The Ritz Carlton Hotel Company, L.L.C.v.Robert B. Wilcox

Trademark Trial and Appeal Board

Jan 15, 2008

No. 91161969 (T.T.A.B. Jan. 15, 2008)

Oral Hearing: Mailed:
October 16, 2007 January 15, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The Ritz-Carlton Hotel Company, L.L.C.
v.
Robert B. Wilcox
_____

Opposition No. 91161969
to application Serial No. 76553029
filed on October 21, 2003
_____

Douglas R. Bush of Arent Fox Kintner Plotkin & Kahn, PLLC
for The Ritz-Carlton Hotel Company, L.L.C.

Richard D. Clarke for Robert B. Wilcox.
______

Before Quinn, Bucher and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Robert B. Wilcox, seeks registration of the
mark RITZ (in typed form) for services identified in the
application as “art galleries offering original and limited
edition fine art, namely, paintings, photographs, sculptures
and prints” in International Class 35.1

1 Serial No. 76553029, filed October 21, 2003, alleging a bona
fide intention to use the mark in commerce under Section 1(b) of
the Trademark Act, 15 U.S.C. §1051(b).
THIS OPINION IS NOT A
PRECEDENT OF THE
T.T.A.B.
Opposition No. 91161969
2

Opposer, The Ritz-Carlton Hotel Company, L.L.C., has
opposed registration of applicant’s mark on the grounds that
applicant’s mark RITZ proposed to be used for art gallery
services so resembles opposer’s previously used and
registered marks “containing RITZ, including RITZ, RITZ-
CARLTON, THE RITZ-CARLTON CLUB, THE RITZ KIDS, PUTTIN’ ON
THE RITZ, and THE RITZ-CARLTON LODGE,” used in connection
with various goods and services, “including fine art related
goods and services such as hosting and sponsoring fine art
exhibitions, leisure packages featuring tours of fine art
collections, art tour guide books, and the sale of fine art
and related goods; hotel, resort, restaurant, cabaret,
cocktail lounge and bar services; recreational sports
services; casino facilities; fund raising services;
clothing; and paper goods and printed matter” that it is
“likely to cause confusion, mistake, and deception as to the
source or origin of Applicant’s services and will injure and
damage Opposer and the goodwill and reputation symbolized by
the RITZ Marks” under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d). Notice of Opposition ¶¶ 1, 9. In
addition, opposer asserts a claim of dilution under Section
43(c) of the Trademark Act and a claim of false suggestion
of a connection under Section 2(a) of the Trademark Act.
Opposition No. 91161969
3
Applicant has filed an answer by which it has denied
the salient allegations.
The evidence of record consists of the pleadings
herein, the file of the opposed application, and trial
testimony with accompanying exhibits taken by opposer of
Julia Gajcak, opposer’s vice president of marketing and
communications, and Derek Andrew Flint, one of opposer’s
hotel managers and former senior corporate director of
rooms. In addition, opposer submitted the following
material under a notice of reliance: certified copies of
fourteen of opposer’s pleaded registrations, which show that
the registrations are subsisting and owned by opposer;
applicant’s responses to opposer’s interrogatories and
requests for admissions; excerpts from pages of various
printed publications showing, inter alia, third-party use of
RITZ to identify opposer and associate opposer with fine
art; and website printouts submitted upon stipulation
showing, inter alia, opposer’s association with art.
Applicant did not take any testimony or file a notice of
reliance.2 An oral hearing was held at which both parties
were represented by counsel.

