Appendix — Shen Manufacturing Co. v. Ritz Hotel Ltd.

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APPENDIX A — OPINION OF THE UNITED STATES

COURT OF APPEALS FOR THE FEDERAL CIRCUIT

DECIDED DECEMBER 17, 2004

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

04-1063, -1076

(Opposition Nos. 71,706, 72,817, 73,756,

74,517, 72,818, and 75,003)

SHEN MANUFACTURING CO., INC.,

Appellant,

v.

THE RITZ HOTEL LIMITED,

Cross Appellant.

DECIDED: December 17, 2004

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

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Appendix A

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.'

Background

RHL owns and operates The Ritz Hotel in Paris, France,

which was opened in 1898 by Cesar 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.

1. Shen also appealed the board’s dismissal of Opposition No.

72,817. Because RHL has abandoned the corresponding application,

. Shen’s appeal is moot.

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Appendix A

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,? 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,

2. RHL’s applications languished at the United States Patent

and Trademark Office (“PTO”) for nearly two decades as the result

of the parties’ failure to move the applications and corresponding

oppositions forward.

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Appendix A

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. Jn 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

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Appendix A

confusion, or to cause mistake, or to deceive. .. .” 15 U.S.C.

§ 1052(d) (Supp. 2004). In re E.l. 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.,

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Appendix A

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.’ See Bose Corp. v. OSC 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

3. We assume that the channels of trade and the sophistication

of the purchasers are identical. See Hewlett-Packard Co. v. Packard

Press, Inc., 281 F.3d 1261, 1268 (Fed. Cir. 2002) (“[A]bsent

restrictions in the application and registration, goods and services

are presumed to travel in the same channels of trade to the same

class of purchasers.”).

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Appendix A

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. Jd. 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.*

The board found, and we agree, that bathroom towels and

shower curtains are related goods. Board's Opinion, slip op.

4. Although Shen asserts that it now uses its RITZ mark on

shower curtains, it did not start this practice until after RHL’s

application. As such, it is not entitled to priority of use for RITZ on

shower curtains. See Person's Co. v. Christman, 900 F.2d 1565, 1569

(Fed. Cir. 1990).

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Appendix A

at 10. Because the goods are related, “the degree of similarity

necessary to support a conclusion of likely confusion

declines.” Century 21 Real Estate Corp. v. Century Life of

Am., 970 F.2d 874, 877 (Fed. Cir. 1992). As to the marks,

the board found that PUTTING ON THE RITZ leaves the

consumer with a distinct impression, specifically that of

getting dressed up or of the song composed by Irving Berlin.

Board's Opinion, slip op. at 10. Shen argues that this was

error because it overemphasizes the relevance of the words

“Putting on the” while simultaneously underemphasizing the

use of “Ritz.” In this vein, Shen contends that “Putting on

the” has no significance aside from its use in conjunction

with “Ritz.” As such, “Ritz” is the only relevant portion of

the mark and, therefore, RHL’s mark is identical to Shen’s

mark.

While there are often discrete terms in marks that are

more dominant and, thus, more significant to the assessment

of similarity, Giant Food, 710 F.2d at 1570 (finding GIANT

to be dominant in both marks), the law forbids the type of

dissection proposed by Shen. See Packard Press, 227

F.3d at 1358 (“The ultimate conclusion of similarity or

dissimilarity of the marks must rest on consideration of the

marks in their entirety.”); see also In re Nat’l Data Corp.,

753 F.2d 1056, 1059 (Fed. Cir. 1985). PUTTING ON THE

RITZ, when evaluated as a whole, conveys a strong

commercial impression. It conjures images of fancy, even

swanky, ladies in full length gowns and gentlemen in tails

and top hats congregating in a large Art Nouveau restaurant

where an orchestra is about to start. This image, one of

comfort, sophistication and wealth, resonates strongly with

the buying public, leaving them with an impression unlike

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Appendix A

that from Shen’s RITZ mark, which, when used on kitchen

textiles, invokes images, if any, of cleaning, cooking or

manual labor generally. The two marks also differ in terms

of sound and appearance. See In re Coors Brewing Co., 343

F.3d 1340, 1343 (Fed. Cir. 2003). RHL’s mark contains other

words in addition to “Ritz,” making both its visual appearance

and pronunciation longer. Thus, we affirm the board’s

dismissal of Opposition No. 71,706 because the dissimilarity

of the marks prevents a likelihood of confusion.

We now turn to Opposition Nos. 73,756 and 74,517,

which the board also dismissed. Both of these oppositions

challenged the registration of RITZ PARIS RITZ HOTEL

and design, which is reproduced here.

; “,

——,

RITZ

PARIS

The products covered in the first opposition include

dinnerware, such as plates, cups, saucers and drinking glasses,

in addition to cleaning items, such as steelwool and sponges.

