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

• Decision Date: 17 December 2004
• Docket Number: No. 04-1063.,No. 04-1076.,04-1063.,04-1076.
• Citation: 393 F.3d 1238
• Parties: SHEN MANUFACTURING CO., INC., Appellant, v. THE RITZ HOTEL LIMITED, Cross Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1238

393 F.3d 1238

SHEN MANUFACTURING CO., INC., Appellant, v. THE RITZ HOTEL LIMITED, Cross Appellant.

No. 04-1063.

No. 04-1076.

United States Court of Appeals, Federal Circuit.

December 17, 2004.

John F.A. Earley III, Harding, Earley, Follmer & Frailey, of Valley Forge, Pennsylvania, argued for appellant. With him on the brief were Frank J. Bonini, Jr., and Charles L. Riddle.

Bruce R. Ewing, Dorsey & Whitney LLP, of New York, New York, argued for cross appellant. With him on the brief was Lile H. Deinard.

Before MAYER, Chief Judge, SCHALL and PROST, Circuit Judges.

MAYER, Chief Judge.

Shen Manufacturing Co., Inc. ("Shen") appeals the decision of the Trademark Trial and Appeal Board, which dismissed Shen's oppositions to The Ritz Hotel, Limited's ("RHL") registration of: (1) PUTTING ON THE RITZ for shower curtains; (2) RITZ PARIS RITZ HOTEL and design for various items of dinnerware; and (3) RITZ PARIS RITZ HOTEL and design for various floor and wall coverings. Shen Mfg. Co. v. Ritz Hotel Ltd., Opposition Nos. 71,706, 73,756 and 74,517, respectively (TTAB Aug. 7, 2003) ("Board's Opinion"). RHL cross-appeals the board's decision sustaining Shen's opposition to RHL's registration of RITZ for cooking and wine selection classes and THE RITZ KIDS for ready-made and tailored clothing. Board's Opinion, Opposition Nos. 72,818 and 75,003, respectively. We affirm the board's dismissal of Opposition Nos. 71,706, 73,756 and 74,517; and reverse the board's decision sustaining Opposition Nos. 72,818 and 75,003.¹

Background

RHL owns and operates The Ritz Hotel in Paris, France, which was opened in 1898 by César Ritz. According to RHL, as well as a myriad of publications presented by RHL, The Ritz Hotel is one of the most luxurious and renowned hotels in the world. Aside from hotel and restaurant services, RHL has expanded into other industries, including the sale of coffee, tea, chocolates, drinking glasses and champagne. These products are sold under a variety of registered marks, such as RITZ, RITZ PARIS RITZ HOTEL and design, and HOTEL RITZ. Shen, on the other hand, sells kitchen textiles, such as dish towels, potholders, and aprons, in addition to a variety of other textile items including bathroom towels and ironing board covers. Shen has used the RITZ mark, which was derived from its founder's last name, John Ritzenthaler, since it began doing business in 1892.

In 1984 and 1985, RHL applied to register the following marks: (1) PUTTING ON THE RITZ for shower curtains; (2) RITZ PARIS RITZ HOTEL and design for "dinner plates of porcelain or earthenware, cups, saucers and serving pieces of porcelain, hair combs, household sponges, household brushes, steelwool, [and] household glassware"; (3) RITZ PARIS RITZ HOTEL and design for "carpets, rugs, floor mats and matting, linoleum for covering existing floors, [and] wall covering made of vinyl and plastic"; (4) RITZ for cooking and wine selection classes; and (5) THE RITZ KIDS for ready made and tailored clothing, including underwear, dresses, skirts, trousers, shirts, neckties, belts, gloves, hats, raincoats and galoshes. Shen opposed the registrations, arguing that RHL's use of "Ritz" would likely cause confusion based on three factors: (1) the strength of Shen's RITZ mark; (2) the similarity of RHL's marks to Shen's RITZ mark; and (3) the relatedness of the products covered by RHL's applications and those sold by Shen.

