Tuesday, July 15, 2014

Precedential No. 31: Fame of HARRY WINSTON Mark Crushes Son's BRUCE WINSTON Application for Jewelry

In a 71-page opinion, the Board sustained a Section 2(d) opposition to registration of the mark BRUCE WINSTON for gemstones and fine jewelry, finding the mark likely to cause confusion with the mark HARRY WINSTON and the registered mark WINSTON for jewelry. The strength of the WINSTON mark and the fame of the HARRY WINSTON mark, coupled with the overlap in goods, carried opposer to this gem of a victory. This summary will not discuss every facet of the decision, but rather will reflect only the high points. Harry Winston, Inc. and Harry Winston S.A. v. Bruce Winston Gem Corp., 111 USPQ2d 1419 (TTAB 2014) [precedential].

Marilyn Monroe in "Gentlemen Prefer Blondes"

Mr. Harry Winston, the founder of opposer Harry Winston, Inc., was a master at promotion of both himself and his jewelry business. In 1947, Cosmopolitan magazine called him the "King of Diamonds," in 1975 he was dubbed the "Wizard of Rocks," and in 1978, "Ace of Diamonds." He purchased the Hope Diamond and donated it to the Smithsonian Institution, an act that has generated enormous publicity. He loaned his jewelry to many celebrities for public appearances, including Lady Diana and the wife of the Shah of Iran. Marilyn Monroe sang the song, "Diamonds Are a Girl's Best Friend" in the 1953 movie "Gentlemen Prefer Blondes," a song that included the lyric, "Talk to me, Harry Winston, tell me all about it," a line that Winston continued to use in his advertising.

Opposers submitted voluminous examples of advertising and promotional materials. Its sales figures and advertising expenditures were "extremely substantial." In short, through extensive public relations efforts, the mark HARRY WINSTON has become famous in the field of jewelry, for purposes of the Board's likelihood-of-confusion analysis.

Although the evidence did not focus on the mark WINSTON by itself, the record demonstrated that the press often uses WINSTON as an abbreviated reference to the HARRY WINSTON brand, leading the Board to conclude that WINSTON is a very well-known source indicator in the jewelry field.

Applicant's chairman, Bruce Winston, is the son of Harry Winston. That relationship, the Board found, "interacts with the fame of the mark HARRY WINSTON in a way that is significant in this case." The press has incessantly promoted the connection between the two, and the evidence demonstrated that the public "may draw conclusions, not always entirely accurate, regarding the association between the members of the Winston family on one hand and Harry Winston and opposers' business on the other." The Board considered this evidence, under the 13th du Pont factor, as demonstrating "a strong proclivity among the press and other third parties to spontaneously perceive and promote an association between applicant's founder and opposers' founder and a connection between their two businesses."

The Board perceptively noted that BRUCE WINSTON is not identical to either WINSTON or HARRY WINSTON, but each mark comprises or consists of the word WINSTON. Comparing the applied-for mark to the registered mark WINSTON, the Board observed that the addition of a given name to a distinctive surname "has limited distinctive capability." The mark BRUCE WINSTON might well be seen as a "more specific reference to a person or company that is otherwise identified by the designation WINSTON." [E.g., JOSE GASPAR GOLD found confusingly similar to GASPAR'S ALE]. In view of the strength of opposers' WINSTON mark, the Board found that this first du Pont factor weighted heavily in favor of opposers.

As to the marks BRUCE WINSTON and HARRY WINSTON, the Board pointed out once again that when identical goods are involved, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. Moreover, a famous mark like HARRY WINSTON "casts a long shadow which competitors must avoid." The Board consequently found that the two marks are sufficiently similar that this factor weighs in favor of opposers.

Balancing the relevant du Pont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog note:  Hat tip to FOBs Joe Dreitler and Mary True, counsel for opposer.

Text Copyright John L. Welch 2014.


Post a Comment

<< Home