US0
CORRESPONDENT EMAIL ADDRESS:
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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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Serial Number 76/519343
First Action
The assigned examining attorney has reviewed the referenced application and determined the following.
REFUSAL OF REGISTRATION: LIKELIHOOD OF CONFUSION-SECTION 2(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 marks in U.S. Registration Nos. 2494552 and 2092121 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registrations.
Reg. No. 2494552 is CS IMAGE/EXPRESS (typed) for “computer software, namely, image capture, storage and delivery platform for cash management applications for use by banks, savings and loan associations, thrifts, credit unions, brokerage houses and other similar financial institutions.”
Reg. No. 2092121 is GEI IMAGE EXPRESS (typed) for “computer software for accelerated printing of color files.”
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 (C.C.P.A. 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). TMEP §§1207.01 et seq.
A. Similarity of the Marks
The applicant’s mark is IMAGE EXPRESS. The IMAGE EXPRESS portion of Reg. No. 2092121 is identical in spelling to the applicant’s entire mark. The IMAGE/EXPRESS portion of Reg. No. 2494552 has the same pronunciation as the applicant’s entire mark.
B. Similarity of the Goods
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983). TMEP §1207.01(a).
The applicant’s goods are related to the goods in Reg. No. 2494552 because the applicant’s goods include software for capturing images. The applicant’s goods are related to the goods in Reg. No. 2092121 because the applicant’s software is used for transferring images and the registrant’s goods are used for printing files.
RESPONSE
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 informalities.
The applicant must insert a disclaimer of IMAGE in the application because it is descriptive of the goods in that the applicant’s goods will scan images. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use IMAGE apart from the mark as shown.
Specimens
The specimen is unacceptable as evidence of actual trademark use because it is an advertising brochure. Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens. In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07. See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984). The applicant must submit a specimen showing the mark as it is used in commerce. 37 C.F.R. §2.56. Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging. TMEP §§904.04 et seq. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application. 37 C.F.R. §2.59(a); TMEP §904.09.
/Kim Saito/
Examining Attorney, Law Office 102
703-308-9102 ext. 130
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.