IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

THE RITZ HOTEL, LTD.

 v.

SHEN MANUFACTURING CO., INC.

:

:

:

:

:

CIVIL ACTION

05-4730

MEMORANDUM

NORMA L. SHAPIRO, J. JUNE 25, 2009

Plaintiff The Ritz Hotel, Ltd. (“RHL”) filed for declaratory relief against Shen

Manufacturing Co., Inc. (“Shen”) for trademark infringement under the Lanham Trademark Act

(“Lanham Act”). Shen filed counterclaims against RHL for trademark infringement and fraud

under the Lanham Act together with supplemental state-law claims for fraud and trademark

violations. Shen’s Motion for Partial Summary Judgment (paper no. 46) as plaintiff on Count IV

of its amended counterclaim for trademark infringement, under § 32 of the Lanham Act, 15

U.S.C. § 1114, will be denied. 

I. FACTUAL BACKGROUND AND PROCEDURAL HISTORY

 In Count IV of its amended counterclaim, Shen accuses RHL of introducing goods

bearing RITZ marks into United States commerce in direct violation of Shen’s RITZ mark, 1

registered with the United States Patent and Trademark Office (“PTO”) as trademark registration

no. 2,288,326 (“the ‘326 mark”). Shen seeks an order permanently enjoining RHL from using its

In addition to United States trademark registration no. 1,980,522 (RITZ for cutlery), 1

RHL possesses numerous United States trademark registrations and common law marks, all

containing RITZ, e.g. RITZ PARIS, HOTEL RITZ, RITZ ESCOFFIER, etc. This memorandum

will refer collectively to RHL marks as its “RITZ marks.” 

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RITZ marks on table and bath linens, and an order denying RHL’s declaratory judgment claim.

Shen first applied for the ‘326 mark on March 18, 1994; the PTO issued the registration

on October 26, 1999. The ‘326 mark, a “standard character mark,” is registered for use on: 2

laundry bags, dish cloths, kitchen towels, bathroom towels, ironing board pads and covers,

toaster covers, place mats, napkins, pot holders, oven mitts, and barbecue mitts. Shen has used

its RITZ mark on table linens since 1982 and on bath linens since 1990. (Defendant Shen’s

Memorandum in Support of its Motion for Partial Summary Judgment (paper no. 47,

“Memorandum”), exh. 6, p. 6.) 

Many RHL sales in the United States, including bath linens (e.g., bathrobes) and table

linens (e.g., tablecloths), are by mail-order to former guests at its Paris hotel. Since 1984, RHL

has also had a United States office, sought licensees to manufacture and distribute RITZ goods,

and sold goods (crystal, silver, and gourmet food products) through retailers such as Saks Fifth

Avenue, Bergdorf Goodman, Marshall Field’s, and Nordstrom. Declaration of Carole Francesca,

(paper no. 55, “Francesca”), p. 4; see The Ritz Hotel Limited v. Ritz Closet Seat Corp., 17

U.S.P.Q. 2d 1466 (T.T.A.B. 1990). Fabricut, Inc., a different licensee, also markets RITZ marks

on luxury design fabrics to interior design specialists in the United States. (Francesca, p. 4.) 

Shen does not aver that RHL has sold bath and table linens bearing RITZ marks to consumers in

the United States by any means other than mail order, nor does it aver more than speculation of

The Trademark Manual of Examining Procedure (“TMEP”) uses the term“standard 2

character mark” to describe marks only composed of standard characters, i.e., words without

stylized typefaces or accompanying images. “Typed drawing,” also used to describe characteronly marks, is no longer the official name for that species of mark; the ‘326 mark was registered

as a typed drawing, but it would now be registered as a standard character mark. TMEP §

807.03. Many of RHL’s RITZ marks are also standard character marks. 

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any plans by RHL to do so in the future through directly competing channels of trade.

II. SUMMARY JUDGMENT

Before the court is Shen’s Motion for Partial Summary Judgment on Count IV of its

amended counterclaim for trademark infringement under § 32 of the Lanham Act, 15 U.S.C. §

1114(1). Shen claims that RHL has engaged and will continue to engage in trademark

infringement by using its RITZ marks on bath and table linens in United States commerce. 

