Ricoh Co., Ltd.

Trademark Trial and Appeal Board

Aug 30, 2000

EX (T.T.A.B. Aug. 30, 2000)

Paper No. 14
8/30/00 HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ricoh Company, Ltd.
________
Serial Nos. 75/354,282; 75/431,988
and 75/431,990
_______
Peter D. Murray of Cooper & Dunham LLP for Ricoh Company
Ltd.
Stacey J. Johnson, Trademark Examining Attorney, Law Office
113 (Meryl Hershkowitz, Managing Attorney).
_______
Before Simms, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Ricoh Company, Ltd. has filed applications to register
the mark WAVE PAK1 and the marks WAVEPAK and design,2 the
two designs being shown below, all for “image compression
software for use in copier and fax machines.”

1 Serial No. 75/354,282, filed September 9, 1997, based on an
allegation of a bona fide intent to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser Nos. 75/354,282; 75/431,988 and 75/431,990
2
Serial No. 75/431,988 Serial No. 75/431,990
Registration has been finally refused in each
application under Section 2(d), on the ground of likelihood
of confusion with the mark WAVEPAK for “computer hardware,
namely, circuit boards, power supplies, and connector
cables, and computer programs and user manuals supplied
therewith.”3
The refusals have been appealed4 and applicant’s
request to consolidate the cases for purposes of briefing
and final decision has been granted. Both applicant and
the Examining Attorney have filed briefs for the
consolidated cases, but an oral hearing was not requested.

2 Serial Nos. 75/431,988 and 75/431,990, filed February 10, 1998,
based on allegations of a bona fide intent to use the marks in
commerce.
3 Registration No. 1,408,293, issued September 9, 1986; Section 8
& 15 affidavits, accepted and acknowledged, respectively.
4 The Examining Attorney had also made final the requirement that
a stippling statement be inserted in the two applications
containing designs. Although applicant failed to address this
requirement in its initial brief, applicant filed an amendment
adding such a statement in the two applications in conjunction
with its reply brief. The Examining Attorney subsequently
accepted the statements and thus the requirement is not before
us.
Ser Nos. 75/354,282; 75/431,988 and 75/431,990
3
Here, as in any determination of likelihood of
confusion, two key considerations in our analysis are the
similarity or dissimilarity of the respective marks and the
similarity or dissimilarity of the goods with which the
marks are being used, or are intended to be used. See In
re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein.
As pointed out by the Examining Attorney, applicant’s
word mark, WAVE PAK, is nearly identical to the registered
mark, WAVEPAK. The space between the two terms in
applicant’s mark fails to alter the identity of sound and
connotation of the marks or to materially affect the
appearance of the marks. We also agree with the Examining
Attorney that the addition of a wave design in applicant’s
other two marks does not play a significant part in the
commercial impressions created by the marks. If anything,
the wave design serves to reinforce the term WAVE and, as
argued by the Examining Attorney, “contributes” to the
overall similarity of commercial impression of the
respective marks. See Ceccato v. Manifattura Lane Gaetano
Marzotto & Figli S.p.A., 32 USPQ2d 1192 (TTAB 1994). The
respective marks, as a whole, are highly similar, and

Ser Nos. 75/354,282; 75/431,988 and 75/431,990
4
applicant’s word mark and registrant’s mark are nearly
identical. Applicant has made no argument to the contrary.
Instead, it is when we look to the similarity or
dissimilarity of the respective goods that applicant takes
issue with the Examining Attorney. The Examining Attorney
takes the basic position that the “computer programs” as
identified in the registration encompass all varieties of
computer programs and, thus, applicant’s more specific
image compression software for use in copiers and fax
machines is covered thereby, citing In re Linkvest S.A., 24
USPQ2d 1716 (TTAB 1992).5
Applicant strongly contends that its software is
specific to copiers and fax machines and is not a computer
program, as “computer programs” were intended to be covered
by the registration. Applicant refers to the specimens in
the registration file as evidence that registrant’s
computer programs were promoted for use in turning a
personal computer into a signal analysis workstation having
data storage, archiving and analysis capabilities.
Applicant insists that its software, by contrast, is not
designed to work on a computer but rather to perform the

