© 2015 The Texas Lawbook.
By Natalie Posgate
(Jan. 26) – Diamonds are a girl’s best friend, but a Dallas federal court observed last week that the precious stone could elicit quite the opposite effect between brothers trying to run their own jewelry businesses under their family name.
A jury of seven women and one man ruled Thursday that Dallas-based De Boulle Diamond & Jewelry, Inc. would suffer trademark infringement if the owner’s brother’s company, Boulle, Ltd., was granted trademarks because the similarity between the two company names would have confused customers.
The highly emotional trial created interesting drama between both the clients and their attorneys. It pitted two highly successful brothers against each other, as well as a few skilled Dallas attorneys who are former colleagues.
Phelan’s opposing counsel were Mark Werbner and Eric Pearson, who led the defense for Boulle, Ltd. and its owner, Jean-Raymond Boulle. Phelan and Werbner were previously law partners at Carrington Coleman. Werbner and Pearson were also previously law partners at Sayles Werbner. And Pearson started out his legal career at Baker Botts, where Phelan currently is.
Phelan said the biggest obstacle in the trial was the talent of Werbner and Pearson, “who kept directing creative roadblocks” that he “had to navigate around or jump over.
“They are both gifted lawyers who tried a good case,” Phelan said. “As it turns out, we had the better hand.”
Werbner said it is still too early for his client to decide his next step in the litigation.
“We are disappointed by the verdict, and it’s sad that the brothers’ dispute needed to be resolved at the courthouse,” said Werbner, a co-founding partner of Sayles Werbner in Dallas. “The litigation isn’t over, but hopefully the matter will be resolved at some future point.”
Boulle started out his diamond career at De Beers, Werbner said, and then later went into business in Dallas with his younger brother, Denis, in 1980. A few years later, they went their separate ways. Denis started De Boulle. Jean acquired significant wealth after discovering the world’s largest nickel deposit in the mid-1990s. He moved to Monaco and created an empire of multi-industry businesses, including diamonds and jewelry.
Boulle later decided that he wanted to bring his diamond and jewelry business to the U.S., so Boulle, Ltd. applied for trademarks in 2010 at the United States Patent and Trademark Office.
The USPTO denied most of them because it thought they would cause confusion with the De Boulle trademark, which was granted by the USPTO in 2006, court documents say.
Boulle, Ltd. appealed the USPTO’s decision in 2011 and sued De Boulle in May 2012. De Boulle countersued, but during summary judgment, U.S. District Judge Sam Lindsay realigned De Boulle as the plaintiff in the case. He dismissed Boulle, Ltd.’s affirmative claims and found that De Boulle’s registered trademark was protectable.
That left the jury to determine the likelihood of confusion between De Boulle and Boulle, Ltd’s four proposed trademarks, as well as state dilution claims.
The jury unanimously found likely confusion on all four trademarks and that the De Boulle mark was famous and would likely be diluted by Boulle, Ltd.’s proposed trademarks.
Judge Lindsay on a later date will decide on injunctive relief and whether attorneys’ fees should be awarded (since the case did not seek damages).
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