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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 litigation
ensued.
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 Friend
number 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 Pont
factor. 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
Hope
diamond, 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.
Even though “family relationship” is not a
du Pont factor, the TTAB discussed it in
a separate paragraph, noting that “[
t]
he record indicates that this direct family
relationship interacts with the fame of the mark HARRY WINSTON in a way that is
significant in this case.” The TTAB lastly reviewed last the first
du Pont factor, the similarity or
dissimilarity of the marks, and found the marks to be similar, taking into
account that it had found HARRY WINSTON to be a famous mark under the fifth
du Pont factor. The TTAB canceled the BRUCE
WINSTON mark.
"Winston tastes good like a cigarette should"...
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