Shen Mfg. Co. Inc.v.Ritz Hotel Ltd.

Trademark Trial and Appeal Board

Aug 7, 2003

No. 91071706 (T.T.A.B. Aug. 7, 2003)

Mailed: August 7, 2003
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
Trademark Trial and Appeal Board
____________
Shen Manufacturing Company Incorporated v. Ritz Hotel
Limited
_____________
Consolidated Opposition Nos. 71,706; 72,817; 72,818;
73,756; 74,517; 74,778; and 75,003
____________
Frank J. Bonini, Jr. of Harding, Earley, Follmer & Frailey
for Shen Manufacturing Company Incorporated.
Lile Deinard of Dorsey & Whitney for Ritz Hotel Limited.
____________
Before Simms, Hanak and Bottorff, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
In 1984 and 1985 the Ritz Hotel Limited (applicant)
filed seven applications seeking to register marks
consisting of or containing the word RITZ for various goods
and services.
Thereafter, Shen Manufacturing Company Incorporated
(opposer) filed seven Notices of Opposition alleging that
applicant’s use of its marks in connection with its goods
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Consolidated Opp. Nos. 71,706; 72,817; 72,818; 73,756; 74,517; 74,778; and 75,003
2
and services would be likely to cause confusion with
opposer’s mark RITZ and design which it had used
continuously since various dates (the earliest being 1892)
for various products. Opposer alleged that all of its uses
of RITZ and design long predated any first use dates
claimed by applicant.
Applicant filed answers which denied that the
contemporaneous use of any of its seven marks for their
respective goods and services were likely to cause
confusion with respect to opposer’s mark for its goods. By
an order of this Board dated April 25, 2001 the seven
oppositions were consolidated. Both parties filed briefs
and were present at a hearing held on March 20, 2003.
Applicant has raised numerous evidentiary objections.
To a lesser extent, so has opposer. We have reviewed these
objections, and have considered only that evidence which is
relevant and properly before this Board. However, having
said the foregoing, three objections raised by applicant
deserve special comment.
First, at pages 15 and 16 of its brief, applicant
contends that “Shen [opposer] has offered testimonial
deposition testimony and evidence at trial concerning the
use of RITZ marks other than those pleaded in the notices
of opposition.” In its Notices of Opposition, opposer made
Consolidated Opp. Nos. 71,706; 72,817; 72,818; 73,756; 74,517; 74,778; and 75,003
3
specific reference to its RITZ and design mark, as shown
below.
During the course of this proceeding, opposer’s counsel (as
well as applicant’s counsel) repeatedly referred to
opposer’s mark as RITZ per se, without any mention
whatsoever of its diamond design element. Thus, we hold
that applicant has waived its objections to opposer’s uses
of RITZ per se.
However, having said the forgoing, we note that our
ruling really constitutes a “distinction without a
difference.” In essence, opposer pled rights in RITZ
surrounded by a very simple geometric shape, namely, a
diamond. It has long been held that such simple geometric
background shapes have no trademark significance in that
the public rarely takes notice of them. 1 McCarthy on
Trademarks and Unfair Competition, Section 7:29 at page 7-
68.7 (4th ed. 2002). An excellent example of this principle
Consolidated Opp. Nos. 71,706; 72,817; 72,818; 73,756; 74,517; 74,778; and 75,003
4
is found in In re Hyper Shoppes, 837 F.2d 463, 6 USPQ2d
1025 (Fed. Cir. 1988). In finding a likelihood of
confusion between applicant’s mark BIGG’S TRUE MINIMUM
PRICING surrounded by a rectangle for grocery store
services and the cited mark BIGG’S surrounded by an oval
for furniture, the Court did not even discuss the presence
of the rectangle or the oval. Hence, in our likelihood of
confusion analysis, we will assume that opposer’s mark is
essentially RITZ per se.
Second, there is, as pointed out at pages 15 to 17 of
applicant’s brief, a dispute as to which goods opposer has
established prior trademark rights. However, with one
exception – shower curtains, to be discussed later – there
is no dispute, as applicant acknowledges at page 16 of its
brief, that opposer has established prior trademark rights
in RITZ for dish cloths, kitchen towels, bathroom towels,
toaster covers, textile placemats, napkins, potholders,
barbeque mitts, aprons, and cleaning and polishing cloths.
