TTAB explores familial relationship between parties in WINSTON case

In Harry Winston Inc v Bruce Winston Gem Corp (Opposition No 91153147, July 9 2014), the Trademark Trial and Appeal Board (TTAB) has issued an opinion refusing to register the trademark BRUCE WINSTON for use in connection with certain jewellery products in light of the previously registered trademarks WINSTON and HARRY WINSTON for jewellery. The decision was the culmination of a nearly 12-year-long opposition proceeding.

Opponents Harry Winston Inc and Harry Winston SA are the successors in interest to the jewellery business started by the late, well-known jeweller, Harry Winston. Applicant Bruce Winston Gem Corp is a jewellery company started by Harry Winston’s son, Bruce Winston. The applicant sought to register the mark BRUCE WINSTON in standard character form for “gemstones, precious and semi-precious, and fine jewellery, namely bracelets, brooches, chains, cufflinks, earrings, necklaces, pendants, pins, and tie tacks”. The opponents asserted a number of trademark registrations, as well as common law trademark rights for trademarks incorporating the terms 'Winston' and 'Harry Winston' for various goods, in particular “jewellery and polished diamonds” (WINSTON), and “jewellery; namely crowns, necklaces, sets of jewels, brooches, bracelets, earrings, cufflinks; horological and chronometric instruments; namely wrist-watches, clocks, watch bracelets, watch cases”.

The opponents alleged that registration of the BRUCE WINSTON mark for use on, or in connection with, the goods listed in the application was likely to give rise to confusion in the marketplace in violation of 15 USC §1052(d) (Trademark Act § 2(d)). In its defence, in addition to arguing that confusion was not likely, the applicant counterclaimed for cancellation (or partial cancellation) of several of the opponents’ pleaded trademark registrations on the ground that the registrations either had been obtained or maintained by way of fraud, or that they related to trademarks that had been abandoned by the opponents with no intent to resume use.

The TTAB tackled the applicant’s cancellation claims first, concluding that the applicant had failed to carry its burden for most of the attacked registrations. As to the abandonment allegations, the TTAB explained, citing 15 USC §1127, that a mark is considered abandoned when its use has been discontinued with no intent to resume use, and further clarified that non-use for three consecutive years amounts to prima facie evidence of abandonment. Where a prima facie case has been made, the trademark owner must produce evidence that the mark was either used during the statutory three-year period, or that there was an intention to resume use. 

With regard to the WINSTON trademark for jewellery, the TTAB concluded that, although the evidence of use of the trademark during the alleged abandonment period was “relatively sparse”, it was sufficient to rebut the applicant’s showing, which was “largely based on an inference to be drawn from a lack or scarcity of evidence”. Moreover, the TTAB found that “[e]ven if there were no clear evidence of use of WINSTON [during the relevant period]”, the evidence that was presented by the opponents was “highly inconsistent with a lack of intent to resume use”. Similarly, on the applicant’s challenge to the WINSTON mark for “polished diamonds” (which the TTAB viewed as a request for partial cancellation), the TTAB found that the applicant had failed to establish by a preponderance of the evidence that the opponents had ceased offering polished diamonds. The TTAB did, however, ultimately conclude that the opponents had stopped selling certain items identified in two of their registrations, and ordered that those registrations be partially cancelled (as to the unused goods only).

The applicant also sought cancellation of certain of the opponents' registrations on the basis of fraud, arguing that the opponents had made fraudulent statements to the Trademark Office in support of their efforts to renew the accused registrations. The TTAB emphasised that fraud occurs only when a registrant “knowingly makes a false, material representation with the intent to deceive the [Trademark Office]”, and added that, although “subjective intent to deceive may be difficult to prove, it is an indisputable element in the analysis”. In the context of the applicant’s counterclaims for cancellation on the basis of fraud, the TTAB found that the applicant had failed to demonstrate the “requisite subjective intent of [the opponents]' representatives to deceive the [Trademark Office]” in the filing of their renewal or maintenance papers. Accordingly, the applicant’s cancellation requests premised on fraud were denied.

Turning to the ultimate question of whether the proposed BRUCE WINSTON mark was likely to cause confusion with the WINSTON and HARRY WINSTON marks, the TTAB undertook an analysis of the standard list of factors originally set out in In re EI Du Pont de Nemours & Co, ultimately concluding that the BRUCE WINSTON mark, as used in connection with the goods identified in the application, “so resembles [the opponents]' earlier-used and registered marks as to be likely to cause confusion, mistake or deception as to the source of [the applicant]’s goods”, and therefore sustaining the opposition.