The second includes various types of floor coverings, such

as carpets and rugs, as well as wall coverings. The board

found that despite the relatedness of some of t1e products

listed in the applications (e.g., sponges) to Shen’s cleaning

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Appendix A

towels, the marks are sufficiently different to avoid a finding of

likely confusion. Board’s Opinion, slip op. at 9. Shen argues

that the board erred by giving too much weight to the disclaimed

elements of RHL’s mark, namely the term “Paris” in large font

and the terms “Paris” and “hotel” that appear on the banner

under the crest. The disclaimed elements of a mark, however,

are relevant to the assessment of similarity. Jn re Shell Oil Co.,

992 F.2d 1204, 1206 (Fed. Cir. 1993). This is so because

confusion is evaluated from the perspective of the purchasing

public, which is not aware that certain words or phrases have

been disclaimed. Jn re Nat’l, 753 F.2d at 1059. Therefore, the

board did not err by taking into account the reference in RHL’s

mark to a hotel in Paris, France.

RHL’s mark is further differentiated by the crest and ribbon,

which give the mark a particularly regal feel. The crest, ribbon

and reference to Paris collectively give the commercial

impression of royalty, old-world tradition and continental

elegance, which differs from the more mundane impression

imparted by Shen’s RITZ mark. Aside from the distinct

commercial impression left by RHL’s mark, the appearance of

the mark is also different from Shen’s RITZ mark. See Hewlett-

Packard, 281 F.3d at 1265. Shen’s mark generally appears as

simple block lettering or block lettering centered in a diamond,

as reproduced here.

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Appendix A

Thus, Shen’s uncomplicated mark either has a different shape,

a diamond as opposed to the half circle used by RHL, or no

embellishment at all. Based on the differences between the

RITZ PARIS RITZ HOTEL and design and RITZ marks, we

affirm the dismissal of Opposition Nos. 73,756 and 74,517.

Next, we assess that portion of the board’s decision

sustaining Opposition No. 72,818, which relates to RHL’s

registration of RITZ for cooking and wine selection classes.

The marks are identical; therefore, we focus our attention on

the relatedness of the goods. The board found that RHL’s

cooking classes are related to Shen’s kitchen textiles because

“in providing cooking courses . . . it would be necessary that

one make use of kitchen towels, dish cloths, aprons, barbecue

mitts and potholders.” Board's Opinion, slip op. at 6. Thus,

the board based its finding of relatedness on the fact that

“the services of applicant clearly require the use of certain

of opposer’s goods.” Jd.

That two goods are used together, however, does not, in

itself, justify a finding of relatedness. “(T]he test is not that

goods and services must be related if used together, but

merely that that finding is part of the underlying factual

inquiry as to whether the goods and services at issue. . . can

be related in the mind of the consuming public as to the origin

of the goods.” Packard Press, 227 F.3d at 1358. Conversely,

goods that are neither used together nor related to one another

in kind may still “be related in the mind of the consuming

public as to the origin of the goods. It is this sense of

relatedness that matters in the likelihood of confusion

analysis.” Recot, Inc. v. Becton, 214 F.3d 1322, 1329 (Fed.

Cir. 2000) (comparing FRITO-LAY for snack foods to FIDO

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Appendix A

LAY for dog treats). Therefore, although a student of RHL’s

cooking classes would undoubtedly use kitchen textiles, it

does not necessarily follow that the consuming public would

understand those products to have originated from the same

source. For example, in Jn re Coors, 343 F.3d at 1341, we

held that the board erred by finding that beer and restaurant

services are related regardless of the fact that countless

restaurants serve beer. On the other hand, we found that

“distributorship services in the field of automotive parts”

were related to service station oil and lubrication services.

In re Shell, 992 F.2d at 1206 (comparing the use of RIGHT-

A-WAY on both products). Likewise, we found that

amplifiers (i.e., parts of sound systems) were related to

complete sound systems. Bose, 293 F.3d at 1376 (comparing

the use of ACOUSTIC WAVE with POWER WAVE). And,

finally, we found that data processing services would be

perceived by the purchasing public as related to computer

hardware and consultant data processing services. Packard

Press, 227 F.3d at 1358 (comparing HEWLETT-PACKARD

with PACKARD TECHNOLOGIES).

Of these, the relationship between cooking classes and

kitchen textiles is more akin to the relationship between

restaurant services and beer. Cooking classes are not the same

type of product as kitchen textiles: one is a service while the

other is a tangible good. Nor are they the same category of

product in the sense that snack foods and dog treats are. See

Recot, 214 F.3d at 1329. In this sense, it would be more

accurate to say that cooking classes are in the same category

as language or pottery classes. Thus, aside from the fact that

these goods are used together, there is no indication that the

consuming public would perceive them as originating from

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Appendix A

the same source. As a result, the board’s finding of relatedness

is not supported by substantial evidence. Having determined

that cooking classes and kitchen textiles are not related, we

likewise reverse the ultimate conclusion as to the likelihood

of confusion. Although the marks are identical, the

differences in the products as well as the weakness of Shen’s

mark lead us to dismiss Opposition No. 72,818.