2 Applicant’s complaint that “opposer’s attorneys engaged in a
methodical ‘delay and discourage’ campaign and resisted every
effort by Applicant to gather any type of evidence” and that
“Applicant’s evidence is not submitted because every effort to
gather evidence was effectively blocked by Opposer” (Br. p 9-10)
is not supported. There is nothing in the prosecution history of
Opposition No. 91161969
4
PRIORITY AND LIKELIHOOD OF CONFUSION
As noted above, opposer submitted fourteen
registrations and we summarize seven of them below:
Registration No. 1094823 for the mark RITZ-CARLTON
(in typed form) for “hotel services” in
International Class 42, issued on June 27, 1978,
renewed;

Registration No. 1535834 for the mark for
“hotel and restaurant services, including grill
rooms, snack bars, bars, cabarets and tea room
services” in International Class 42, issued on
April 18, 1989, Section 8 accepted and Section 15
acknowledged;

Registration No. 1905234 for the mark
for “cleansers: namely, skin soaps, hair shampoo
and conditioner” in International Class 3, “metal
key rings” in International Class 6,
“paperweights, stationery, underarm portfolios,
letter pads, folders holding notepaper pads, paper
shopping bags, playing cards” in International
Class 16, “passport cases, all-purpose sports
bags, golf umbrellas, luggage tags, men’s and
women’s valet bags, tote bags, duffle bags,
luggage canvas bags” in International Class 18,
crystal boxes for decoration, drinking glasses,
coffee mugs, coasters” in International Class 21,
“bath linens” in International Class 24,
“clothing, namely, visors, golf caps, robes for
use by and sale to hotel guests, golf shirts,
tennis shirts, shorts, t-shirts, sweat shirts” in
International Class 25, “toys, namely, stuffed
animals, golf balls” in International Class 28,
“processed foods, namely, jam jellies” in
International Class 29, “staple foods, namely,
candy, honey, sugar, ketchup, mustard” in
International Class 30, “matches” in International
Class 34, “entertainment services in the nature of
cabarets” in International Class 41, and “hotel

this case that would indicate any improper behavior by opposer’s
attorneys, nor did applicant at any time file a motion to compel.
Opposition No. 91161969
5
services, restaurant services, restaurant services
offering a grill room, snack bar, and tea room,
cocktail lounge and bar services” in International
Class 42, issued on July 18, 1995, renewed;

Registration No. 2298901 for the mark RITZ-CARLTON
(in typed form) for “apartment, condominium and
real estate management services; real estate
brokerage services and real estate time-sharing
services” in International Class 36, issued on
December 7, 1999, Section 8 accepted and Section
15 acknowledged;

Registration No. 2446217 for the mark PUTTIN’ ON
THE RITZ (in typed form) for “charitable
fundraising services” in International Class 36,
issued on April 24, 2001;

Registration No. 2869095 for the mark RITZ (in
typed form) for “providing gaming services
accessed via local and worldwide computer
networks, personal digital assistants, and
electronic computer databases” in International
Class 41, issued on August 3, 2004; and

Registration No. 2934838 for the mark RITZ (in
typed form) for “hotel services, restaurant,
catering, bar and lounge services, resort lodging
services, provision of general purpose facilities
for meetings, conferences and exhibitions,
provision of banquet and social function
facilities for special occasions, and reservation
services for hotel accommodations” in
International Class 42, issued on March 22, 2005.

Because opposer has made the pleaded registrations
summarized above properly of record, opposer has established
its standing to oppose registration of applicant’s mark and
its priority is not in issue. See King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
In addition, opposer has established common law rights
in the marks RITZ-CARLTON, RITZ-CARLTON with lion logo
Opposition No. 91161969
6
design and RITZ for use in connection with hotel services
prior to the filing date of applicant’s application (Gajcak
Test. pp. 11-12 and 15).3 Further, in connection with the
hotel services opposer has also established that since prior
to applicant’s filing date opposer offers for sale in its
RITZ-CARLTON gift stores and RITZ-CARLTON catalogues various
types of fine art (Flint Test. pp. 13, 26, 35), offers art
classes as part of its hotels’ amenities (Flint Test. 33-
34), hosts art exhibitions and auctions in its hotels (Flint
Test. 33, 90-91); and has third-party art galleries in some
of its hotels (Flint Test. pp. 55-56). Finally, in
connection with the hotel services, opposer also displays
art throughout its hotels, including pieces that are for
sale (see, e.g., Flint Test. p. 26), provides art tours of
its own hotels (Flint Test. 30, 71-72), and offers hotel
packages that include access to local galleries and museums
(Flint Test. 31, 33).
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Two
key considerations are the similarities between the marks

