The first round in a trademark dispute between two jewelers over the right to use the name "Windsor Jewelers" went to a WInston-Salem, North Carolina company. Judge Diaz entered a Temporary Restraining Order yesterday in Windsor Jewelers, Inc. v. Windsor Fine Jewelers, LLC, enjoining the Defendants from using the Windsor name for jewelry stores they had purchased in North Carolina.
Plaintiff Windsor has been operating in Winston-Salem for more than 25 years. It has no federal trademark rights, but does have a service mark registered under the North Carolina Trademark Registration Act. Plaintiff’s only bricks and mortar location is in Winston-Salem, but it sells jewelry throughout the state, including in the Charlotte area.
The Defendant operates jewelry stores in multiple locations, and says it is one of the "Top Ten Independent Jewelers In America." In its home state, Georgia, those stores are operated under the name "Windsor Jewelers." Defendant has used that name even longer than the North Carolina Plaintiff, but it apparently has no trademark registration.
The dispute arose when Defendants purchased three jewelry stores in Charlotte in December 2006 and proposed to operate them under the name "Windsor Fine Jewelers." Defendants had approached the Plaintiff and offered to buy its store as well. In the course of those discussions, Plaintiff says the Defendants admitted "that it would be a conflict to expand into the North Carolina market using the ‘Windsor’ name without Plaintiff’s permission or without" acquiring the Plaintiff.
When the acquisition discussions broke down, Defendants offered to pay $750,000 simply to buy Plaintiff’s tradename. Plaintiff refused, and Defendants proceeded to rename their new Charlotte stores as "Windsor Fine Jewelers."
The lawsuit, and the TRO, followed. The TRO says that:
Defendants’ intent to confuse the consuming public is clear, as (notwithstanding that they have used the name Windsor Jewelers in Georgia and South Carolina) they were aware of Plaintiff’s trademark registration in North Carolina when they selected Windsor Fine Jewelers as the name for their NC based stores, and indeed, attempted to purchase the Plaintiff’s business and mark before announcing that they intended to change the name of their NC-based stores to Windsor Fine Jewelers.
Op. ¶3. The TRO enjoins Defendants from use of the Windsor name in North Carolina, and also calls for all advertising materials which use the Windsor name in association with Defendants’ Charlotte stores to be destroyed.
The Order itself is very short, so you’ll have to look at the Briefs (linked below), if you would like to know more about the interesting state law trademark issues raised by this case. There’s a preliminary injunction hearing set for November 25th. If that goes forward, perhaps we’ll get a full opinion on some of the rarely addressed issues in the area of North Carolina trademark law.