Finally, we turn to Opposition No. 75,003 for THE RITZ

KIDS, which was sustained by the board. The board found

that THE RITZ KIDS was similar to RITZ because “the word

THE is one of those words that has virtually no significance

in distinguishing trademarks” and “the word KIDS . . . simply

indicates that the particular item of apparel is designed for

kids.” Board’s Decision, slip op. at 8. The board likewise

found that gloves are “legally identical” to barbeque mitts

based on the definition in Random House Webster's

Dictionary (2001) of “mitt” as a type of glove. Board's

Decision, slip op. at 7. In conclusion, the board commented

that, “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.” Id. at 8.

We cannot sanction the board’s dissection of RHL’s mark.

See In re Nat’l, 753 F.2d at 1058 (holding that a “likelihood

of confusion cannot be predicated on dissection of a mark”).

While it is accurate that terms such as “the” and “kids” often

have little impact on consumers, this is not universally true.

In this case, for instance, “the” has elevated significance

because of the well-known manner in which people refer to

RHL as “The Ritz” or “The Ritz Hotel,” but not as “Ritz” or

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Appendix A

“Ritz Hotel.” See id. at 1058-59 (“Without question, the

descriptive or generic character of an expression ... is

pertiner’ to the issue of likelihood of confusion.”). Therefore,

“the” operates as an indicator of source in RHL’s mark even

though it has diminished importance in most other marks.

And, while “kids” is undeniably used to indicate that the

product is geared toward children, it distinguishes RHL’s

mark from Shen’s; it is unlikely that consumers would

mistakenly believe that Shen, the manufacturer of kitchen

textiles, has expanded into children’s clothing. In addition,

the pronunciation of THE RITZ KIDS sounds like “The Rich

Kids,” leaving the impression of wealth, a concept tied

strongly to RHL and not associated in any way with Shen’s

RITZ mark. Thus, taking into consideration the “appearance,

s‘wad, connotation, and commercial impression of the two

mari s.” we reverse the board’s finding that THE RITZ KIDS

is similar to RITZ. Jn re Coors, 343 F.3d at 1343.

We also reverse the board’s finding that gloves are reiated

to barbeque mitts because it is not supported by substantial

evidence. The mere fact that “mitt” is defined as a type of

glove has no relevance to whether a consumer would believe

that the two products emanate from the same source.

See Packard Press, 227 F.3d at 1358. First, Shen’s product

is not a mitt, it is a barbeque mitt. It is designed to protect

the hand from heat while cooking. While it covers the hand

like a glove, it is better understood as a tool than as an article

of clothing. The unrelatedness of RHL’s and Shen’s products

is highlighted by comparing a similar set of goods: hard hats

used by construction workers and fedoras. While both are

hats that are used to cover the head, they have different

purposes. The first is used for protection, just as a barbeque

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Appendix A

mitt is, while the second functions to keep the head warm in

addition to adding an air of style, just as ready made or

tailored gloves do. The mere fact that both barbeque mitts

and gloves are worn on the hands simply does not support a

finding that consumers would associate these products with

a common source. See Recot, 214 F.3d at 1329. The board’s

finding that RHL’s and Shen’s goods are related is reversed.

Because THE RITZ KIDS is not similar to RITZ and gloves

are not related to barbeque mitts, we likewise reverse the

board’s decision sustaining Opposition No. 75,003.

Conclusion

Accordingly, we affirm the decision dismissing

Opposition Nos. 71,706, 73,756 and 74,517; and reverse the

decision sustaining Opposition Nos. 72,818 and 75,003.

Costs

No costs.

AFFIRM-IN-PART AND RE VERSE-IN-PART

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APPENDIX B — OPINION OF THE UNITED STATES

PATENT AND TRADEMARK OFFICE DATED

AUGUST 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

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 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.

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Appendix B

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 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

18a

Appendix B

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. | McCarthy on Trademarks and Unfair Competition,

Section 7:29 at page 7-68.7 (4th ed. 2002). An excellent

example of this principle is found in Jn 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.

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

2-—KS

19a

Appendix B

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 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. Jn 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

20a

Appendix B

“even when [the] goods or services are not competitive or

intrinsically related.” Jn 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.

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

2la

Appendix B

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 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

22a

Appendix B

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.

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.

23a

Appendix B

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 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.

24a

APPENDIX C — REQUEST FOR ORAL HEARING

OF THE UNITED STATES PATENT AND

TRADEMARK OFFICE

DATED OCTOBER 2, 2002

UNITED STATES PATENT AND

TRADEMARK OFFICE

Trademark Trial and Appeal Board

2900 Crystal Drive

Arlington, Virginia 22202-3513

Opposition No. 71,706

Opposition No. 72,817

Opposition No. 72,818

Opposition No. 73,756

Opposition No. 74,517

Opposition No. 74,778

Opposition No. 75,003

Shen Manufacturing Company, Incorporated

V.