3 We refer to the registered and common law marks collectively as
Opposition No. 91161969
7
and the similarities between the goods. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Another important factor, when presented, is the fame of the
mark. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694
(Fed. Cir. 2005).
We begin with the factor of fame because fame “plays a
‘dominant’ role in the process of balancing the du Pont
factors.” Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1897 (Fed. Cir. 2000). “[T]he fame of a mark may be
measured indirectly, among other things, 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.” Bose Corp. v. QSC
Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002).
The record shows that opposer owns several
registrations for RITZ-CARLTON, RITZ-CARLTON with lion logo
design and RITZ for a wide variety of goods and services,
and the marks have been continuously registered since 1978,
1995 and 1989 respectively. Opposer advertises in widely
circulated publications such as The Wall Street Journal, The

“the RITZ marks.”
Opposition No. 91161969
8
New York Times, Conde Nast, Town & Country and Vanity Fair.
Gajcak Test. p. 44. Its website receives 1.4 million
visitors a month. Gajcak Test. p. 57. Ms. Gajcak testified
that the Luxury Institute in New York recognized RITZ-
CARLTON as being the most prestigious luxury brand in the
United States. Gajcak Test. pp. 30-33, Exh. Nos. 9, 10.
Opposer has also received several awards, including Mobil
Five-Star awards, AAA Five-Diamond awards and the Malcolm
Baldrige National Quality Award. Gajcak Test. pp. 37-38,
Exh. No. 11. Opposer spends approximately $9 million
annually on advertising. Its annual worldwide revenues are
approximately $3 billion, the majority of which is generated
from activities within the United States. Gajcak Test. p.
59. In 2006, approximately 3 million room nights were
booked in the United States. Gajcak Test. p. 59.
Opposer’s RITZ-CARLTON marks (with and without the lion
logo) appear on a variety of merchandise, including robes,
soap, tea, pasta, shampoo, body lotion, polo shirts,
baseball caps, etc. Flint Test. Exh. Nos. 9-13. With
regard to use of the term RITZ by itself, the most
pronounced use is by the public to identify opposer. Flint
Test. p. 25 Gajcak Test. p. 13. There are many examples in
the record of the press and third-parties referring to
opposer as “the RITZ.” See Exh. No. 30 (“The luxe life
comes to a congested and somewhat seedy corner of South
Opposition No. 91161969
9
Beach in the form of this beachfront, lushly landscaped
Ritz-Carlton. Debuting in the fall of 2003, this Ritz has
restored the landmark Morris Lapidus-designed 1950s DiLido
Hotel to its original Art Moderne style and filled it with
the hotel’s signature five-star service.”
www.southfloridaceo.com) and Exh. No. 18 (“On Feb. 5, social
and civil leaders gathered at the South Beach Ritz for a
gala evening of elegance...” The Miami Herald, February 14,
2005; “The view from the Ritz of New York Harbor, with the
Statue of Liberty and city lights twinkling against a
winter’s night sky...” The Record, February 13, 2005; “Would
she! Cowie and Oprah’s film crew descended on the Ritz on
Friday.” The Plain Dealer, February 1, 2005; “The trip from
the Ritz to the airport was an adventure Saturday
afternoon.” The Atlanta Journal-Constitution, January 30,
2005; “‘The invitations went out very late, and people
couldn’t find rooms at the Ritz or the Four Seasons.’
Cilione said.” The Palm Beach Post, January 30, 2005; “‘We
thought, What about giving tech support that’s as welcoming
as the bar at the Ritz?’” New York Times, January 27, 2005;
“There’s just something special about the Ritz (the old one)
and you know it the second you walk in the door. There’s
tradition. There’s history. There’s elegance.” Boston
Herald, January 27, 2005; “Frankly, I don’t know if I’ll
ever be able to make up for the time I fed my sister Lauren
Opposition No. 91161969
10
