No More (Trade Mark) Trouble With Harry (Winston)
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| Can I Borrow It For My Next Bar Association Meeting? |
I was perfectly content with my life until Jeremy suggested that I blog about the United States Patent and Trademark Office (TTAB) Harry Winston v. Bruce Winston case, which was decided on July 9. I bitterly realized reading it that IP attorneys are almost never offered grooming services and jewelry, not even on loan. But life must go on.
It would be unfit to bear petty feelings as this case is bigger than life. Litigation went on for more than ten years, the goods are sold with seven figure price tags, and clients are stars. To make matters even more interesting, the litigation is somewhat a family affair.
Harry Winston Inc. was founded by Mr. Harry Winston in 1932. It sells expensive diamonds and fine jewelry. Applicant‘s company was organized in 2002. Bruce Winston, Applicant’s chairman, is the son of Harry Winston.
Bruce Winston Gem Corp. (“Applicant”) filed an application in 2001 to register the mark BRUCE WINSTON in class 14 for jewelry. This did not fare well for Harry Winston, Inc., and its Swiss entity Harry Winston S.A., (“Opposers”) which opposed the registration of the mark under Section 2(d) of the Trademark Act, claiming that the BRUCE WINSTON mark so resembles trade marks WINSTON and HARRY WINSTON for jewelry that it would likely cause confusion. Lengthy litigationensued.
The TTAB applied the du Pont multi-factors, used by the Federal Circuit and the TTAB, when applying the likelihood of confusion test and found that Applicant’s mark was likely to cause confusion with Opposers’ marks.
The TTAB found that the goods were in part identical under the second du Pont factor, the similarity or dissimilarity of the goods. While both the application and the registrations broadly describe the goods as jewelry, the TTAB noted that Applicant and Opposers are known for “particularly large gemstones in very opulent settings that often feature large number of smaller precious gemstone” and that the “structural parts” of the jewels are often “encrusted with diamonds or others stones”(p.33).
No wonder that Marilyn Monroe purred “Talk to me Harry Winston, tell me all about it” in her Diamond’s Are a Girl’s Best Friendnumber in Gentlemen Prefer Blondes! You may remember that, in the movie, and also in the book by Anita Loos, Lorelei Lee needs to rely on the kindness of millionaires to expand her diamond collection. Well, today the price of such jewels still range from “a few thousand to a few hundred thousand and in some special cases, a few million dollars”(p.39). Applicant argued however, that Harry Winston’s customers sometimes bought jewelry on an impulse (oh the glamour!), and thus were not necessarily be considered to be sophisticated for the purpose of the fourth du Pont factor But the TTAB noted that while customers brought “an increased degree of care to the selection of the goods,” they are “not immune from trade mark confusion” (p.55). It’s nice to know that millionaires are consumers, just like us.
The TTBAB also found the third factor, the similarity or dissimilarity of the trade channels and the fourth factor, the conditions under which and the buyers to whom sales are made, to weigh in favor of Opposers. Applicant had presented evidence that it sold its goods only to wholesale customers, by referral or appointment, but this restriction was not reflected in its identification of goods. The TTAB cited the recent Stone Lion Capital Partners, LP v. Lion Capital LLP Federal Circuit case, where the court found that it is “proper… for the [TTAB] to focus on the application and registrations rather than on real-world conditions, because… the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application.”
The TTAB found the mark HARRY WINSTON to be famous in the field of jewelry under the Fifth du Pontfactor. The TTAB made no finding as to whether the WINSTON mark is famous, but noted that the record showed that the press often used WINSTON as an abbreviation for HARRY WINSTON. Harry Winston was certainly bigger than life. He bought several famous diamonds, such as the Star of the East, and the blue Hopediamond, which is on display a few miles from the TTAB at the Smithsonian Museum in Washington D.C. It was donated to the museum in 1958 by Harry Winston who sent it to the museum by registered mail in a simple brown envelope (“Please Deliver” indeed!). The TTAB noted that this donation had attracted quite a bit of publicity, and that, generally, the jeweler had been quite adept at marketing.
The Harry Winston company continues, to this day, to vigorously promote the brand, for instance by lending jewelry to movie stars attending the Academy Awards ceremony. It even sometimes donates jewelry to celebrities and also “arranges for grooming for celebrities who will appear at public events in connection with the HARRY WINSTON brand” (p. 45). The Marilyn Monroe song was submitted as evidence, along with “voluminous examples”of promotions and advertising.