Ritz Hotel Limited

Nancy L. Omelko, Interlocutory Attorney:

This case now comes up on the following motions:

a. Applicant’s contested motion (filed June 28, 2001)

for leave to take a testimonial deposition outside of

the scheduled testimony period or, in the alternative,

to extend applicant’s testimony period by thirty (30)

days;

25a

Appendix C

b. Opposer’s contested motion (filed July 2, 2001) to

amend notices of opposition pursuant to Rule 15(a)

Federal Rules of Civil Procedure 37 C.F.R. § 2.107;

c. Applicant’s contested motion (filed July 30, 2001)

to strike portions of opposer’s notice of reliance;

d. Applicant’s contested objection (filed August 14,

2001) of filing of reply brief submitted in support

of opposer’s motion to amend;

e. Opposer’s contested motion (filed February 12,

2002) to file an over-size reply brief or, in the

alternative, motion for extension of time to file a

substitute 25-page reply brief; and

f. Opposer’s request (filed February 19, 2002) for oral

hearing.

We turn first to Applicant’s motion for leave to take a

testimonial deposition outside of the scheduled testimony

period or, in the alternative, to extend applicant’s testimony

period by thirty days. Applicant contends that because of the

prior commitments of applicant’s president, who resides in

France, applicant’s president will not be available for a

testimonial deposition during applicant’s testimony period;

but applicant’s president will travel to the United States

twelve days after applicant’s testimony period is set to close

for such deposition.

In response, opposer argues that applicant refused to

make its president available for a testimony deposition notice

26a

Appendix C

by opposer for July 29, 1999; and that applicant refused to

produce the witness on the basis that applicant’s president

was a foreigner and not required to submit to federal rules.

Furthermore, the Board stated in its last order that “[f]urther

delay of this consolidated case by either party will be looked

on with disfavor.”

The Board has admonished the parties that it will not

permit further delays in this consolidated proceeding.

Applicant has provided no information that would convince

the Board that further delays are warranted. Accordingly,

applicant’s motion to take the testimony deposition of

applicant’s president outside applicant’s testimony period,

or to extend applicant’s testimony period, is denied.

We turn next to applicant’s objection to opposer’s filing

of a reply brief in support of opposer’s motion to amend.

We are construing this motion as a motion to strike opposer’s

reply brief in support of opposer’s motion to amend.

Applicant objects on the basis that opposer’s reply brief is

merely a reiteration of opposer’s moving brief. In response,

opposer argues that its reply brief “addresses and discloses

facts omitted by Applicant in its brief.”

We agree with opposer that its reply brief is more than a

mere reiteration of opposer’s moving brief. As such,

applicant’s motion to strike opposer’s reply brief in support

of opposer’s motion to amend is denied.

Accordingly, we have considered opposer’s arguments

set out in its reply brief for the purpose of deciding opposer’s

motion to amend its notice of opposition.

27a

Appendix C

We will now decide the merits of opposer’s motion to

amend its notice of opposition. Opposer has indicated that

the amended notice adds a registration for “substantially the

same goods.” In response, applicant argues that the motion

is untimely and prejudicial to applicant.

Specifically, applicant argues that the motion was filed

on the second-to-last day of opposer’s testimony period,

nearly two years after the registration in question was issued,

and more than two months after the Board issued its

resumption order.

In reply, opposer argues that the motion is timely and

that applicant will not be prejudiced because the proposed

amendment does not set forth a new or additional basis for

relief; but rather clarifies the matter pleaded. Opposer argues

that not only has applicant known about the registration in

question, but has also introduced and used the application at

a testimony deposition.

Although opposer has referred to its motion to amend as

one submitted under Fed. R. Civ. P. 15(a), it is apparent that

the motion should rather be made under Fed. R. Civ. P. 15(b),

which pertains to amendments to conform to the evidence.

When issues not raised by the pleadings are tried by the

express or implied consent of the parties, the Board will treat

them in all respects as if they had been raised in the pleadings.

Any amendment of the pleadings necessary to cause them to

conform to the evidence and to raise the unpleaded issues

may be made upon motion of any party at any time, even

after judgment, but failure to so amend will not affect the

28a

Appendix C

result of the trial of these issues. See, for example, Fed. R.

Civ. P. 15(b); Colony Foods, Inc. v. Sagemark, Ltd., 735 F.2d

1336, 222 USPQ 185 (Fed. Cir. 1984); P.A.B. Produits et

Appareils de Beaute v. Satinine Societa In Nome Collettivo

di S.A. e.M. Usollini, 570 F.2d 328, 196 USPQ 801 (CCPA

1978); Kasco Corp. v. Southern Saw Service Inc., 27 USPQ2d

1501 (TTAB 1993); and Beth A. Chapman, 77/PS FROM THE

TTAB: Amending Pleadings: The Right Stuff, 81 Trademark

Rep. 302 (1991).

