MajorsOct 29, 2020
LVMH Snags Tiffany at Lower PriceMajorsMar 24, 2021
The Tiffany v. Costco Battle Wages On
Now returned to a lower court, the jeweler and the big-box retailer are locking horns over damages and Tiffany’s right to a jury trial.
Tiffany and Costco’s fight over the term “Tiffany Setting” continues, with the two battling it out over punitive damages and a jury trial. (Photo ® Tiffany & Co.)
New York—The battle wages on between Tiffany and Costco in what is a formative case for the jewelry industry regarding the use of the term “Tiffany setting.”
Tiffany & Co. first took Costco Wholesale Corp. to court in 2013, suing the big-box retailer in New York federal court for trademark infringement, counterfeiting and unfair business practices for selling rings in its stores labeled as “Tiffany” that were not made by Tiffany.
Costco filed a countersuit, claiming the term “Tiffany setting” had become genericized and could be used by any company to describe a ring with multiple, slender prongs holding a single stone. It asked the court to invalidate any federal trademark registrations that would prevent other retailers from using the term “Tiffany setting.”
A federal judge ruled in Tiffany’s favor in 2015, granting the jeweler’s motion for summary judgment (a judgment entered by the court without a full trial) in the case.
A jury decided on damages, ordering Costco to pay Tiffany $5.5 million for unlawful profits ($3.7 million in direct profits and $1.8 million for additional benefits derived from the ring sales) and $8.25 million in punitive damages.
The judge trebled the $3.7 million to $11 million, bringing the total amount Costco was to pay Tiffany to $21 million.
Last August, however, the Second Circuit Court of Appeals vacated the summary judgment on appeal from Costco.
The judges ruled unanimously that if a jury had heard the case, “reasonable” jurors could find Costco’s use of the word “Tiffany” wasn’t likely to confuse customers or make them think Tiffany had produced or endorsed the rings.
The appeals court sent the case back to the district court, where Tiffany and Costco are now at odds over punitive damages and the issue of a jury.
Related stories will be right here …
Tiffany & Co. first took Costco Wholesale Corp. to court in 2013, suing the big-box retailer in New York federal court for trademark infringement, counterfeiting and unfair business practices for selling rings in its stores labeled as “Tiffany” that were not made by Tiffany.
Costco filed a countersuit, claiming the term “Tiffany setting” had become genericized and could be used by any company to describe a ring with multiple, slender prongs holding a single stone. It asked the court to invalidate any federal trademark registrations that would prevent other retailers from using the term “Tiffany setting.”
A federal judge ruled in Tiffany’s favor in 2015, granting the jeweler’s motion for summary judgment (a judgment entered by the court without a full trial) in the case.
A jury decided on damages, ordering Costco to pay Tiffany $5.5 million for unlawful profits ($3.7 million in direct profits and $1.8 million for additional benefits derived from the ring sales) and $8.25 million in punitive damages.
The judge trebled the $3.7 million to $11 million, bringing the total amount Costco was to pay Tiffany to $21 million.
Last August, however, the Second Circuit Court of Appeals vacated the summary judgment on appeal from Costco.
The judges ruled unanimously that if a jury had heard the case, “reasonable” jurors could find Costco’s use of the word “Tiffany” wasn’t likely to confuse customers or make them think Tiffany had produced or endorsed the rings.
The appeals court sent the case back to the district court, where Tiffany and Costco are now at odds over punitive damages and the issue of a jury.
On Feb. 12, Costco filed a motion in limine seeking to prevent a jury trial in the case and blocking Tiffany from seeking punitive damages on grounds the jeweler needs to prove lost profits (which it is not seeking in the case) before it can ask for punitive damages.
Tiffany fired back earlier this month, arguing the district court has ruled multiple times—a total of six before this, in fact—that punitive damages are available to it under New York law and that “nothing material” has changed about the case since those prior rulings.
The court also previously determined that Tiffany is entitled to a jury and, the jeweler argued in its March 12 memo opposing the motion, one is needed to determine damages in the case.
The now LVMH-owned jeweler also pointed out Costco itself asked for the case to be presented to a jury when it filed its appeal.
Tiffany fired back earlier this month, arguing the district court has ruled multiple times—a total of six before this, in fact—that punitive damages are available to it under New York law and that “nothing material” has changed about the case since those prior rulings.
The court also previously determined that Tiffany is entitled to a jury and, the jeweler argued in its March 12 memo opposing the motion, one is needed to determine damages in the case.
The now LVMH-owned jeweler also pointed out Costco itself asked for the case to be presented to a jury when it filed its appeal.
When, or if, another trial might take place remains unclear.
According to a joint status report filed March 12, Tiffany will not consent to a virtual trial, but said it could be ready for an in-person trial by July, if one can be held safely by then.
Court papers also indicate a settlement is not out of the question.
The two parties had a settlement discussion prior to the case going to trial in 2016 and have had additional discussions since the ruling on the appeal. Those discussions are continuing.
Tiffany v. Costco is filed in U.S. District Court for the Southern District of New York.
According to a joint status report filed March 12, Tiffany will not consent to a virtual trial, but said it could be ready for an in-person trial by July, if one can be held safely by then.
Court papers also indicate a settlement is not out of the question.
The two parties had a settlement discussion prior to the case going to trial in 2016 and have had additional discussions since the ruling on the appeal. Those discussions are continuing.
Tiffany v. Costco is filed in U.S. District Court for the Southern District of New York.
More on Majors
The Latest
GradingAug 22, 2025
Former Head of GIA India Promoted to Oversee Global Operations Sriram “Ram” Natarajan is now GIA’s senior vice president of laboratory operations and is based out of the lab’s headquarters in Carlsbad.