3

A motion for summary judgment is granted if the pleadings, depositions, answers to

interrogatories, and admissions on file, together with the affidavits, if any, show that there is no

genuine issue as to any material fact and that the moving party is entitled to judgment as a matter

of law. Fed. R. Civ. P. 56(c). The moving party bears the burden of proving no genuine issue of

material fact exists. Matsushita v. Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574,

586 n. 10 (1986); Ideal Dairy Farms, Inc. v. John Labatt, Ltd., 90 F.3d 737, 743 (3d Cir. 1996). 

A party opposing summary judgment must do more than rest upon mere allegations, general

denials, or vague statements. See Trap Rock Indus. v. Local 825, Int’l Union of Operating

Eng’rs, 982 F.2d 889, 890 (3 Cir. 1992). There must be sufficient evidence favoring the rd

nonmoving party for a jury to return a verdict for that party. Anderson v. Liberty Lobby, Inc.,

477 U.S. 242, 249 (1986). 

Section 32, 15 U.S.C. § 1114 provides: 3

(1) Any person who shall, without the consent of the registrant—

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of

a registered mark in connection with the sale, offering for sale, distribution, or advertising

of any goods or services on or in connection with which such use is likely to cause

confusion, or to cause mistake, or to deceive . . . 

. . . . 

shall be liable in a civil action by the registrant for the remedies hereinafter provided.

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III. DISCUSSION

To prevail on its counterclaim for trademark infringement under the Lanham Act, Shen

must show that: 1) it owns the ‘326 RITZ mark; 2) the mark is valid and legally protectable; and

3) RHL use of its RITZ marks on bath and table linens is likely to create confusion with Shen’s

RITZ-branded goods associated with its ‘326 mark. Checkpoint Systems, Inc. v Check Point

Software Technologies, Inc., 269 F.3d 270, 279 (3 Cir. 2001). RHL does not contest either the rd

ownership or validity of Shen’s ‘326 mark with regard to its associated goods; the issue is

whether RHL’s use of its RITZ marks on table and bath linens is likely to create confusion with

Shen goods associated with the ‘326 mark. 

Shen seeks an order permanently enjoining RHL from using any of its RITZ marks on

bath and table linens in United States commerce. The factors to be considered in deciding

whether to grant a permanent injunction in Lanham Act trademark cases are: 1) whether Shen

prevails on the merits; 2) whether Shen would be irreparably harmed without the injunction; 3)

whether granting the injunction would harm RHL less than denying the injunction would harm

Shen; and 4) whether the injunction is in the public interest. Shields v. Zuccarini, 254 F.3d 476,

482 (3 Cir. 2001). If Shen can not prevail on its claim by demonstrating ongoing injury from rd

trademark infringement, it must at least show an imminent likelihood of harm from consumer

confusion. Speculation about possible future trademark infringement is not an adequate basis for

injunctive relief in an infringement action under the Lanham Act. 4 J. Thomas McCarthy,

McCarthy on Trademarks and Unfair Competition (“McCarthy”) § 30:10 (4 ed. 2009). th

Shen pleads “direct confusion” and “reverse confusion.”

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A. Direct Confusion

Shen alleges that RHL is seeking to cause confusion in the minds of potential Shen

consumers by marketing its own RITZ-branded linens in direct competition. According to Shen,

consumers who see RHL table and bath linens for sale in the United States and purchase them

will be confused and think they were manufactured by Shen or with Shen’s permission. 

“Direct confusion” (also known as “forward confusion”) occurs when a consumer sees a

non-registrant’s goods and believes that they are goods of the registrant. See Freedom Card, Inc. 4

v. JPMorgan Chase & Co., 432 F.3d 463, 470 (3 Cir. 2005). The non-registrant’s goods can be rd

in direct competition with the registrant’s goods if they are the same or highly similar, marketed

at similar price levels and through similar commercial channels. An issue in any trademark

infringement claim is whether the relevant consumer is likely to confuse the goods of the nonregistrant with those of the registrant. A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc.,

237 F.3d 198, 212-13 (3 Cir. 2000). rd

Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3 Cir. 1983), lists ten factors for rd

analyzing a direct confusion claim involving non-competing goods. A & H Sportswear applies

the Lapp factors to claims involving directly competing goods as well.