In terms of the parties’ respective goods – both as set forth in the pleaded registrations and the pending application, and in terms of what the parties actually sell – the TTAB found them to be “in part, identical or legally identical”, and concluded that the “similarity or dissimilarity of the goods” factor weighed in favour of finding a likelihood of confusion. Similarly, with regard to the channels of trade and customers, in addition to noting that the identity of the goods supported a presumption that the channels of trade and classes of customers will be the same, the TTAB found that this factor pointed to a likelihood of confusion because “there is no question that the parties’ likely customer and trade channels must be considered the same”.

The TTAB focused heavily on the fame of the opponents' marks, explaining that “[f]ame, if it exists, plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection”.  The TTAB traced the history of Mr Harry Winston’s development of the business that ultimately gave rise to the businesses of the opponents, reciting countless media references, numerous high-profile clients, his donation of the Hope Diamond to the Smithsonian Institution, and his association with celebrities in the motion picture and entertainment industries, ultimately concluding that the “extensive public relations efforts have successfully created... a very high profile among the general public having an interest in jewellery and fashion”. In light of this, the TTAB found that the opponents had "demonstrated that the word mark HARRY WINSTON is famous for purposes of analysis under Trademark Act § 2(d), in the field of jewellery”. Such fame weighed in favour of a finding of likelihood of confusion. 

Interestingly, the TTAB also explored the familial relationship between applicant Bruce Winston and the opponents’ business, explaining that “[b]ecause Harry Winston was a well-known figure and [the] mark HARRY WINSTON is famous in the field of jewellery, the relationship between Harry Winston and Bruce Winston [his son] creates a higher degree of public excitement than would a relationship that did not involve a public name.”  After examining the evidence of record, the TTAB concluded that the evidence:

“demonstrates a strong proclivity among the press and other third parties to spontaneously perceive and promote an association between [the applicant]’s founder and [the opponents]’ founder, and a connection between their two businesses, thus weighing in favour of finding a likelihood of confusion." 

Despite finding that several of the Du Pont factors pointed towards a likelihood of confusion, the TTAB held that other factors either pointed away from confusion or were neutral or in the overall analysis. Thus, the fact that the jewellery sold under the parties’ respective marks was high-end and expensive suggested that consumers would exhibit an “increased degree of care” when selecting such goods, thereby weighing against confusion. 

In terms of actual confusion, although there was no persuasive evidence of such confusion, the TTAB considered the factor neutral in terms of its analysis because despite many years of concurrent use and alleged sales by the applicant in the millions of dollars, the evidence suggested that the applicant’s business was rather small, selling very expensive jewellery items to only a “handful of customers”, and not investing significantly in advertising or promotion. In light of the limited exposure of the applicant’s business, the TTAB was not inclined to give too much weight to the absence of actual confusion, and held that factor to be neutral. Also viewed as neutral was the applicant’s allegation that there were other 'Winston' marks in the marketplace. 

After reviewing the evidence of these alleged third-party uses, the TTAB concluded that the opponents’ had, in fact, taken steps to police their trademarks and to the extend third parties remained, there was no evidence of record to substantiate the alleged scope of such third-party use.

The TTAB ultimately addressed the marks and their similarities or dissimilarities, focusing on the applicant’s mark BRUCE WINSTON vis-à-vis the asserted marks WINSTON and HARRY WINSTON. The TTAB recognised that the ultimate question was a comparison of the marks in their entireties – not necessarily a side-by-side comparison, but “whether the marks are sufficiently similar in terms of their commercial impression such that persons who will encounter the marks would be likely to assume a connection between the parties.”  The common 'Winston' element of the marks was plainly identical in terms of sound, appearance and commercial impression. However, in the TTAB’s eye, the addition of the 'Bruce' element did little to differentiate the marks because the mark BRUCE WINSTON “could well be interpreted as a more specific reference to a person or company that is otherwise identified by the designation WINSTON”.

In light of the substantial market recognition of the name Winston in the field of jewellery, the similarity between the marks BRUCE WINSTON and WINSTON was viewed as weighing heavily in favour of a finding of a likelihood of confusion. Similarly, although the BRUCE WINSTON mark was acknowledged as being clearly different from the mark HARRY WINSTON, because of the fame of the mark HARRY WINSTON in the field of jewellery, that mark “casts a long shadow which competitors must avoid”. The BRUCE WINSTON mark was simply too similar and that similarity weighed in favour of a finding of likely confusion.

Balancing the factors, the TTAB concluded that the use of the applicant’s BRUCE WINSTON mark in connection with the goods identified in the application would ultimately be likely to give rise to confusion, mistake or deception in the marketplace as to the source of the applicant’s goods. Accordingly, it sustained the opposition and refused registration on the grounds of likelihood of confusion under 15 USC § 1052(d).

Timothy J Kelly, Fitzpatrick Cella Harper & Scinto, New York