Outstanding Question Exists on Whether ‘Tiffany' Partially Genericized for Setting

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By Anandashankar Mazumdar  

Jan. 21 --There is a genuine factual dispute over whether the venerable “Tiffany” trademark might have been at least partially genericized with respect to a type of engagement ring setting, the U.S. District Court for the Southern District of New York ruled Jan. 17 (Tiffany & Co. v. Costco Wholesale Corp., 2014 BL 13746, S.D.N.Y., No. 1:13-cv-01041-LTS-DCF, 1/17/14).

Denying a motion for summary judgment or judgment on the pleadings, the court said that while none of the evidence produced by retail giant Costco was conclusive, it was enough to take the question to trial.

The famous jewelry seller is a cultural icon whose blue jewelry boxes and glamorous New York presence has been frequently featured in popular culture, such as “Breakfast at Tiffany's,” a 1958 novella by Truman Capote that was made into an iconic 1961 film starring Audrey Hepburn and George Peppard.

Tiffany's, founded nearly 180 years ago, finds itself defending its trademark rights against one of the world's largest retailers, Costco, which in 2010 took another luxury goods maker--Omega S.A.--all the way to the U.S. Supreme Court.

Costco Claims Generic Meaning for Setting

Tiffany & Co. of New York was founded as a stationers and luxury goods shop in 1837. Originally known as Tiffany, Young & Ellis, the company's name was shortened in 1853 and it began to specialize in jewelry.

A particular style of engagement ring, described as “a solitaire diamond set with six prongs,” is known as a “Tiffany setting” ring.

Costco Wholesale Corp. of Issaquah, Wash., operates a chain of membership warehouse outlets. The Costco chain is the largest membership chain in the United States, the second largest retailer in the country, and the seventh largest retailer in the world.

Some time in 2012, Costco began selling a style of engagement ring, which its signs identified as “Tiffany.”

Tiffany & Co. holds about 100 federal trademark registrations, and Tiffany and its subsidiary Tiffany (NJ) LLC filed trademark infringement, trademark dilution, counterfeiting, unfair competition and other claims against Costco.

Costco counterclaimed, seeking to invalidate Tiffany's trademark registrations to the extent that they covered a type of ring setting. This use, according to Costco, was generic for settings “comprised of multiple slender prongs extending upward from a base to hold a single gemstone.”

Tiffany moved for summary judgment to dismiss this counterclaim or judgment on the pleadings.

Sufficient Evidence to Block Summary Judgment

Judge Laura Taylor Swain quoted from Horizon Mills Corp. v. QVC, Inc., 161 F. Supp. 2d 208 (S.D.N.Y. 2001) for the circumstances under which a trademark can become generic:

(i) “where a seller appropriates an existing generic term and claims exclusive rights in it as a 'trademark' of that term,” but the term was generic before the seller used it and so the seller never had trademarked rights in it and (ii) “where a seller establishes trademark rights in a term which a majority of the relevant public then appropriates as the name of the product.”  


Furthermore, the court said, even though the trademark registrations asserted by Tiffany were incontestable under 15 U.S.C. §1065, it was still possible for such a trademark to be found generic from the point of view of the “purchasing public,” a principle set forth by Pilates, Inc. v. Current Concepts, Inc., 120 F. Supp. 2d 286, 57 U.S.P.Q.2d 1174 (S.D.N.Y. 2000).

Next, the court noted that under Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 U.S.P.Q. 759 (2d Cir. 1976), a trademark can also be found partially genericized.

According to the court, Costco had set forth sufficient evidence to make a triable question of whether “Tiffany setting” was generic.

The court concluded that “While none of the evidence is by any means conclusive of the proposition advanced by Costco it is, taken together and read in the light most favorable to Costco in this pre-discovery context, sufficient to frame a genuine factual dispute as to whether the terms 'Tiffany' and/or 'Tiffany Setting' have a primarily generic meaning in the minds of the members of the general public in the context of ring settings.

Tiffany was represented by Don Abraham of Dickstein Shapiro LLP, New York. Costco was represented by Richard Michael Koehl of Fried, Frank, Harris, Shriver & Jacobson LLP, New York.


To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com

Text is available at http://www.bloomberglaw.com/public/document/Tiffany_and_Company_v_Costco_Wholesale_Corporation_Docket_No_113c.

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