swamp water, so I took my suburban mom to tea at the Ritz.”
The Boston Globe, May 8, 2003; “Casino MonteLago, which held
a soft opening for a group at the Ritz last week and hosts
its grand opening Thursday, expects to draw tourists from
the Ritz-Carlton as well as visitors to other Lake Las Vegas
amenities such as golf courses, upscale boutiques and a
nearby condo complex.” Las Vegas Sun, May 7, 2003; and “Ritz
deal threatens to unravel...The Ritz developers have asked
the Baltimore Circuit Court to order the owner of the
planned hotel site to honor a previous agreement to sell
them the land.” The Baltimore Sun, May 9, 2003).
Based on the record, we find that the evidence
demonstrates that the RITZ marks are famous for, at a
minimum, hotel services. Thus, given the wide latitude of
protection afforded famous marks, we proceed with our
analysis keeping this in mind. See Kenner Parker Toys Inc.
v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992). Further, the broad scope of protection
afforded to famous marks “applies with equal force when
evaluating the likelihood of confusion between marks that
are used with goods [or services] that are not closely
related.” Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1897 (Fed. Cir. 2000).
We next consider the similarity or dissimilarity of the
marks when compared in their entireties in terms of
Opposition No. 91161969
11
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following
principles. The test, under this du Pont factor, is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods
offered under the respective marks is likely to result.
In comparing opposer’s marks RITZ, RITZ-CARLTON and
RITZ-CARLTON with lion logo design, with applicant’s RITZ
mark within the above-noted legal parameters and taking into
account the fame of opposer’s marks, we find the points of
similarity outweigh the dissimilarities. ESSO Standard Oil
Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161, 163 (D.C.
Cir. 1956).
Opposer’s mark RITZ is identical to applicant’s mark
RITZ. In addition, in considering the similarity of
appearance with the stylized RITZ mark, because applicant’s
mark is in standard character form, we must consider the
possibility of it being presented in any reasonable form of
display including the manner in which opposer’s mark is
displayed. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1847-48 (Fed. Cir. 2000).
With regard to the RITZ-CARLTON and RITZ-CARLTON and
design marks, the term RITZ is the first and more memorable
Opposition No. 91161969
12
literal portion of both of these marks. As shown by the
evidence, RITZ-CARLTON is frequently shortened to RITZ by
the public. See In re National Data Corp., 732 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of
the marks in their entireties. Indeed, this type of
analysis appears to be unavoidable”). RITZ is also
registered and used separately by opposer and in connection
with other wording (PUTTIN’ ON THE RITZ and THE RITZ KIDS).
CARLTON is never used in this manner. Thus, the addition of
the term CARLTON is not sufficient to distinguish them from
applicant’s RITZ mark. Moreover, although there is no
general rule as to whether a word or a design dominates a
particular mark, given the common use of the word RITZ in
calling for the services we find that the term RITZ also
dominates over the lion logo design. Thus, we accord the
term RITZ greater weight in determining the likelihood of
confusion as between these marks. Ceccato v. Manifattura
Land Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192 (TTAB
1994). In doing so, we find that applicant’s RITZ mark is
similar in appearance, sound, connotation and commercial
impression to opposer’s RITZ-CARLTON marks.
Opposition No. 91161969
13
Thus, we find that the overall commercial impression
engendered by each of these marks is such that the
similarities outweigh the differences. Taking into
consideration the fame of opposer’s RITZ marks, we conclude
that the parties’ marks are identical or substantially