A district court should not be foreclosed from using any factors that it deems

helpful in analyzing whether a likelihood of confusion exists between given

products, whether or not they directly compete. Lapp’s suggestion that, for

competing goods, the court need rarely look beyond the mark itself may be an

Although RHL possesses common-law RITZ, RITZ PARIS, and HOTEL RITZ 4

trademarks which it has sought to use on table and bath linens, RHL does not currently possess a

United States trademark registration for goods similar to those sold by Shen under its ‘326 mark. 

RHL may have used its marks on table and bath linens longer than Shen has, but in analyzing a

Lanham Act claim for trademark infringement, RHL has no federal registration. RHL is a “nonregistrant” in analyzing Shen’s counterclaim for Lanham Act trademark infringement. 

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exercise in unjustified optimism; cases are often not easy, and courts will

frequently need help in sorting out the likelihood of confusion. . . . 

. . . . 

[We] conclude that the Lapp factors should be used for competing and for

noncompeting goods.

A & H Sportswear, 237 F.3d at 212-13 (internal quotations and citations omitted). 

The Lapp factors are:

1) the degree of similarity between the marks;

2) the strength of the registrant’s mark;

3) the price of the goods and other factors indicative of the care and attention expected of

the goods’ relevant consumers when making a purchase;

4) the length of time the marks have coexisted in the same market without evidence of

actual confusion arising;

5) the non-registrant’s intent in adopting the mark;

6) evidence of actual confusion, if any;

7) whether the goods are marketed through the same commercial channels and advertised

through the same media;

8) the extent to which the goods are targeted to the same potential consumers;

9) the relationship of the goods in the minds of a consumer, whether because of the nearidentity of the products, the similarity of function, or other factors;

10) other facts suggesting that a consumer might expect the registrant to manufacture

both products, or expect the registrant to manufacture a product in the non-registrant’s market, or

expect that the registrant is likely to expand into the non-registrant’s market. 

A & H Sportswear, 237 F.3d at 215 (citing Lapp, 721 F.2d at 463). 

1. Similarity

The marks both contain the word RITZ and are sufficiently similar to support a jury

finding that confusing the two is likely. When the dominant portions of the marks are the same

and the overall impression the marks create is the same, the marks are probably confusingly

similar. Checkpoint Systems, 269 F.3d at 281. The importance of the other Lapp factors

remains undiminished, but the similarity of the marks becomes more important in determining

likelihood of confusion when the goods are in direct competition, as Shen alleges in this case. A

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& H Sportswear, 237 F.3d at 214. 

However, the similarity of the Shen and RHL RITZ marks remains a question of material

fact. The RHL standard character marks which would be used on bath and table linens are all

compounds, e.g. RITZ PARIS, RITZ ESCOFFIER, HOTEL RITZ; the evidence before the court 5

does not demonstrate conclusively that consumers would ignore everything but the “Ritz” in any

of those marks and confuse them with Shen’s. Furthermore, even if RHL and Shen RITZ marks

were identical as a matter of law, the other Lapp factors do not support Shen’s infringement

claim beyond material dispute. 

2. Strength

Shen asserts that its RITZ mark is arbitrary for bath and table linens, strong, and subject

to a wide scope of protection from infringement from RHL RITZ marks. According to Shen, it is

indisputable that a consumer seeing Shen and RHL bath or table linens for sale next to each other

would think that both were made by Shen. Shen cites sales figures, advertising expenses, and a

trade magazine survey describing it as the third largest supplier of kitchen textiles in the United

States in 2004. (Defendant’s Reply to Plaintiff’s Opposition to Defendant’s Motion for Partial

Summary Judgment (paper no. 60, “Reply”), p. 10-11.) RHL asserts that Shen’s RITZ mark is

The only RHL RITZ “standard character” marks which are nothing but “Ritz” are

5

trademark registration nos. 1,980,522 (RITZ for cutlery) and 3,244,080 (RITZ for champagne). 

Shen does not aver any present efforts on RHL’s part to register any other standard character

marks formed only of the word “Ritz.”

