In 1954, Harry Winston told The New Yorker of the diamond business, “It’s a Cinderella world. It has everything! People! Drama! Romance! Precious stones! Speculation! Excitement! What more could you want?” Sixty years later, it has become overwhelmingly clear that he was at least right about the drama. Bruce Winston, one of the famous diamond seller’s sons, apparently has the entrepreneurial gene. The problem is that his desire to start a company is also married to his want to be in the business of fine jewelry. When he went to register “Bruce Winston” as a trademark for the sale of gemstones, bracelets, earrings, and other fine jewelry, that’s when the legal trouble began.
Bruce and his brother Ronald Winston took over Harry Winston, Inc. (HWI) in 1978, after their father died. Bruce was employed at HWI until 1991, when Ronald fired him. Seemingly not too fazed by being ousted by his brother, Bruce began selling jewelry under the name Bruce Winston Gem Corp. (BWG). And by the numbers, BWG was nothing to scoff at, either, as the company made sales in excess of $16 million in eight years, or about $2 million per year. (We know this is insignificant when compared to HWI’s sales, which exceeded $280 million in 2009, but it’s worth mentioning.) According to HWI, it had no real issue with Bruce using his name in connection with the sale of jewelry.
What was cause for concern, though, was when Bruce filed an “intent-to-use” trademark application in 2001 for the “Bruce Winston” mark in connection with the sale of “gemstones, precious and semi-precious, and fine jewelry; namely, bracelets, brooches, chains, cufflinks, earrings, necklaces, pendants, pins, rings, and tie tacks.” The New York-based jewelry giant felt that granting trademark registration to BWG could prove problematic if at a later point, Bruce assigned the trademark to another person or business that had malicious intentions.
Naturally, Bruce Winston brought suit in the United States District Court for the Southern District of New York seeking a declaratory judgment that BWG’s use of the trademarks Bruce Winston, Bruce Winston Gem, and BW in connection with the sale of jewelry does not infringe the Harry Winston and Winston trademarks. At the same time, an action at the Trademark Trial and Appeal Board (TTAB) had commenced concerning basically the same issue and it was suggested that Bruce’s intention with the lawsuit in the Southern District was to “derail” the TTAB proceeding. The Court agreed with that argument and granted HWI’s motion to dismiss in 2010. And thus, it was all left to the TTAB.
Finally, years after this whole story began, we bring good news for those of you who might have been holding your breath, or interesting news if you weren’t. The TTAB has at last given us a decision: when applying the likelihood of confusion test, it was found that the Bruce Winston mark is likely to cause confusion with HWI’s trademarks, and thus his request to register the mark was denied.
Several factors were considered by the TTAB in making its decision. First up was the similarity or dissimilarity of the goods. The TTAB found that the goods “are, in part, identical or legally identical,” noting that both BWG and HWI are known for “particularly large gemstones in very opulent settings that often feature large number of smaller precious gemstones.”
The TTAB also found that the channels of trade factor and the classes of customers who purchased the goods factor weighed in favor of HWI. BWG presented evidence that it sold its goods only to wholesale customers, by referral or appointment, but such a restriction was not reflected in the trademark application. The TTAB cited a Federal Circuit case in which it was found that it was “properfor the Board to focus on the identification of goods set forth in the application ‘rather than on real-world conditions.’” Essentially, the TTAB assumed that BWG used all the normal channels of trade for fine jewelry and sold to all available purchasers for those goods, just like HWI.
Next, the TTAB considered the fame factor, and found the Harry Winston mark to be famous (obviously!) in the field of jewelry. Publicity, the Hope Diamond, gems in museums, celebrities wearing Harry Winston goods, press notices, and references in songs and movies to Harry Winston were some of the things offered by HWI to illustrate fame. 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 abbreviated reference to the Harry Winston brand.
Contrary to the norm, the TTAB also considered the family relationship between Harry and Bruce, even though this is not typically a likelihood of confusion factor. The TTAB noted, “The evidence shows that the father-son relationship between Harry Winston and Bruce Winston has been discussed in the press, whether accurately or inaccurately.” It was further pointed out, “The record demonstrates the public’s interest in Bruce’s relationship to Harry. Press reports often use the name Bruce Winston to create a link to Harry Winston and HWI, even when there is no business affiliation.” The point of this discussion was to establish that there is often some hint of association when discussing Bruce and Harry Winston, meaning that BWG could easily be similarly linked to HWI.
The rest of the 71-page ruling included focus on the following: how careful consumers are when selecting the goods in question (very careful for the most part, despite claims that expensive gems are sometimes “impulse” purchases); whether there is actual confusion (there was not enough evidence presented to establish this); and the similarity of the parties’ marks in terms of appearance, sound, meaning, and overall commercial impression (though not identical, both marks obviously include the Winston surname and thus this factor weighs in favor of finding a likelihood of confusion).
Nothing says familial discord like a court battle pitting one family member against another - or, in this case, one family member against the family business. It’s certainly clear that the cards are stacked against Bruce Winston at the moment, but that doesn’t mean the matter is closed. Time will tell if he continues to fight for his trademarks.
JENNIFER WILLIAMS is a recent law school graduate who writes about fashion, the legal avenues available for protecting it, and the ways in which the laws are falling short. She is currently awaiting admission to the NY State Bar. For more from Jennifer, follow her on Twitter.