Implied consent to the trial of an unpleaded issue can be

found only where the nonoffering party (1) raised no

objection to the introduction of evidence on the issue, and

(2) was fairly apprised that the evidence was being offered

in support of the issue. See, for example, Colony Foods, Inc.

v. Sagemark, Ltd., 735 F.2d 1336, 222 USPQ 185 (Fed. Cir.

1984).

In as much as the Board does not read trial testimony or

examine other trial evidence prior to final hearing, it is the

practice of the Board, when confronted with a Fed. R. Civ.

P. 15(b) motion to amend the pleadings to include an issue

assertedly tried by express or implied consent, to defer

determination of the motion until final hearing. See Devries

v. NCC Corp., 227 USPQ 705 (TTAB 1985).

Accordingly, opposer’s motion to amend its pleadings

is deferred until final hearing.

As for applicant’s motion to strike portions of opposer’s

notice of reliance filed on July 5, 2001, we note that under

29a

Appendix C

the heading of Miscellaneous Matters, in its order dated April

25, 2001, the Board stated, among other things:

Needless to say, opposer as plaintiff in the

oppositions, is responsible for organizing and

presenting its record for trial and to be clear what

has been or will be submitted as evidence in this

consolidated case.

Under “Notice of Reliance” dated July 5, 2001, opposer

submitted, among other things, “[flor the convenience of the

Board . . . a single submission of all testimony, exhibits used

thereat, and other evidence upon which Opposer relies in

these Opposition proceedings, now consolidated. Copies of

these documents are provided. . . .”

Applicant has moved to strike portions of this notice of

reliance, namely Exhibits 1 through 7 of opposer’s notice of

reliance dated July 5, 2001, arguing that these exhibits are

testimony depositions and, as such, are not proper subject

matter for a notice of reliance, but must be submitted in

accordance with Trademark Rule 2.123.

Opposer argues that the motion is meritless since the

testimony has already been introduced into the evidentiary

record prior to the filing date of opposer’s July 5, 2001 notice

of reliance; and that the July 5, 2001 submission which

contained the testimony depositions submitted as exhibits

1 through 7 of opposer’s three volume evidentiary

compilation were included for the convenience of the Board.

Applicant, in its reply, indicates that the key issue is whether

there is any procedural basis for opposer to file testimonial

deposition transcripts via a notice of reliance.

30a

Appendix C

Trademark Rule 2.125(c) requires that a copy of the

transcript and any exhibits thereto shall be filed with the

Board. The standard has been a flexible one and, as a practical

matter, has meant that a transcript and any exhibits thereto

are considered to have been promptly filed if they are

submitted at any time prior to the final hearing of the case

by the Board. See Hewlett-Packard Co. v. Human

Performance Measurement Inc., 23 USPQ2d 1390 (TTAB

1991).

Furthermore, we note that the prosecution histories

entered in the physical file for certain cases in this

consolidated proceeding indicate the following with respect

to opposer’s exhibits 1 through 7 of its notice of reliance:

1. Exhibit 1 has been entered in the prosecution history

of Opposition No. 71,706 as No. 13, showing a date

of June 23, 1986, for “testimony of plaintiff’;

2. Exhibit 2 has been entered in the prosecution history

of Opposition No. 72,817 as No. 17, showing a date

of September 8, 1986, for “testimony for plaintiff

of Howard Steidle”;

3. Exhibit 3 has been entered in the prosecution history

of Opposition No. 72,817 as No. 81, showing a date

of September 20, 1999, for “testimony of Robert

Steidle”;

4. Exhibit 4 has been entered in the prosecution history

of Opposition No. 73,756 as No. 52, showing a date

of September 20, 1999, for “continued oral dep of

Robert M. Steidle”’;

3la

Appendix C

5. Exhibit 5 has been entered in the prosecution history

of Opposition No. 74,517 as No. 58, showing a date

of September 20, 1999, for “testimony of Howard

Steidle”; and

6. Exhibit 6 has been entered in the prosecution history

of Opposition No. 72,817 as No. 59, showing a date

of September 20, 1999, for “testimony of Robert

Steidle”.

Opposer indicates that with respect to Exhibit 7,

“Applicant’s counsel attended Mr. Steidle’s September |,

1999 testimony deposition and cross-examined Mr. Steidle.

While the transcript of Mr. Steidle’s September 1, 1999

testimony deposition does not appear as an entry in the

prosecution history, Thomas G. Oakes Association confirms

and certifies that said transcript was timely mailed to the

Board for filing in opposition no. 71,706. Opposer has

attached the declaration of Thomas Oakes.

Inasmuch as opposer has established that Exhibits 1

through 7 were properly filed with the Board; and that the

documents filed under notice of reliance dated July 5, 2001

were merely resubmissions, applicant motion to strike

exhibits 1 through 7 is denied.

Turning now to opposer’s motion to file a reply brief

that exceeds the page limit set forth in Trademark Rule 2.128,

we note that the motion has been fully-briefed by the parties.