RHL has twice applied for a RITZ PARIS standard character mark for bath linens. RHL

filed application no. 76/346,842, on December 10, 2001, for a RITZ PARIS mark for use on

“[b]ath linens, wash cloths and bath towels; terry cloth hand towels; wash gloves; table linens,

namely, tablecloths, napkins, table runners; hand towels made of textiles.” This application has

since been abandoned. RHL filed application no 78/291,147, on August 22, 2003, for a RITZ

PARIS mark for use on “[b]ath linen, namely, bath towels, bath sheets, hand towels, toweling

mitts.” This application is still live. 

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much weaker than its RITZ marks; it cites one expert opinion that if Shen’s mark is strong, it is

only strong for kitchen textiles, not bath and table linens. (Plaintiff’s Opposition to Defendant’s

Motion for Partial Summary Judgment (paper no. 50, “Opposition”), p. 8-9.)

The term “strength” applied to trademarks refers to the distinctiveness of the mark, its

tendency to identify the goods sold under the mark as emanating from a particular, although

possibly anonymous, source. McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1131 (2d

Cir. 1979). The more distinctive, unique and well-known the mark, the deeper is the impression

it creates upon the public consciousness and the greater the scope of protection from

encroachment to which it is entitled. Family Circle, Inc. v. Family Circle Associates, Inc., 332

F.2d 534, 540 (3d Cir. 1964). A mark’s strength is a function of its “conceptual strength” or

distinctiveness, and its “commercial strength” or marketplace recognition. A & H Sportswear,

237 F.3d at 221. These are fact-based determinations. Id.

Trademarks are classified in four categories according to degrees of conceptual strength: 

1) generic (e.g., DIET CHOCOLATE FUDGE SODA or ASPIRIN); 2) descriptive (e.g.,

SECURITY CENTER); 3) suggestive (e.g., COPPERTONE); and 4) arbitrary or fanciful (e.g.,

KODAK). A & H Sportswear, 237 F.3d at 221. A term is generic if it functions as the common

descriptive name of a class of products. A.J. Canfield Co. v. Honickman, 808 F.2d 291, 297 (3

rd

Cir. 1986). A descriptive term used as a mark conveys an immediate sense of the ingredients,

qualities, or characteristics of goods bearing that mark. Id. A suggestive mark requires

consumer imagination, thought, or perception to determine what the product is. Id.. An arbitrary

or fanciful mark bears no logical or suggestive relation to the actual characteristics of the goods

bearing the mark. Id.. at 296. 

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Generic marks receive no trademark protection; “indeed, they are not trademarks at all.” 

A & H Sportswear, 237 F.3d at 222 (citation omitted). Descriptive marks are only protected if

they have a “secondary meaning,” i.e., the general public views the mark as an identification not

only of the product but of its source. Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225,

1228 (3 Cir.1978). rd

A mark’s descriptiveness, suggestiveness, or arbitrariness is not dispositive of whether it

receives trademark protection. A & H Sportswear, 237 F.2d at 222. A suggestive, arbitrary or

fanciful mark can be weak if its distinctiveness becomes diluted through use on a wide variety of

goods so that the mark’s presence on a particular good does not suggest a single source to the

consumer. Id. (citing “Arrow” and “Esprit” as non-descriptive marks weakened by wide

circulation). If a consumer is aware that “Ritz” is used on a wide variety of products and services

from many sources, that consumer will be less likely to assume that two products, each bearing

RITZ marks, come from the same source. Id. at 223. 

The stronger two marks are by comparison to one another, the less likely a consumer is to

be confused. If both Shen and RHL are well known among the consuming public for RITZ

marks and any associations that might go with them, their goods are unlikely to be confused even

if their marks are almost identical. 

Assuming RITZ is neither generic nor descriptive without secondary meaning, it is not 6

indisputable on the record now before the court that Shen’s RITZ mark is so much stronger than

This assumption may be incorrect. RITZ as a term may be at least descriptive with 6

secondary meaning as used on crackers, tour buses and camera services, for example, but may

not have secondary meaning as used on either party’s goods. The parties must address whether

RITZ as a standard character format mark is protectable at all or has become generic and/or

descriptive without secondary meaning.

