Harry Winston’s son loses bid to use Winston name
July 17, 2014
New York--The son of famed diamantaire Harry Winston has lost a 13-year-long court battle to register the name Bruce Winston as a trademark for his own line of high-end jewelry, court papers show.
Following oral arguments that took place in August 2013, the U.S. Trademark Trial and Appeal Board (TTAB) ruled July 9 in favor of Harry Winston Inc. and Harry Winston S.A., which sought to block Bruce Winston from registering the mark “Bruce Winston” for his business. He started his New York-based jewelry company, Bruce Winston Gem Corp., in 2002 and has been seeking to register Bruce Winston since 2001.
In its ruling, the TTAB stated that it would not allow Bruce Winston to register his mark because the Harry Winston name is so well known in the marketplace and the two companies’ products are very similar, which likely would result in confusion among consumers.
Bruce Winston’s attorney did not respond to request seeking comment on the ruling.
Court papers mention specifically a number of the accomplishments of Harry Winston himself, who “attracted for himself and for his business substantial attention from the press,” noting that the company’s name recognition continues to this day. Among those cited is the fact that a gems room in the Smithsonian bears his name and that actress Marilyn Monroe sang about him in the “legendary” song Diamonds are a Girl’s Best Friend from the movie Gentlemen Prefer Blondes (1953), crooning “Talk to me, Harry Winston, tell me all about it.”
The TTAB also dismissed Bruce Winston’s attempts to cancel certain Harry Winston Inc. trademarks and his claim that the company has allowed other members of the Winston family to use their names to market and sell jewelry.
One specific case cited is that of Charles Winston, who is the son of Harry Winston’s nephew, Jerry.
Since 1997, Charles Winston has been appearing on home shopping networks selling sterling silver jewelry set with cubic zirconia. He also sells the Charles W. Moissanite Signature Collection on Amazon.com.
However, in its ruling the TTAB notes that Harry Winston Inc. has “imposed restraints upon him,” with a federal lawsuit against three of his businesses resulting in a “stringent” consent judgment and permanent injunction. Court papers state that Harry Winston has “taken meaningful steps to control and neutralize the impact of the Charles Winston mark and to ensure that its use will be limited to the non-competing fields of inexpensive costume jewelry.”
According to court papers, Harry Winston started his company as Harry H. Winston Jewels Inc. in 1932 and changed its name to Harry Winston Inc. in 1936.
After he died in 1978, ownership of the company was shared by his son Ronald and a trust for the benefit of his other son, Bruce. Between 2000 and 2006-2008, the company gradually was sold off to Aber Diamond Corp., which became Harry Winston Diamond Corp.
Harry Winston Diamond Corp. sold the Harry Winston name and retail stores to the Swatch Group in 2013.