RITZ Case ends 20-year stay in the courts
In Shen Manufacturing Co Inc v The Ritz Hotel Limited, the US Court of Appeals for the Federal Circuit has ended two decades of litigation between the parties in relation to variations of a RITZ mark. The court upheld the defendant's appeal of a US Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) decision involving five consolidated oppositions brought by the plaintiff.
Shen Manufacturing Co Inc holds a number of US trademark registrations for the mark RITZ for various household cleaning and kitchen items, such as aprons, place mats and napkins. Shen claims to have used RITZ in connection with these items since 1918.
In 1984 and 1985 The Ritz Hotel Limited filed a number of trademark applications at the USPTO, including:
- PUTTING ON THE RITZ for shower curtains;
- RITZ for cooking classes;
- RITZ PARIS PARIS RITZ HOTEL (and design) for dinnerware;
- RITZ PARIS PARIS RITZ HOTEL (and design) for carpets and other floor coverings; and
- THE RITZ KIDS for various goods, including gloves.
The USPTO approved each of these marks for publication. Shen opposed all five applications in 1985 and 1986.
Following protracted litigation lasting almost two decades, the TTAB issued a decision in August 2003 in which it found in favour of The Ritz in the applications for PUTTING ON THE RITZ and the two applications for RITZ PARIS PARIS RITZ HOTEL (and design). For the opposition against the mark RITZ for cooking classes, the TTAB held that cooking classes and kitchen textiles are related as textiles are needed for cooking classes. Accordingly, it found a likelihood of confusion and denied registration to The Ritz. For the opposition against the mark THE RITZ KIDS, the TTAB determined that "gloves" covered in the application were similar to kitchen mitts and refused registration.
Shen appealed the TTAB's decision as to the three applications that were allowed, and The Ritz appealed as to the two applications that were denied.
In finding in favour of The Ritz, the Federal Circuit noted that, when comparing marks to identify the likelihood of confusion, they should not be dissected. According to the court, the parties' marks were simply not that similar, with the exception of The Ritz's application for RITZ for cooking, and the goods identified in the applications were not related to the goods offered by Shen under its RITZ mark. With respect to The Ritz's application for RITZ for cooking classes, the court stated that cooking courses and kitchen textiles were not so related to one another to cause confusion; the fact that two products may be used together does not justify a finding of relatedness. It also concluded that Shen's RITZ marks were not famous or well known.
Although this Federal Circuit decision concludes the parties' litigation before the USPTO regarding these five applications, Shen has five pending oppositions at the TTAB against other trademark applications filed by The Ritz.
Leigh Ann Lindquist, Sughrue Mion PLLC, Washington DC
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