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Case 2:05-cv-04730-NS Document 104 Filed 06/25/09 Page 9 of 18
RHL’s that a consumer faced with RHL and Shen RITZ-branded towels and tablecloths side by

side would think that both of them were made by Shen. Shen’s advertising expenses, breadth of 7

sales, and reputation within its industry are important factors suggesting the ‘326 mark’s

strength, but are not conclusive on a consumer’s subjective awareness of the distinctiveness of

Shen’s mark in comparison with that of RHL. An expert opinion suggests that the Shen RITZ

mark is only strong for kitchen textiles. The actual strength of Shen and RHL RITZ marks

relative to each other on bath and table linens, in terms of their distinctiveness and commercial

recognition, is a question of material fact for a jury. 

3. The Price Points At Which, the Channels Through Which, and the

Consumers to Whom the Goods are Sold

The Ritz Hotel has long been associated worldwide with luxury; it seeks to market its

products to consumers attracted to its “image of consummate elegance and luxurious living.”

(Opposition, p. 12). When RHL seeks to market its goods through commercial channels (as

opposed to direct sales through mail order to former guests of the Ritz Paris Hotel), it prefers

higher priced merchants such as Saks Fifth Avenue and Bergdorf Goodman. (Opposition, p. 11;

Francesca, p. 4.) 

8

Shen’s RITZ mark is not a luxury brand. (Francesca, p. 4.) Typical channels of sales and

Products do not need to be sold side by side for a plaintiff to show a likelihood of 7

confusion as to their source; it is sufficient for the consumer to be aware of one of the marks

when presented with goods bearing the other. See Paco Rabanne Parfums, S.A. v. Norco

Enterprises, Inc., 680 F.2d 891, 893 (2 Cir. 1982). If the marks are close enough in strength nd

that the consumer would not confuse their source even when their goods were displayed side by

side, then the consumer is unlikely to be confused when seeing the goods individually.

RHL has also sold goods through Marshall Field’s and Nordstrom in the past. See The 8

Ritz Hotel Limited v. Ritz Closet Seat Corp., 17 U.S.P.Q. 2d 1466 (T.T.A.B. 1990). RHL does

not aver that it continues to sell goods through these stores.

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distribution for Shen table and bath linens are department stores, e.g., Bloomingdale’s, Macy’s,

Target, and Big Lots, or household goods stores, e.g., Sur La Table, Bed, Bath, and Beyond, and

the Kitchen Collection. (Memorandum, p. 20.) 

The attempt by RHL to have Bed, Bath, and Beyond sell its table and bath linens was a

major impetus for the present litigation. (Memorandum, p.6; id., ex. 1, p. 12.) RHL maintains

that is no longer seeking such an arrangement. Even had it entered a distribution agreement with

Bed, Bath, and Beyond, its goods would have been sold at much higher price levels than the

retailer normally sells similar goods. (Transcript of May 5, 2008 Hearing (paper no. 75), p. 77-

78). RHL also would not have permitted Bed, Bath, and Beyond to apply 20% discount coupons

to RHL products. Id. Shen insists that RHL will make concerted efforts in the future to compete

directly with Shen in the same stores and for the same consumers. (Reply, p. 11; see infra, part

III.A.5.)

Different price points make confusion less likely, because the parties’ goods will be

purchased by different classes of consumers. 4 McCarthy 24:52. If one party’s goods are sold

through top-tier stores while the other party’s goods are sold through mass market retailers, the

intended consumers are different and confusion is less likely. See e.g., Elizabeth Taylor

Cosmetics Co. v. Annick Goutal, S.A.R.L., 673 F. Supp. 1238, 1244 (S.D.N.Y. 1987). More

expensive goods are also less likely to be impulsive purchases. See Checkpoint Systems, 269

F.3d at 285. See also Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718

F.2d 1201, 1206 (1 Cir. 1983) (“[T]here is always less likelihood of confusion where goods are st

expensive and purchased after careful consideration.”); Beer Nuts, Inc. v. Clover Club Foods

Co., 711 F.2d 934, 941 (10th Cir.1983) (“Buyers typically exercise little care in the selection of

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inexpensive items that may be purchased on impulse.”).

