Response to Office Action

RESPONSE

1.            Likelihood of Confusion

The Examining Attorney argues that there may be a likelihood of confusion between applicant's mark and two registrations for "IMAGE EXPRESS" - formative marks covering different goods.  The applicant traverses these rejections, as follows:

                                    a.            Consumers are not likely to confuse applicant's mark with the various "IMAGE EXPRESS" - formative marks because the                  respective goods are different.

            Applicant's product is a highly specialized, built to order system, comprised of both hardware and software, designed to scan and create indexed document images and store them on microfiche or film rolls.  In contrast, the cited registrations cover only software.  Specifically, one of the cited registrations covers cash management applications used by financial institutions, while the other covers software used in color printing.

"If the goods or services are not related or marketed in such a way that they would be encountered by the same person in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely."  [emphasis added]  TMEP § 1207.01(a)(i).  Furthermore, "the fact that one mark may bring another to mind does not itself establish likelihood of confusion as to source."   Jacobs v. International Multifoods Corp., 668 F.2d 1234, 1235 (CCPA 1982) (finding no likelihood of confusion between the marks BOSTON TEA PARTY for tea and BOSTON SEA PARTY for restaurant services).  Although the cited registrations are similar to the applicant's mark, the underlying goods and services covered by these registrations are not related and not likely to cause consumer confusion. 

When goods are "expensive," "the buyer can be expected to exercise greater care in his purchases." AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 353 (9th Cir. 1979).  The applicant's goods are specialized and expensive.  Thus, the applicant's customers should be considered highly sophisticated and will be very discriminating in their purchases.  Further, the cited registrations cover sophisticated and specialized computer software.  These are also expensive goods that will attract a sophisticated and discriminating consumer.  The sophistication and discrimination of the underlying consumer will serve to further reduce any possibility of confusion. 

The cited registrations will be analyzed in the order they were raised in the Office Action:

            1)  CS IMAGE/EXPRESS:  This cited registration covers computer software, namely, image capture, storage and delivery platform for cash management applications for use by banks, saving and loan associations, thrifts, credit unions, brokerage houses and other similar financial institutions.  The applicant's product is a complete document scanning and retrieval system, encompassing both hardware and software, including scanners, scanning and indexing software, and laser-based microfilm equipment.  Applicant's product is a specialized, built to order system that creates, indexes and stores document images for archival purposes.  In contrast, the cited registration covers only cash management software.  This software is used very specifically by financial institutions for cash management purposes, not for document retrieval purposes.  Thus, the respective goods are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source and there can be no likelihood of confusion pursuant to TMEP § 1207.01(a)(i). 

            2)  GEI IMAGE EXPRESS:  This registration covers computer software for accelerated printing of color files. As discussed above, applicant's product is a highly specialized, built to order document imaging and retrieval system comprised of both hardware and software.  The purpose of applicant's product is to index and archive documents, which is quite different from software that assists users in printing color files.  Although applicant offers goods in Class 9, these goods are completely different from those offered under the cited mark, the marketing channels are different, and the consumer bases for each of the respective products are completely unrelated.  Thus, the respective goods are not related or marketed in such a way that they would be encountered by the same person in situations that would be likely to create the incorrect assumption that they originate from the same source and there can be no likelihood of confusion pursuant to TMEP § 1207.01(a)(i). 

Applicant would also like to direct the Examining Attorney's attention to the fact the United States Patent and Trademark Office required the owner of the cited registration to file a Section 8 Declaration to maintain this registration on August 26, 2003.  The deadline to file a late Declaration was February 26, 2004.  According to the United States Patent and Trademark database, the owner of the cited registration has not timely filed its Section 8 Declaration.  Accordingly, this mark may be subject to cancellation, and may no longer pose a barrier to registration of applicant's mark.

Given the differences in the goods and the sophistication of the underlying consumers, it is respectfully submitted that a likelihood of confusion between the applicant's mark and the cited "IMAGE EXPRESS" - formative registrations does not exist. 

            2.             Substitute Specimen.

The Examining Attorney refuses registration because the specimen for Class 9 is unacceptable as evidence of actual use because it fails to demonstrate how the mark is applied to the actual goods.  However, as testified to by Bruce Allen, applicant's Product Manager, in his declaration dated May 27, 2003 (submitted in support of the application), the brochure submitted with the Statement of Use, which prominently displays the mark IMAGE EXPRESS, is provided to prospective consumers during live sales presentations, trade shows and conventions.  During these presentations, the IMAGE EXPRESS mark is discussed, as is the brochure that displays the mark, and prospective consumers are provided with product specifications, pricing information and ordering information.  Since the IMAGE EXPRESS product is a very expensive, specialized, custom, built to order product, there is no standard pricing schedule or specification chart. 

The product is discussed in a manner that conveys to a prospective consumer that the mark IMAGE EXPRESS is "applied" to the goods in a similar manner as a product catalog.  Thus, it is respectfully submitted that the manner of use set forth herein complies with the affixation standard required for product specimens.  As a result, applicant respectfully submits that the application be approved for publication.

CONCLUSION