Harry Winston Inc. has prevailed in its opposition to registration of BRUCE WINSTON, the name of Harry Winston’s son.
Harry Winston is one of the most well-known names in fine jewelry. For over 80 years Harry Winston, Inc. has used the marks WINSTON and HARRY WINSTON in connection with jewelry, and owns several registrations incorporating those marks. Harry’s son Bruce Winston is the chairman of the corporation, Bruce Winston Gem Corp., which was formed in 2002 (long after Harry Winston’s death in 1978). Both companies sell high-end jewelry with particularly large gemstones, large numbers of gemstones, or both. The jewelry sells for a few thousand dollars, a few hundred thousand dollars and, in some cases, a few million dollars.
The Board found the WINSTON and HARRY WINSTON marks to be famous in the jewelry industry for purposes of analyzing likelihood of confusion. The Board noted numerous examples of the notoriety of the HARRY WINSTON brand for jewelry. For example, in the 1953 movie “Gentlemen Prefer Blondes,” Marilyn Monroe sang the song “Diamonds Are a Girl’s Best Friend” which includes the lyric “Talk to me, Harry Winston, tell me all about it.” Harry Winston himself was very well known in the industry, having donated the Hope diamond to the Smithsonian Institution. One of the rooms in the Smithsonian’s National Museum of Natural History is named “The Harry Winston Gallery.” Beginning in the 1940’s, Harry Winston would lend his jewelry to celebrities to wear at red carpet events such as the Oscars, and continued to do so for decades, resulting in significant publicity. Even Princess Diana was photographed wearing HARRY WINSTON jewelry.
In addition, the Board found that the evidence demonstrated 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.” Bruce Winston even acknowledged that to him, being Bruce Winston means being the son of a famous jeweler. This factor also strongly supported a finding of likelihood of confusion.
Harry Winston Inc. et al., v. Bruce Winston Gem Corp., Opposition No. 91153147 (TTAB July 9, 2014) [Precedential].