Shen has not demonstrated that its goods bearing the ‘326 mark and RHL’s bath and table

linens are being marketed, or are likely to be marketed imminently, through the same stores, at

similar price levels, to the same consumers. RHL may have explored the possibility of marketing

its bath and table linens in the United States through one of Shen’s main retail channels, but it

avers no present plans for such an arrangement. RHL prices its goods at a higher level than

Shen, so that purchases of RHL goods may be less impulsive than purchases of Shen goods. 9

RHL and Shen channels of trade, pricing practices, and intended consumers do not conclusively

demonstrate that there is likely to be consumer confusion if their respective marks used on table

and bath linens.

4. The Marks’ Coexistence Without Confusion

Both the Ritz Hotel and the Ritzenthaler brand of kitchen textiles (whose RITZ mark is

now owned and marketed by Shen) predate the 20 century. See Shen Mfg. Co., Inc. v. Ritz th

Hotel, Ltd., 393 F.3d 1238, 1239-40 (Fed. Cir. 2004). Shen has used its RITZ mark on table

linens in the United States since 1982 and on bath linens since 1990. RHL may not have sold

either bath or table linens bearing its RITZ marks to United States consumers other than by direct

Shen presents numerous examples of the price points RHL typically targets for its goods: 9

€148 for a bathrobe; €38.29 for a chef’s apron; €252 for a satin bed comforter; €34.30 for a 24m

Ritz pink t-shirt; €22.90 for a pair of woman’s slippers; €22.90 for an Escoffier whisk key chain;

and €35 for a pink tablecloth. (Defendant’s Reply to Plaintiff’s Opposition to Defendant’s

Motion for Partial Summary Judgment (paper no.60), Ex. 63, RHL pp. 002658, 002682, 002699,

002768, 002771, 002801, and 002809, respectively.) These prices were for direct mail-order

sales by the Ritz Paris hotel boutique. 

These prices are in Euros; the Dollar to Euro exchange rate was $1.3764 on May 20,

2009. The Dollar’s value against the Euro has ranged over the last five years from $1.1679 on

November 18, 2005 to $1.5990 on July 5, 2008. “ECB: Euro exchange rates USD 20 May

2009", at http://www.ecb.int/stats/exchange/eurofxref/html/eurofxref-graph-usd.en.html .

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mail order, but RHL has sold other luxury goods in specialty stores in the United States,

including Bergdorf Goodman, Saks Fifth Avenue, Marshall Field’s, and Nordstrom, as early as

1984.

“If a defendant's product has been sold for an appreciable period of time without evidence

of actual confusion, one can infer that continued marketing will not lead to consumer confusion

in the future. The longer the challenged product has been in use, the stronger this inference will

be.” Versa Products Co., Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 205 (3 Cir.1995). Despite rd

the long coexistence of Shen and RHL RITZ marks, Shen has not yet presented evidence of any

actual confusion between its bath and table linens and those of RHL. RHL’s negotiations with

Bed, Bath, and Beyond did not result in an agreement and there is no evidence of any other prior

or pending agreements RHL might have with retailers in the United States who sell Shen’s bath

and table linens. 

RHL bath and table linens are not widely available in the United States, but that does not

mean the associational aura of RITZ marks has not coexisted with that of Shen’s in the minds of

potential consumers. RHL’s reputation for luxury and high-quality goods and service is known

to their sophisticated consumers in the United States, and it has sold goods bearing RITZ marks

through stores in the United States as early as 1984 in addition to its ongoing mail order sales

directly from its Paris hotel boutique. A jury may find that confusion is likely if the parties’

goods were to coexist in greater market proximity to each other than they have thus far, but the

record at present does not suggest that will be the case.