For our various likelihood of confusion considerations, the
forgoing admission is sufficient, although we should add
that the record reflects that opposer has established prior
rights in the mark RITZ for a number of other related
products.
Consolidated Opp. Nos. 71,706; 72,817; 72,818; 73,756; 74,517; 74,778; and 75,003
5
Third, at footnote 12 at page 18 of its brief,
applicant raises for the first time a defense under
Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881,
160 USPQ 715 (CCPA 1969). Not only did applicant fail to
plead a Morehouse defense, but said defense was not tried
by the explicit or implicit consent of the parties. Hence,
we will not consider this defense.
We now turn to the merits of the oppositions.
Applicant seeks to register RITZ in typed drawing form for
“providing courses of instruction in cooking, meal
preparation and wine selection” (Ser. No. 73/499,080, Op.
No. 72,818) and for “threads for use in textiles” (Ser. No.
73/549,463, Op. No. 74,778). In any likelihood of
confusion analysis, two key, although not exclusive,
considerations are the similarities of the marks and the
similarities of the goods or services. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1978) (“The fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of the
differences in the characteristics of the goods [and
services] and differences in the marks.”).
Considering first the marks, they are essentially
identical. As previously noted, there is no meaningful
distinction between RITZ and RITZ enclosed within a simple
Consolidated Opp. Nos. 71,706; 72,817; 72,818; 73,756; 74,517; 74,778; and 75,003
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geometric shape such as a diamond. Thus, the first Dupont
“factor weighs heavily against applicant” because
applicant’s mark is essentially identical to opposer’s
mark. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Turning to a consideration of opposer’s goods and
applicant’s goods and services, we note that because the
marks are essentially identical, their contemporaneous use
can lead to the assumption that there is a common source
“even when [the] goods or services are not competitive or
intrinsically related.” In re Shell Oil Co., 922 F.2d
1204, 26 USPQ 1687, 1689 (Fed. Cir. 1993).
However, in this case, we find that certain of
opposer’s goods are clearly related to providing courses of
instruction in cooking and meal preparation, and threads
for use in textiles. Obviously, in providing cooking
courses (applicant’s services) it would be necessary that
one make use of kitchen towels, dish cloths, aprons,
barbecue mitts and potholders. After having prepared the
food, one would need napkins and placemats. Accordingly,
given the fact that the marks are virtually identical and
the services of applicant clearly require the use of
certain of opposer’s goods, we find that there exists a
likelihood of confusion.
Consolidated Opp. Nos. 71,706; 72,817; 72,818; 73,756; 74,517; 74,778; and 75,003
7
As for applicant’s RITZ threads for use in textiles,
even if we make the assumption (not established by
applicant) that such threads are only purchased by
professional buyers, nevertheless, we find that such
professional buyers who are aware of opposer’s RITZ dish
cloths, kitchen towels, napkins, cleaning cloths, textile
placemats, polishing cloths and bathroom towels would
assume that both threads for textiles and the finished
products emanated from a common source. We recognize that
professional buyers of threads for textiles are
sophisticated. However, no degree of sophistication would
enable even a professional to distinguish between
essentially identical marks. Hence, we find that there
exists a likelihood of confusion.
As for applicant’s application Ser. No. 73/572,795
(Op. No. 75,003) for THE RITZ KIDS in typed drawing form
for, amongst other goods, gloves, we likewise find that
there exists a likelihood of confusion with opposer’s mark
RITZ and simple diamond design. To begin with, we note
that applicant’s Class 25 application for THE RITZ KIDS
includes “gloves” of all types, including ready made and
tailored. A “mitt” is defined as a typed of glove. Random
House Webster’s Dictionary (2001). Because the goods are
in part legally identical, “the degree of similarity [of
Consolidated Opp. Nos. 71,706; 72,817; 72,818; 73,756; 74,517; 74,778; and 75,003
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the marks] necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ 1698, 1700
(Fed. Cir. 1992). Whether mitts (some of opposer’s goods)
are related to other of applicant’s Class 25 goods is
irrelevant for our likelihood of confusion analysis.
