IT’S MORE THAN A BOX

Many woman dream of that Tiffany blue box adorned with that distinctive white ribbon, which holds the ring to their future life as a Mrs. Tiffany is more than its box. It’s a luxury that cannot be generically manufactured, at least according to Tiffany & Co. and the Sothern District Court of New York.

A two year trademark battle has ended with Tiffany & Co. walking away victorious. On February 14, 2013, Tiffany filed suit against Costco, one of the United States biggest ware house clubs for infringing Tiffany’s trademark by selling engagement rings. The engagement rings were marketed by the warehouse giant as Tiffany diamond engagement rings. Tiffany was tipped off by a customer in 2012, when the customer wrote a letter to their corporate office expressing her disappointment with Tiffany selling their rings at Costco’s Huntington Beach California location. The customer’s complaint lead to an investigation by Tiffany which uncovered that Costco was indeed selling their diamond rings labeled with the word Tiffany in addition, their employees referred to the rings as Tiffany engagement rings.

Although, Costco promised to remove the Tiffany references from their display signs and also sent letters to customers who brought the rings offering a full refund, it was to no avail. Tiffany still filed suit. Costco filled a counterclaim which stating that Tiffany’s trademark was invalid because it prevented others from using the word “Tiffany” as a generic description of a ring setting. Although a slightly persuasive argument the Court was not swayed. U.S. District Court Judge Laura Swain ruled “Despite Costco’s arguments to the contrary, the court finds that, based on the record evidence, no rational finder of fact could conclude that Costco acted in good faith in adopting the Tiffany mark.”

Tiffany may now seek damages, which include recovery of Costco’s profits from the sale of the rings as well as punitive damages. The luxury brand industry has spoken and has proven they are far from generic; so think twice before infringing on their brand.

By: Astrid Johnson – Associate Editor of Business, Technology, and Medicine

Photo Credit: irene. via flickr.com cc

Sources used:

http://www.reuters.com/article/2015/09/08/us-tiffany-costco-wholesale-lawsuit-idUSKCN0R82KY20150908

http://www.theiplawblog.com/2015/09/articles/trademark-law/tiffany-company-v-costco-wholesale-tiffany-is-far-from-generic/