CollectionsAug 22, 2025
Piece of the Week: Retrouvaí’s ‘Diamond Vein Bond’ CollarThe one-of-a-kind collar represents the beauty of imperfection and the strength to rebuild.
MajorsAug 21, 2025
Target Names New CEO as Sales Continue to Lag Target CEO Brian Cornell will step down in February and be replaced by the company’s chief operating officer, Michael Fiddelke.
Brought to you by
Rallying Call for the Jewelry Industry on Tariffs and Other Key IssuesJewelers of America is leading the charge to protect the industry amidst rising economic threats.
Policies & IssuesAug 21, 2025
JA, IDMA Talk Tariffs With Execs in DC The group met with the president's senior trade advisor earlier this week to express the industry’s concerns about the effects of tariffs.
Weekly QuizAug 22, 2025
This Week’s QuizTest your jewelry news knowledge by answering these questions.
MajorsAug 21, 2025
Tiffany & Co. Pops Up at 2025 US OpenThe pop-up will display this year's Tiffany & Co. Singles Championship trophies along with a diamond-encrusted tennis racket and ball.
IndependentsAug 20, 2025
Bellman’s Jewelers Opens Second Store After COO's TikTok Takes OffThe New Hampshire-based store has expanded to Boston, propelled by the success of Alex Bellman’s TikTok page, “The Truthful Jeweler.”
Brought to you by
Taking the Moment Head On: How Rio Grande Champions the Present & Future of Fine JewelryAs a leading global jewelry supplier, Rio Grande is rapidly expanding and developing new solutions to meet the needs of jewelers worldwide.
CrimeAug 20, 2025
Another CA Jewelry Store Rammed With Car, RobbedThe latest incident happened Monday at a store in Oakland, California, continuing a pattern JSA first warned about last month.
WatchesAug 20, 2025
Oris Launches Watch Benefiting NYC Harbor Oyster RestorationThe new aqua green New York Harbor Limited Edition II is the watchmaker’s second collaboration with the Billion Oyster Project.
Events & AwardsAug 20, 2025
Take the Jewelers for Children ‘Trinity of Purpose’ ChallengeParticipants who attend any three Rings of Strength events will be awarded a special medal.
SourcingAug 19, 2025
Dubai’s Jemora Group Buys Diamond Miner LucapaThe investment company, founded by Dev Shetty, has acquired the struggling miner and its assets, including the Lulo mine in Angola.
ColumnistsAug 19, 2025
Peter Smith: The Arrival Fallacy and Jewelry RetailSmith shares wisdom he gleaned from a podcast he was listening to one morning while being walked by his dog, a Malshi named Sophie.
CrimeAug 19, 2025
Customs Seizes 7,300 Pairs of Fake ‘Alhambra’ EarringsThe counterfeit Van Cleef & Arpels jewels would have been worth more than $30 million if genuine.
MajorsAug 19, 2025
MJSA Apprenticeship Program Is Nationally RecognizedThe MJSA Mentor & Apprenticeship Program received the Registered Apprenticeship Program designation by the U.S. Department of Labor.
WatchesAug 19, 2025
Casio America Names New Timepiece Division ManagerCasio executive and watch enthusiast Masaki Obu is the new general manager of its U.S. timepiece division.
MajorsAug 18, 2025
Verragio’s Michael Barabash, a ‘Kind Soul,’ Dies at 58Barabash, Verragio’s client relations representative, was a vital member of the team and is remembered as being warm and full of life.
CollectionsAug 18, 2025
John Hardy’s New ‘Dot’ Collection Is on PointOriginally introduced in 1992, the “Dot” collection is back with a capsule featuring five archival designs and three new creations.
Events & AwardsAug 18, 2025
IJO Announces 2025 Vendor of the YearAllison-Kaufman has received the honor for the fourth year in a row.
FinancialsAug 15, 2025
In Q2 Results, Pandora Talks Tariffs, Q4 Plans The company had a solid second quarter, with sales of non-charm jewelry outpacing sales of pieces in its core collections.
EditorsAug 15, 2025
Piece of the Week: Etho Maria’s Showgirl-Approved Ruby Drop Earrings Taylor Swift dons the vibrant pair in new promotional imagery for her upcoming album, “The Life of a Showgirl,” set to release in October.
WatchesAug 15, 2025
Audemars Piguet Acquires Majority Stake in ManufacturerIts investment in micromechanics expert Inhotec will preserve skills essential to the watchmaking industry as a whole, said the company.
MajorsAug 15, 2025
Rio Grande Names New Marketing DirectorNicolette Bianchi joins the wholesale provider with more than 15 years of cross-industry experience in marketing and product development.
CollectionsAug 14, 2025
In Midst of ‘Sardine Girl Summer,’ Pippa Small Looks to ‘Flounder Fall’Her new “Ocean” collection was inspired by Myanmar’s traditional articulated fish jewelry, with depictions of flounder, catfish, and more.
MajorsAug 14, 2025
Casio America Names New CEOLongtime Casio executive Yusuke Suzuki is the new president and CEO of Casio’s U.S. subsidiary.
SourcingAug 14, 2025
West Coast Orgs to Host Trading Event, Mixer in LAThe full-day sourcing and networking event, slated for Aug. 18, will be followed by the fifth annual Mega Mixer Summer Soirée.
TrendsAug 13, 2025
Cristiano Ronaldo Proposes With Gigantic Oval-Cut DiamondModel Georgina Rodríguez received a rock of an engagement ring, with her diamond estimated to be 35 carats, experts say.