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981). In considering
applicant’s mark THE RITZ KIDS, we note that the word THE
is one of those words that has virtually no significance in
distinguishing trademarks. In re Packaging Specialists,
Inc., 221 USPQ 917, 919 (TTAB 1984). As for the word KIDS,
it is clear that this word simply indicates that the
particular item of apparel is designed for kids.
Accordingly, if a consumer were familiar with opposer’s
RITZ mitts, we believe that upon encountering applicant’s
mark THE RITZ KIDS for, among other goods, gloves, he or
she would assume that they emanate from a common source.
Hence, the opposition is sustained as to applicant’s Class
25 goods. Because opposer only opposed the Class 25 goods,
it is not sustained as to the other classes. See page 7 of
this Board’s order of April 25, 2001.
As for applicant’s applications to register RITZ PARIS
RITZ HOTEL and design shown below for “dinner plates of
Consolidated Opp. Nos. 71,706; 72,817; 72,818; 73,756; 74,517; 74,778; and 75,003
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porcelain or earthenware, cups, saucers and serving pieces
of porcelain, hair combs, household sponges, household
brushes, steelwool, household glassware; namely, tumblers,
goblets and juice glasses” (Ser. No. 73/518,941, Op. No.
73,756) and for “carpets, rugs, floor mats and matting,
linoleum for covering existing floors, wall covering made
of vinyl and plastic” (Ser. No. 73/518,946, Op. No.
74,517), we simply note that this mark and opposer’s mark
are distinctly different in appearance, pronunciation and
especially meaning. Put quite simply, applicant’s mark
conjures up a hotel in Paris, more specifically, the world
famous Ritz Hotel. Thus, despite the fact that certain of
opposer’s goods (cleaning and polishing cloths) and certain
of applicant’s goods (household sponges and brushes) are
very similar in terms of their functions, we nevertheless
find that given the significant disparity in the marks,
there exists no likelihood of confusion.
Consolidated Opp. Nos. 71,706; 72,817; 72,818; 73,756; 74,517; 74,778; and 75,003
10
We turn now to application Ser. No. 73/514,805 (Op.
No. 71,706) for PUTTING ON THE RITZ in typed drawing form
for “shower curtains.” To begin with, we note that while
opposer has now made use of its mark RITZ for shower
curtains, said use did not occur prior to applicant’s
priority date. Hence, the closest goods to shower curtains
for which opposer has established priority are bathroom
towels. Clearly, bathroom towels and shower curtains are
related goods. However, put quite simply, the mark PUTTING
ON THE RITZ conjures up images of getting well dressed up,
or to older individuals such as myself, the legendary song
Puttin’ on the Ritz composed by Irving Berlin. We find
that the differences in the marks outweigh the similarities
in the goods (shower curtains and bathroom towels) such
that there is no likelihood of confusion.
Finally, with regard to applicant’s application
seeking to register CESAR RITZ (Ser. No. 73/499,264, Op.
No. 72,817) for “educational services; namely, conducting
courses of instruction in cooking,” we find that this mark
is dissimilar enough from opposer’s mark RITZ such that
there is no likelihood of confusion. We recognize that
Consolidated Opp. Nos. 71,706; 72,817; 72,818; 73,756; 74,517; 74,778; and 75,003
11
previously we found confusion between opposer’s mark RITZ
and applicant’s mark RITZ for cooking courses.
Nevertheless, we find that the presence of CESAR in
applicant’s mark is sufficient to distinguish it from
opposer’s mark such that there is no likelihood of
confusion. While by no means the dispositive factor, we
note that CESAR is the first word in applicant’s mark and
this is “a matter of some importance since often it is the
first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered.” Presto
Products v. Nice Pak Products, 9 USPQ2d 1825, 1827 (TTAB
1988).
Decision: The oppositions are sustained with regard
to Opposition Nos. 72,818 and 74,778 (RITZ) and Op. No.
75,003 (THE RITZ KIDS). The other four oppositions are
dismissed.