Further, the Board notes that applicant filed its brief on the

case after its time closed for filing its brief; and opposer filed

its reply brief after its time closed for filing its reply brief.

32a

Appendix C

Neither party has objected, and thus has waived any right to

object, to the late filing of these briefs and, therefore, they

are considered of record. Furthermore, at this late date, the

Board will not permit the filing of a motion to strike either

brief as untimely.

Opposer maintains that this consolidated proceeding is

complicated because it involves six different trademarks used

in connection with seven different identifications of goods.

Opposer further maintains that applicant, in its brief, included

fourteen pages devoted to evidentiary objections, which

opposer must also respond to.

In response, applicant argues that the although the

proceeding has been going on for a considerable length of

time, “both parties were more than able to discuss their

arguments in full in their principal briefs within the

prescribed page limits” and “[a]pplicant’s objections to some

of the evidence fall within a limited range of conceptual

categories and do not require a lengthy, point-by-point

response.”

Applicant further argues that opposer includes objections

to various items of evidence offered by applicant, which

opposer did not object to in opposer’s principal brief; and

opposer includes new issues, such as discussions of reverse

confusion, and that applicant did not file its application in

good faith. Applicant does not object to opposer’s motion to

file a substitute reply brief.

Opposer replies, to add, among other things, that

opposer’s evidentiary objections were properly made and

33a

Appendix C

timely proffered and opposer further contends that it introduced

no new issues, but merely rebutted applicant’s arguments in

applicant’s brief.

It is the view of the Board that opposer has not shown good

cause for exceeding the twenty-five page limit in its reply brief.

Accordingly, opposer’s motion to file a brief that exceeds the

page limit set forth in Trademark Rule 2.128 is denied; and

opposer is allowed until fifteen days from the date of this order

to file a reply brief that complies with Trademark Rule 2.128.

The request for oral hearing is noted. An oral hearing will be

scheduled in due course.

34a

APPENDIX D — ORDER OF THE UNITED STATES

COURT OF APPEALS FOR THE FEDERAL CIRCUIT

DENYING PETITION FOR REHEARING

DATED MARCH 8, 2005

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

04-1063, -1076

(Opposition Nos. 71,706, 72,817, 73,756,

74,517, 72,818, and 75,003)

SHEN MANUFACTURING CO., INC.,

Appellant,

v.

THE RITZ HOTEL LIMITED,

Cross Appellant.

ORDER

A combined petition for panel rehearing and for rehearing

en banc having been filed by the APPELLANT, and the

petition for rehearing having been referred to the panel that

heard the appeal, and thereafter the petition for rehearing en

banc having been referred to the circuit judges who are in

regular active service,

UPON CONSIDERATION THEREOF, it is

ORDERED that the petition for panel rehearing be, and

the same hereby is, DENIED and it is further

35a

Appendix D

ORDERED that the petition for rehearing en banc be, and

the same hereby is, DENIED.

The mandate of the court will issue on March 15, 2005.

FOR THE COURT,

s/ Jan Horbaly

Jan Horbaly

Clerk

Dated: March 8, 2005

36a

APPENDIX E — RELEVANT STATUTES

5 U.S.C. § 706

Section 706. Scope of review

To the extent necessary to decision and when

presented, the reviewing court shall decide all

relevant questions of law, interpret constitutional and

statutory provisions, and determine the meaning or

applicability of the terms of an agency action. The

reviewing court shall—

(1) compel agency action unlawfully

withheld or unreasonably delayed; and

(2) hold unlawful and set aside agency

action, findings, and conclusions found to

be—

(A) arbitrary, capricious, an abuse

of discretion, or otherwise not in

accordance with law;

(B) contrary to constitutional right,

power, privilege, or immunity;

(C) in excess of statutory

jurisdiction, authority, or limitations,

or short of statutory right;

(D) without observance of

procedure required by law;

37a

Appendix E

(E) unsupperted by substantial

evidence in a case subject to sections

556 and 557 of this title or otherwise

reviewed on the record of an agency

hearing provided by statute; or

(F) unwarranted by the facts to the

extent that the facts are subject to trial

de novo by the reviewing court.

In making the foregoing determinations, the court

shall review the whole record or those parts of it

cited by a party, and due account shall be taken of

the rule of prejudicial error.

15 U.S.C. § 1652

Section 1052. Trademarks registrable on principal register;

concurrent registration

No trademark by which the goods of the

applicant may be distinguished from the goods of

others shall be refused registration on the principal

register on account of its nature unless it—

(a) Consists of or comprises immoral,

deceptive, or scandalous matter; or matter which may

disparage or falsely suggest a connection with

persons, living or dead, institutions, beliefs, or

national symbols, or bring them into contempt, or

disrepute; or a geographical indication which, when

used on or in connection with wines or spirits,

identifies a place other than the origin of the goods

ee

38a

Appendix E

and is first used on or in connection with wines or

spirits by the applicant on or after one year after the

date on which the WTO Agreement (as defined in

section 3501(9) of Title 19) enters into force with

respect to the United States.