5 We note that in the final refusal the Examining Attorney made
additional arguments with respect to the similarity of the
respective goods. In view of our disposition of the case, and
since the Examining Attorney made no reference to these arguments
in her brief, we find no need to review the arguments here.
Ser Nos. 75/354,282; 75/431,988 and 75/431,990
5
operation of image compression on a copier or fax machine.
Relying upon prior Board holdings that a relationship is
not necessarily established simply because the goods of
both parties involve computers and even computer software,
applicant argues that consideration must be given here to
the specific nature and function of applicant’s software,
as well as that of registrant’s computer programs. Citing
In re Trackmobile, Inc., 15 USPQ2d 1152 (TTAB 1990),
applicant argues that this is a situation in which
reference should be made to the file wrapper of the
registration in order to clarify the intended meaning of
the broad term “computer programs,” and, as a result, to
see the differences in the nature of the respective goods.
It is well established that the question of likelihood
of confusion must be determined on the basis of the goods
as identified in the involved application and the cited
registration, rather than on what any evidence may show as
to the actual nature of the goods. Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987).
Registrant’s goods are identified, in part, as
“computer programs.” There is no limitation as to type or
variety of program or the intended field of use. We do not
consider the language “computer programs and user manuals
Ser Nos. 75/354,282; 75/431,988 and 75/431,990
6
supplied therewith,” as found in registrant’s
identification of goods, to inherently place a limitation
on the use of registrant’s programs, such that, as argued
by applicant, they are “supplied specifically to operate
with the computer hardware.” Registrant’s goods are
identified simply as “computer programs,” and thus
encompass all computer programs, including software such as
applicant’s, regardless of the specific function and type
of machine in which the software may be intended to be
used. The situation here parallels that in the Linkvest
case, in which we held that the registrant’s “computer
programs recorded on magnetic disks” encompassed the
applicant’s more specific computer software for data
integration and transfer.
Applicant’s reliance upon In re Trackmobile, Inc.,
supra, is misplaced. In that case, the Board found it
appropriate to turn to extrinsic evidence because the terms
used in the identification of goods were unclear as to the
exact nature of the goods involved. The evidence was taken
under consideration in order to determine the meaning of
the terms in the trade, not the nature of the goods with
which the mark was actually being used. In fact, the Board
distinctly pointed out that
[i]t is improper to decide the issue of
Ser Nos. 75/354,282; 75/431,988 and 75/431,990
7
likelihood of confusion based upon a
comparison of applicant’s actual goods
with registrant’s actual goods. If
registrant’s goods are broadly described
in its registration so as to include
types of goods which are similar to
applicant’s goods, then an applicant in
an ex parte case cannot properly argue
that, in point of fact, registrant
actually uses its mark on a far more
limited range of goods which range
does not include goods which are similar
to applicant’s goods.
Supra at 1153.
In the present case, there is no vagueness or
ambiguity in the goods as identified in the cited
registration. The meaning in the trade of the term
“computer program” is clear. Distinctions cannot be drawn,
as attempted by applicant, with respect to either the goods
or the channels of trade based on the nature of the goods
with which registrant is purportedly actually using its
mark.6
Applicant further insists that its software is not a
“computer program” or even “computer software,” since it is
being used with copiers and fax machines, not a computer
system. The Examining Attorney has countered this argument
by introducing the following dictionary definitions:
software Instructions for the computer. A series
of instructions that performs a particular

6 We note, as pointed out by the Examining Attorney, that, in
this case, the specimens in the file wrapper upon which applicant
relies, have not been made of record as evidence.
Ser Nos. 75/354,282; 75/431,988 and 75/431,990
8
task is called a program.
program A collection of instructions that tell the
computer what to do. A program is called
software, hence, program, software and
instructions are synonymous.
software program A computer program(computer
application). All computer programs
are software. Usage of the two words
together is redundant, but common.7
Thus, the Examining Attorney maintains that the terms
“program” and “software” are used interchangeably to
describe sets of instructions to “make electronic products
run.” Here, she argues, “since the applicant’s good are
software, they are accordingly used with computerized
goods, albeit those with facsimile and copier functions.”
We agree. The fact that applicant’s software is being
used in copier and fax machines, and not an office computer
system, a personal computer, or a “computer system” as
envisioned by applicant, does not obviate the fact that the
software may function as a set of instructions to a
computerized element, a microprocessor, within the
particular machine in which it is being used. Applicant
has provided no evidence that its software does not
function in this manner. Thus, taking the dictionary
definitions into account, we have no reason to conclude

7 The Computer Glossary (7th ed. 1995).
Ser Nos. 75/354,282; 75/431,988 and 75/431,990
9
other than that applicant’s software is encompassed by the
“computer programs” of registrant.
Accordingly, in view of the high degree of similarity
of the respective marks and of the overlapping of
applicant’s software by registrant’s computer programs, we
find confusion likely if applicant were to use its WAVEPAK
marks on the goods recited in the involved applications.
Decision: The refusal to register under Section 2(d)
is affirmed in each of the three applications.
R. L. Simms
B. A. Chapman
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board
Ser Nos. 75/354,282; 75/431,988 and 75/431,990
10