Harry Winston's Son Loses Trademark Battle In Court

(IDEX Online) – Harry Winston Inc. has won a long-running trademark dispute involving the son of the company's founder over marks used to market gems and fine jewelry after an administrative panel ruled that using the son's name, Bruce Winston, to promote rival goods would confuse customers.

The Trademark Trial and Appeal Board denied Bruce Winston Gem Corp.'s bid to register the mark “Bruce Winston” for bracelets, gemstones, earrings and other fine jewelry and rejected the company's counterclaims seeking to cancel Harry Winston's trademarks, Law360 reported.

The 71-page ruling is the latest decision in a battle over the Winston marks going back more than a decade. Bruce Winston filed an application to register his name as a trademark for use on jewelry in 2001, the year before his company was formed, according to the ruling.

The decision examines the history of Harry Winston and his jewelry store and analyzes the popularity of the company's brand. In assessing the strength of the company's marks, the TTAB described Winston as a “skilled promoter” and said it was clear that the "Winston" mark is "very well known in the jewelry industry.”

In support of its finding, the TTAB cited the song “Diamonds Are a Girl's Best Friend” which appeared in the 1953 film “Gentlemen Prefer Blondes” starring actress Marilyn Monroe. During the song, Monroe sings, “Talk to me, Harry Winston, tell me all about it,” a line that the company has used in promotional material in the decades since the song was released, the ruling said.

The TTAB also said the family relationship between father and son was significant in the outcome of the case. The panel said Bruce Winston acknowledged that his father's name is part of his own public identity. When asked what being Bruce Winston meant to him in relation to his business, Winston answered, “Son of a famous jeweler,” according to the ruling.

“Because Harry Winston was a well-known figure and [his company’s] mark ‘Harry Winston’ is famous in the field of jewelry, the relationship between Harry Winston and Bruce Winston creates a higher degree of public excitement than would a relationship that did not involve a famous name,” the TTAB said.

The TTAB also rejected Bruce Winston's bid to cancel Harry Winston's marks. Bruce Winston claimed Harry Winston fraudulently obtained and maintained the marks through misleading filings with the U.S. Patent and Trademark Office. The panel said Bruce Winston did not cite evidence showing that the original registration or subsequent filings were obtained fraudulently.

Harry Winston started his jewelry business in 1932 in New York and ran the business up until his death in 1978. At the time of his death, an obituary published in the New York Times and cited in the decision described Winston as “a world leader in [the] diamond trade".