similar. Therefore, the factor of the similarity of the
marks weighs in favor of opposer.
Applicant’s argument that the term RITZ “has acquired
usage as a common noun by the general public [and] [f]or
this reason, the word ‘ritz’ alone may very well be
generic,” (br. p. 11) is not well taken. We first note that
applicant has not filed a counterclaim against any of the
registrations, thus, this argument constitutes an
impermissible collateral attack at least insofar as the
registered marks are concerned. Moreover, there is no
evidence in the record to support this argument with respect
to any of opposer’s marks, whether registered or the subject
of common law use. While we may take judicial notice of the
dictionary definition of the term RITZ, this is irrelevant
to the consideration of whether RITZ is generic of any of
opposer’s goods and services. Alberto-Culver Co. v. Helene
Curtis Ind., Inc., 167 USPQ 365, 370 (TTAB 1970) (“The fact
that a word or term may be found in a dictionary does not
indicate that the word is lacking in trademark significance
Opposition No. 91161969
14
unless the dictionary meaning of the word is descriptive of
the goods in connection with which it is used.”)
Similarly, applicant’s unsupported reference to third-
party uses and registration of the word RITZ is not
persuasive. There is no evidence in the record of third-
party use or registration. Factual statements made in a
party’s brief on the case can be given no consideration
unless they are supported by evidence properly introduced at
trial. TBMP §704.06(b) (2nd ed. rev. 2004). Respondent’s
mere references in its brief is not sufficient to make the
registrations of record. Id. at 704.07. Further, there is
no testimony or other evidence of third–party use, or the
possible effect, if any, of such purported uses on potential
consumers. In view thereof, this factor is neutral.
With regard to the services, although opposer provides
a variety of goods and services, opposer’s primary service
consists of hotel services. However, while applicant’s
gallery services are obviously different, opposer, in
conjunction with its hotel services, provides art-related
services and serves essentially in many instances as a
gallery itself.
A gallery is defined as “ a. A building, an
institution, or a room for the exhibition of artistic work.
B. An establishment that displays and sells works of art.”
The American Heritage Dictionary of the English Language
Opposition No. 91161969
15
(4th ed. 2006).4 Opposer displays art throughout its hotels
and in some cases the paintings or sculpture are for sale.
See, e.g., Flint Test. p. 34. The following testimony is
representative of some of opposer’s art-related activities.
Q. And are there some restaurants – I think you
mentioned one, but just so the record is clear, is
the art displayed in some of those restaurants
offered for sale as well?
A. Yes. Specifically my hotel, Ritz-Carlton,
Singapore, Marina del Ray, and Shanghai does it as
well.
Q. Okay. Does Ritz-Carlton itself sell any kind
of art through its catalog or gift shops or
website?
A. Yeah. Through our retail catalogs. I mean,
there’s Luxury tier items that would be considered
art.
Q. Okay. Can you think of any examples of art
that sold through the company?
A. Faberge eggs, you know, those sort of things.
Q. Okay.
A. We’ve got glassware, bowls, music boxes,
frames. I mean, all sorts of stuff.
Q. And this would be in addition to the paintings
you’ve described on the walls and that sort of
thing?
A. Correct.
Q. Do you have any – can you give us any sense as
to the price range that these various art items
are sold for?
A. Yeah. I mean, they range from a few dollars
to thousands and thousands of dollars. I mean, I
know that we have some sculptures that are in our
gift shop and on display in our lobby that goes
for thousands of dollars.
Q. Okay. Do you sell –
A. Thousands and thousands of dollars.
Q. Okay. So I take it some of these works of
art, the paintings, the sculptures, the other