(b) Consists of or comprises the flag or coat of

arms or other insignia of the United States, or of

any State or municipality, or of any foreign nation,

or any simulation thereof.

(c) Consists of or comprises a name, portrait,

or signature identifying a particular living individual

except by his written consent, or the name, signature,

or portrait of a deceased President of the United

States during the life of his widow, if any, except by

the written consent of the widow.

(d) Consists of or comprises a mark which so

resembles a mark registered in the Patent and

Trademark Office, or a mark or trade name

previously used in the United States by another and

not abandoned, 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:

Provided, That if the Director determines that

confusion, mistake, or deception is not likely to result

from the continued use by more than one person of

the same or similar marks unuer conditions and

limitations as to the mode or place of use of the marks

or the goods on or in connection with which such

marks are used, concurrent registrations may be

39a

Appendix E

issued to such persons when they have become

entitled to use such marks as a result of their

concurrent lawful use in commerce prior to (1) the

earliest of the filing dates of the applications pending

or of any registration issued under this chapter;

(2) July 5, 1947, in the case of registrations

previously issued under the Act of March 3, 1881,

or February 20, 1905, and continuing in full force

and effect on that date; or (3) July 5, 1947, in the

case of applications filed under the Act of February

20, 1905, and registered after July 5, 1947. Use prior

to the filing date of any pending application or a

registration shall not be required when the owner of

such application or registration consents to the grant

of a concurrent registration to the applicant.

Concurrent registrations may also be issued by the

Director when a court of competent jurisdiction has

finally determined that more than one person is

entitled to use the same or similar marks in

commerce. In issuing concurrent registrations, the

Director shail prescribe conditions and limitations

as to the mode or place of use of the mark or the

goods on or in connection with which such mark is

registered to the respective persons.

(e) Consists of a mark which (1) when used on

or in connection with the goods of the applicant is

merely descriptive or deceptively misdescriptive of

them, (2) when used on or in connection with the

goods of the applicant is primarily geographically

descriptive of them, except as indications of regional

origin may be registrable under section 1054 of this

40a

Appendix E

title, (3) when used on or in connection with the

goods of the applicant is primarily geographically

deceptively misdescriptive of them, (4) is primarily

merely a surname, or (5) comprises any matter that,

as a whole, is functional.

(f) Except as expressly excluded in subsections

(a), (b), (c), (d), (e)(3), and (e)(5) of this section,

nothing in this chapter shall prevent the registration

of a mark used by the applicant which has become

distinctive of the applicant’s goods in commerce.

The Director may accept as prima facie evidence

that the mark has become distinctive, as used on or

in connection with the applicant’s goods in

commerce, proof of substantially exclusive and

continuous use thereof as a mark by the applicant in

commerce for the five years before the date on which

the claim of distinctiveness is made. Nothing in this

section shall prevent the registration of a mark which,

when used on or in connection with the goods of the

applicant, is primarily geographically deceptively

misdescriptive of them, and which became

distinctive of the applicant’s goods in commerce

before December 8, 1993.

A mark which when used would cause dilution

under section 1125(c) of this title may be refused

registration only pursuant to a proceeding brought

under section 1063 of this title. A registration for a

mark which when used would cause dilution under

section 1125(c) of this title may be canceled pursuant

to a proceeding brought under either section 1064

of this title or section 1092 of this title.

4la

Appendix E

15 U 4.C. § 1063

Section 1063. Opposition to registration

(a) Any person who believes that he would be

damaged by the registration of a mark upon the

principal register, including as a result of dilution

under section 1125(c) of this title, may, upon

payment of the prescribed fee, file an opposition in

the Patent and Trademark Office, stating the grounds

therefor, within thirty days after the publication under

subsection (a) of section 1062 of this title of the mark

sought to be registered. Upon written request prior

to the expiration of the thirty-day period, the time

for filing opposition shall be extended for an

additional thirty days, and further extensions of time

for filing opposition may be granted by the Director

for good cause when requested prior to the expiration

of an extension. The Director shall notify the

applicant of each extension of the time for filing

opposition. An opposition may be amended under

such conditions as may be prescribed by the Director.

(b) Unless registration is successfully

opposed—

(1) amark entitled to registration on the |

principal register based on an application

filed under section 1051(a) of this title or

pursuant to section 1126 of this title shall be

registered in the Patent and Trademark

Office, a certificate of registration shall be

<n

42a

Appendix E

issued, and notice of the registration shall

be published in the Official Gazette of the

Patent and Trademark Office; or

(2) a notice of allowance shall be issued

to the applicant if the applicant applied for

registration under section 1051(b) of this

title.

Opp.

No.

Table I

Summary of Oppositions

72,817

72,828

Applicant’s App/n. Sec.44 Sec.44 Date of

Applicant’s Mark Goods/Services Filing Date First

Date Use

71,706 PUTTING ON IC 24. US 42. 73/514,805 12/21/84 No - 05/01/84

THE RITZ Shower curtains.