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5. RHL’s Intent in Adopting the RITZ Mark on Bath and Table Linens

and Other Facts Suggesting Possible Confusion

Shen claims that RHL has demonstrated its clear intent to cause confusion with regard to

Shen’s bath and table linens. According to Shen, RHL knew that Shen owned the ‘326 mark but

went ahead and applied to the PTO to register RITZ marks for use on both bath and kitchen

linens. RHL’s wrongful intent to confuse consumers was documented during its negotiations 10

with Bed, Bath, and Beyond, when RHL held “lengthy discussions . . . about an indemnity

regarding Shen’s rights.” (Reply, ex. 42.) Shen also asserts that RHL’s filing intent-to-use

applications for trademarks it never intended to use to foreclose Shen from filing its own

registrations, is also evidence of the wrongful intent of RHL. (Reply, p. 12.) 

RHL argues that: 1) its decision to market bath and table linens branded with its RITZ

marks was the natural outgrowth of its desire to capitalize on the Ritz Paris Hotel’s worldwide

association with luxury; and 2) it never purposefully intended to manipulate its mark to resemble

Shen’s. (Opposition, p. 11). 

The court’s essential inquiry in a Lanham trademark infringement case is whether

relevant consumers subjectively are likely to be confused about the source of particular goods. 

Proof of a non-registrant’s intent to cause consumer confusion is only relevant to this inquiry

when it supports an inference of likely confusion. See 4 McCarthy, § 23:110. The non-registrant

must intend to confuse the consumer as to the source of its goods; intent merely to copy the

registrant’s mark is not enough to support an inference of confusion. A & H Sportswear, 237

F.2d at 225-26. As Judge Jerome Frank wrote, “an intent to do a wrong cannot [by itself]

RHL has applied twice for a RITZ PARIS mark for use on bath linens. See supra n. 5. 10

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transmute a lawful into an unlawful act.” Mastercrafters Clock & Radio Co. v. Vacheron &

Constantin-LeCoultre Watches, Inc., 221 F.2d 464, 467 (2 Cir. 1955). nd

RHL does not acknowledge an intent to counterfeit Shen’s RITZ mark on its bath and

table linens in order to confuse consumers; RHL’s intent depends on issues of disputed material

fact. Evidence that RHL knew about Shen’s trademark rights when it negotiated with Bed, Bath,

and Beyond, together with Shen’s other allegations of RHL bad faith conduct before the PTO, if

substantiated, could convince a jury that RHL intended to cause consumer confusion. However,

Shen’s evidence at the summary judgment stage does not prove beyond dispute RHL intent to

cause consumer confusion.

6. Totality of Lapp Factors 

The evidence before the court on summary judgment does not show, beyond dispute, a

likelihood of direct confusion between RHL RITZ-branded bath and table linens with those

marketed and sold with Shen’s ‘326 RITZ mark. The marks all contain the word RITZ and may

be similar enough to confuse, but not much else about them is so clear cut. RHL and Shen

market their linens mostly to different consumers through different channels of trade. 

Consumers do not necessarily view their RITZ marks as indisputably linked, nor do their marks

automatically generate the same associations in consumers’ minds. Shen has not demonstrated,

beyond question, RHL’s deliberate intent to introduce RITZ-branded bath and table linens in

order to cause confusion among Shen’s potential consumers. Shen and RHL RITZ marks have

coexisted in United States commerce for a long time with little if any confusion between them. 

Shen may be able to prove direct confusion at trial, but it has not yet done so with the degree of

certainty necessary to prevail as counterclaim plaintiff on a motion for summary judgment.

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B. Reverse Confusion

In the alternative, Shen alleges “reverse confusion” trademark infringement by RHL, i.e.,

RHL, a non-registrant, is seeking to flood Shen retailers with its bath and table linens and to use

RITZ world renown and reputation for luxury to make Shen’s goods appear counterfeit. 

Trademark infringement by “reverse confusion” occurs when a larger, more powerful

junior registrant or non-registrant with a stronger mark floods the relevant market with its own

goods so that a potential consumer believes the less powerful or well-known senior registrant

goods are counterfeit. Freedom Card, 432 F.3d at 471-72. Shen claims RHL is seeking to wield

the greater strength and known association with luxury of its marks in order to overwhelm Shen’s

weaker but senior RITZ mark in the minds of consumers. 

