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Tiffany triumphant in Costco trademark case
Tiffany & Co. has notched a huge legal victory, with a federal judge granting its motion for summary judgement and rejecting arguments that the term “Tiffany” has become generic.
Tiffany filed a lawsuit against Costco nearly three years ago, accusing the Issaquah, Wash.-based retailer of confusing consumers by selling rings in its stores with signs identifying them as “Tiffany” even though they aren’t genuine Tiffany & Co. rings.
Costco fired back with a counterclaim alleging that “Tiffany setting” had been in use so long that it had become a generic term that could be used to describe any setting comprised of multiple slender prongs extending upward from a base to hold a single gemstone.
Costco asked the court to declare invalid Tiffany’s federal trademark registrations that prevent other retailers from using the term “Tiffany setting.”
While the court agreed to hear arguments about the term “Tiffany” being generic in terms of ring settings, it ultimately found that Tiffany has “proffered uncontroverted evidence demonstrating the strength of its mark,” Tuesday’s ruling states.
While Costco argued that “the plain word Tiffany … is ‘weak’ in many ways,” it didn’t gather any reliable evidence to back up its assertion, court papers state.
The ruling also notes that Tiffany interviewed six different consumers who had purchased rings labeled as Tiffany at Costco and found that they all thought they had a genuine Tiffany & Co. ring. One woman even cried when the diamond fell out of what she believed was a Tiffany ring, court papers state.
A jury will determine punitive damages in the case at a later date.
Costco did not respond to request for comment on the ruling by deadline.
Tiffany filed suit against Costco Wholesale Corp. on Valentine’s Day 2013.
According to the original suit, a shopper at a Costco in Huntington Beach, Calif. first made Tiffany aware that Costco was selling rings marked as Tiffany.
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