In 2003,² the board decided Shen's consolidated oppositions. The board dismissed Opposition No. 71,706, which challenged RHL's registration of PUTTING ON THE RITZ for shower curtains. In so doing, the board found that while shower curtains are closely related to Shen's products, namely bathroom towels, RHL's PUTTING ON THE RITZ mark is dissimilar to Shen's RITZ mark in terms of appearance, sound and commercial impression. The board likewise dismissed Opposition Nos. 73,756 and 74,517, which challenged both of RHL's registrations of RITZ PARIS RITZ HOTEL and design. Again the board found that the goods described in RHL's applications were related to Shen's goods, but that the differences in the marks were sufficient to prevent any likelihood of confusion. In contrast, the board sustained Opposition No. 72,818 covering RITZ for cooking and wine selection classes, finding that there was a likelihood of confusion because cooking classes require the use of kitchen textiles. The board also sustained Opposition No. 75,003 regarding THE RITZ KIDS for clothing, finding that gloves are too related to barbeque mitts considering the similarity of the marks. Shen appealed the board's decision as to Opposition Nos. 71,706, 73,756 and 74,517; RHL cross-appealed the board's decision as to Opposition Nos. 72,818 and 75,003. We exercise jurisdiction pursuant to 28 U.S.C. § 1295(a)(4). Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1356 (Fed.Cir.2000).

Discussion

We review the board's legal conclusions de novo, In re Dixie Rest., Inc., 105 F.3d 1405, 1406 (Fed.Cir.1997), and its findings of fact for substantial evidence, Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1359 (Fed.Cir.2001). Whether there is a likelihood of confusion is a question of law based on underlying facts, such as the similarity of the marks and the relatedness of the goods or services. In re Dixie, 105 F.3d at 1406.

The PTO may refuse to register a trademark that is so similar to a registered mark "as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive...." 15 U.S.C. § 1052(d) (Supp.2004). In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973), established a test for determining whether there is a likelihood of confusion:

In testing for likelihood of confusion ... the following, when of record, must be considered: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound connotation and commercial impression. (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. (3) The similarity or dissimilarity of established, likely-to-continue trade channels. (4) The conditions under which and buyers to whom sales are made, i.e. `impulse' vs. careful, sophisticated purchasing. (5) The fame of the prior mark (sales, advertising, length of use). (6) The number and nature of similar marks in use on similar goods. (7) The nature and extent of any actual confusion. (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. (9) The variety of goods on which a mark is or is not used (house mark, `family' mark, product mark). (10) The market interface between applicant and the owner of a prior mark.... (11) The extent to which applicant has a right to exclude others from use of its mark on its goods. (12) The extent of potential confusion, i.e., whether de minimis or substantial. (13) Any other established fact probative of the effect of use.

Neither we nor the board, however, need consider every DuPont factor. Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336 (Fed.Cir.2001) ("While it must consider each factor for which it has evidence, the [b]oard may focus its analysis on dispositive factors, such as similarity of the marks and relatedness of the goods."). Instead, we are required only to consider those factors that are relevant. There are three such factors in this case: (1) the alleged fame of Shen's RITZ mark; (2) the similarity of the marks; and (3) the relatedness of the goods.³ See Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1370 (Fed.Cir.2002).

Before undertaking a comparison of each set of marks, we address Shen's contention that its RITZ mark is famous and, therefore, entitled to enhanced protection. See id. at 1371 (noting that famous marks enjoy greater protection). In support of this argument, Shen offered evidence that: (1) its mark is arbitrary; (2) more than $5 million worth of products bearing Shen's RITZ mark are sold annually; (3) the RITZ mark has been used continuously since 1892; (4) Shen spends hundreds of thousands of dollars annually on advertising; and (5) products bearing Shen's RITZ mark are advertised nationally. See id. ("[F]ame of a mark may be measured indirectly ... by the volume of sales and advertising expenditures of the goods traveling under the mark, and by the length of time those indicia of commercial awareness have been evident."). This evidence does not, however, justify a finding of fame. In Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 1569-70 (Fed.Cir.1983), we found that the GIANT FOOD mark was famous based on its 45 years of use, sales in excess of $1 billion per year, extensive media exposure and prominent display on the facade of supermarkets. Likewise, we found in Bose, 293 F.3d at 1372, that the ACOUSTIC WAVE mark was famous based on 17 years of use, annual sales over $50 million, annual advertising in excess of $5 million, and extensive media coverage. Although Shen's RITZ mark has been in use for more than a century, it does not compare in terms of sales, advertising or media interest. Further, it cannot be said that Shen's mark enjoys the "extensive public recognition and renown" characteristic of a famous mark. Id. at 1371 (quotation marks omitted). Thus, the board's failure to find that Shen's RITZ mark is famous is supported by substantial evidence.

We now consider each set of marks in turn, beginning with Opposition No. 71,706, which the board dismissed. The two marks at issue are Shen's RITZ for bathroom towels and RHL's PUTTING ON THE RITZ for shower curtains.⁴ The board found, and we agree, that bathroom towels and shower curtains are related goods. Board's Opinion, slip op. at 10. Because the goods are related, "the degree of similarity necessary to support a conclusion of...