4 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Opposition No. 91161969
16
things you described, are they originals as
opposed to prints or copies?
A. No, they’re mostly original.
Q. Okay. And again, why do you do this? Why do
you offer art for sale in the hotels?
A. Because I think it’s part of who we are. I
mean, again, I go about – I talk about
expectations. When people walk into Ritz-Carlton,
they expect, these days, to see artwork, to be
able to purchase artwork.

Flint Test. pp. 34-36.

As opposer states “Ritz-Carlton need not operate a
stand-alone art gallery in a ‘gallery setting’ that sells
fine art exclusively in order to be deemed to be using its
marks in connection with the advertising, promoting, and
sale of art gallery services. In essence, RITZ-CARLTON
hotels are art galleries. Fine art is sold at RITZ-CARLTON
properties by Ritz-Carlton and others, including art
featured on the hotel walls and in gift shops, and Ritz-
Carlton uses the RITZ marks to promote the services Ritz-
Carlton offers at those properties.” Reply Br. pp. 12-13.
Contrary to applicant’s contention, opposer’s
activities sufficiently connect its marks with the services
of selling fine art in a gallery setting. Thus, under the
circumstances of this case, we find that opposer’s hotel
services are sufficiently related to applicant’s proposed
gallery services such that use of a similar mark would
likely cause confusion. While hotel services and gallery
services are quite different, in this case, they have been
shown to be, at a minimum, complementary. In addition,
Opposition No. 91161969
17
opposer’s other art-related services provided under its RITZ
marks, including retail sales of fine art, art classes,
hosting of art exhibitions and auctions are related to
gallery services.
Considering the channels of trade and class of
purchasers, there are no restrictions in opposer’s
registrations or the subject application, and the evidence
of record shows that art galleries are found in hotels or
they are located in close proximity to hotels, art galleries
and hotels advertise in the same publications, and hotels
offer packages that include access to art galleries. Thus,
with regard to opposer’s registrations we must presume that
applicant’s and opposer’s services will be sold in the same
channels of trade and will be bought by the same classes of
purchasers. See Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); and In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994).
In addition, with regard to opposer’s common law use,
the record shows that opposer has art galleries in its
hotels, operates in close proximity to galleries, offers
packages that include access to galleries and advertises in
the same magazines as galleries. In fact, applicant has
admitted that:
Opposition No. 91161969
18
Art galleries sometimes market their goods and
services by providing brochures and information to
hotels or concierges employed by hotels;

Hotels market their services by arranging packages
for guests featuring art gallery tours or art
exhibitions;

Among the prospective purchasers of the services
you intend to offer under the mark RITZ are hotel
guests, including guests of RITZ-CARLTON hotels;
and

Guests staying at RITZ-CARLTON are typically more
likely to purchase art than guests staying at less
expensive hotels.

Exh. No. 17 Requests for Admission Nos. 11-14.

Therefore, the record also supports a finding, based on
opposer’s common law use, that the services travel in the
same channels of trade and share the same class of
customers.
In view of the above, the du Pont factors of the
similarity of the services, the channels of trade and class
of purchasers favor a finding of likelihood of confusion.
With regard to the conditions of sale, applicant argues
that the parties’ potential customers would be sophisticated
and would exercise care in the purchasing decision. As
noted above, applicant has not introduced evidence to
support a finding that all “fine art” is expensive and
purchased with care. There is testimony to the effect that
the “art items” sold by opposer in its gift shops and
through its catalogs range in price from a few dollars to
thousands of dollars, including original works of art, for
Opposition No. 91161969
19
example sculpture. Flint Test. pp. 334-36. However,
applicant’s identification is limited to only “original” and
“limited edition” art which would indicate a more expensive
category than “a few dollars.” The purchase of such items
would presumably be done with a higher degree of care than a
print purchased in a gift shop. However, due to the fame of
opposer’s mark and its connection to fine art, including
original works, through opposer’s various hotel and retail
services and hosting of galleries, exhibitions and art
auctions, to the extent this factor favors applicant, it is
not sufficient to outweigh the other factors.
Thus, considering the marks in their entireties, we
conclude that the evidence of record as it pertains to the
relevant du Pont factors supports a finding of a likelihood
of confusion as between applicant’s RITZ mark and opposer’s
RITZ marks, such that registration of applicant’s mark is
barred under Trademark Act Section 2(d). To the extent we
have any doubt, we must resolve that doubt in favor of
opposer, the prior user and registrant. See Hard Rock Cafe
International (USA) Inc. v. Thomas D. Elsea, 56 USPQ2d 1504,
1514 (TTAB 2000) and W.R. Grace & Co. v. Herbert J. Meyer
Industries, Inc., 190 USPQ 308, 311 (TTAB 1976).
In view of our decision on likelihood of confusion we
do not reach the claims brought under Sections 2(a) and
43(c).
Opposition No. 91161969
20
Decision: The opposition is sustained as to opposer’s
claim of priority and likelihood of confusion under Section
2(d) of the Trademark Act.