JA000022.008

JA000022.151

CESAR RITZ IC 41.US 107. = 73/499,264 09/13/84 Yes 04/17/80

JA000022.171 Educational services;

JA000022.035 namely, conducting

courses of instruction

in cooking.

RITZ IC 41.US 107. 73/499,080 09/12/84 Yes 95/04/84

JA000022.060 Providing courses

JA000022.193

of instruction in

cooking, meal preparation,

and wine selection. -

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44a

Applicant’s

Opp. Applicant’s Mark Goods/Services

No

App/n. Sec.44 Sec.44 Date of

Filing Date _—‘ First

Date Use

73,756 RITZ PARIS IC 21. US 2, 73/518,941

RITZ HOTEL 29,4,30,33,40.

JA000022.083 Dinner plates of

JA000022.215 porcelain or

earthenware, cups, saucers

and serving pieces of porcelain,

hair combs, household sponges,

household brushes, steel wool,

household glassware; namely, tumblers,

goblets and juice glasses.

Appendix F

01/23/85 Yes 09/07/84

74,517. RITZ PARIS IC 27. US 20,42. 73/518,946 01/23/85 Yes 09/21/84 -

RITZHOTEL Carpets, rugs, floor

JA000022.104 mats and matting,

JA000022.233 linoleum for covering

existing floors, wall

coverings made of vinyl and plastic.

Applicant’s App/n. Sec.44 Sec.44 Date of

Opp. Applicant’s Mark Goods/Services Filing Date First

No. Date Use

75,003 THERITZKIDS IC33.US 47,49. 73/572,795 12/10/85 Yes 06/17/85 -

JA000022.125 Wine, champagne,

JA000022.269 brandy, cognac and

armagnac.

IC 25. US 39.

Ready made and tailored clothing;

namely, underwear, dresses, skirts, trousers,

shirts, neckties, belts, gloves, hats, tights, boots,

shoes and slippers for men, women and children,

and waterproof clothing; namely, men’s and women’s

raincoats, rain hats and galoshes.

IC 29. US 46.

Meat, poultry, meat extracts, fresh frozen fruits

and vegetables, fruit preserves, edible oils, pickles,

and frozen entrees consisting of meat, fish, poultry or game.

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48a

Appendix G

Appendix Table Ila

Shen’s RITZ Marks Under Common Law

RITZ RITZ and Design

RITZ PRO SERIES RITZ ESSENTIALS

RITZ STERLING RITZ ROYALE

RITZ SUPREME RITZ CLASSICS

RITZ DESIGN LINE (JA465-72)

Appendix G

49a

Appendix Table IIb

List of Shen’s Goods Non-Exhaustive) Sold in

U.S. Commerce Under its RITZ Marks

Sere under its RilZ Marks

(JA61, 70, 71, 72, 114, 115, 116, 121,

122, 123, 124, 456-494, 561)

appliance covers

anti-microbial cloth

aprons

bath towels

bathroom scrubbing cloths

beach towels

baker’s pad

baker’s mitt

baker’s glove

baker’s arm sleeve

baker’s towel

bar mop towels

cheese cloth

cook’s towel

chef’s hat

chef’s cap

chef’s jacket

chef’s skillet handle

cut resistant kitchen glove

cleaning cloths

dish cloths

dish towels

dust cloths

flour sack towels

hand towels

glass towels

ironing board covers

laundry bag

kitchen towels

napkins

oven mitts

place mats

polishing cloths

pot holders

scouring cloths

seat cushions

shower curtains

table cloths

tile cloths

tub mats

wash bag

wash cloths

window cloths

46a

Appendix F

Applicant’s

Opp. Applicant’s Mark Goods/Services

No.

App/n.

Filing

Date

Sec.44 Sec. 44 Date of

Date First

Use

IC 16. US 37, 38.

Writing paper and envelopes, pens, pencils,

engagement books, file folders, blotter holders

and playing cards.

IC 14. US 27.

Watches, clocks and parts thereof.

Table II

7 Shen’s Ritz Marks

MARK REGISTRATION NO. GOODS/SERVICES

RITZ and 1,360,630 IC 24. US 42. Dish cloths, kitchen towels,

design toaster covers, textile place mats, napkins,

JA000022.216 potholders and barbeque mitts.

RITZ and 125,512 US 4. Cleaning and polishing cloths,

design abrasive, detergent and polishing materials.

JA000022.161

RITZ and 1,231,981 IC 25. US 39. Aprons.

design

JA000022.159

RITZ 2,288,326 IC 22 and 24, US 1,2,7,19,22,42 and 50.

JA000022.157

Laundry bags and Clothespin bags. Dish cloths,

kitchen towels, bathroom towels, ironing board

pads and covers, toaster covers, place mats, napkins,

pot holders, oven mitts, and barbeque mitts.

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