Judge Becker, in A & H Sportswear, modifying the Lapp factors for direct confusion,

suggested these indicia of reverse confusion: 

1) the degree of similarity between the marks;

2) the strength of the two marks, weighing both a commercially strong non-registrant’s

mark and a conceptually strong registrant’s mark in the registrant’s favor;

3) the price of the goods and other factors indicative of the care and attention expected of

the goods’ relevant consumers when making a purchase;

4) the length of time the marks have coexisted in the same market without evidence of

actual confusion arising;

5) the non-registrant’s intent in adopting the mark;

6) evidence of actual confusion, if any;

7) whether the goods are marketed through the same commercial channels and advertised

through the same media;

8) the extent to which the goods are targeted to the same potential consumers;

9) the relationship of the goods in the minds of a consumer, whether because of the nearidentity of the products, the similarity of function, or other factors;

10) other facts suggesting that a consumer might expect the larger, more powerful nonregistrant to manufacture both products, or expect the non-registrant to manufacture a product in

the registrant’s market, or expect that the non-registrant is likely to expand into the registrant’s

market. 

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A & H Sportswear, 237 F.3d at 234. 

All but factors no. 2 and no. 10 are identical to Judge Becker’s list of factors suggesting

direct confusion. The change between the lists reflects the difference between analyses of direct

and reverse confusion: a reverse confusion analysis starts with the premise that the registrant and

its mark are weaker and focuses instead on the strength of the non-registrant’s mark. Checkpoint

Systems, 269 F.3d at 303. Direct confusion and reverse confusion analyses are otherwise

identical: a claim for direct confusion attenuates significantly if the two companies’ goods are

not marketed at the same price levels and through the same channels of trade, or if relevant

consumers do not view the companies’ goods as similar to each other; so does a claim for reverse

confusion. Id., 269 F.3d at 304.

Shen, as counterclaim plaintiff, is not entitled to summary judgment for reverse

confusion, because the strengths of Shen and RHL RITZ marks for table and bath linens are

questions of material fact. Even if Shen’s mark is weaker, it has not shown beyond material

dispute that table and bath linens associated with its ‘326 mark are in direct competition with

RHL RITZ-branded table and bath linens, are sold through the same commercial channels at

similar prices, or marketed to the same consumers. It matters little which is the stronger or

weaker mark if the same consumers do not see the parties’ goods sold together or associate the

parties’ goods with each other. 

Shen does not show any plans by RHL to sell its goods in the near future through any of

the retail channels Shen normally uses. Even if RHL were to enter a marketing arrangement with

Bed, Bad, and Beyond or another Shen retailer, Shen has not proven conclusively that likely

consumers would view its goods and its marks as those of RHL. Shen’s claim for reverse

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confusion, like its claim for direct confusion, is not amenable to resolution by summary

judgment.

IV. CONCLUSION

Questions of material fact prevent the court from ruling on Shen’s counterclaim against

RHL, for trademark infringement under § 32 of the Lanham Act, 15 U.S.C. § 1114(1), prior to

trial. The record before the court on summary judgment does not show beyond dispute that

relevant consumers are likely to confuse sources of table and bath linens branded with any of

RHL RITZ marks with goods sold by Shen under its ‘326 mark. If Shen prevails at trial by

proving ongoing or imminent trademark infringement, the court will consider the other three

factors determining whether to grant Shen permanent injunctive relief. For now, Shen’s Motion

for Partial Summary Judgment as plaintiff on Count IV of its amended counterclaim will be

denied. 

The RHL claim for declaratory relief and the following of Shen’s counterclaims remain

for trial: Count I, for cancellation of nine RHL United States trademark registrations; Count 11

IV, for infringement of Shen trademark registration no. 2,288,326, under § 32 of the Lanham

Act, 15 U.S.C. § 1114; and Count V, for unfair competition and infringement of Shen commonlaw marks, under § 43, 15 U.S.C. § 1125.12

See the court’s Order of March 18, 2009 (paper no. 79) for a list of remaining RHL 11

registrations against which Shen still has cancellation claims.

Counts II and VI, state law claims for fraud and trademark infringement, were severed

12

and stayed by the court’s Order of December 19, 2008 (paper no. 77). Count III was dismissed in

its entirety by the court’s Memorandum and Order of March 10, 2009 (paper no. 78) and by the

court’s Order of April 27, 2009 (paper no. 93).

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