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Tiffany and Co. v. Costco Wholesale Corp., 13 Civ. 1041 (LTS)(DCF) (S.D.N.Y. Jan. 17, 2014)

Tiffany and Co. v. Costco Wholesale Corp., 13 Civ. 1041 (LTS)(DCF) (S.D.N.Y. Jan. 17, 2014)

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Latest decision in trademark infringement lawsuit brought by Tiffany, but which has now become a dispute about whether "Tiffany setting" is a generic term (i.e., one that is ineligible for trademark protection)
Latest decision in trademark infringement lawsuit brought by Tiffany, but which has now become a dispute about whether "Tiffany setting" is a generic term (i.e., one that is ineligible for trademark protection)

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Categories:Types, Business/Law
Published by: Charles Colman Law, PLLC on Jan 23, 2014
Copyright:Attribution Non-commercial

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03/14/2014

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UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF NEW YORK -------------------------------------------------------xTIFFANY AND COMPANY andTIFFANY NJ (LLC),Plaintiffs,-v-No. 13 Civ. 1041 (LTS)(DCF)COSTCO WHOLESALE CORPORATION,Defendant.-------------------------------------------------------xM
EMORANDUM
O
PINION AND
O
RDER 
Plaintiffs and Counterclaim-Defendants Tiffany and Company (“Tiffany andCo.”) and Tiffany (NJ), LLC (collectively, “Tiffany”) sue Defendant and Counterclaim-Plaintiff Costco Wholesale Corporation (“Costco”), asserting claims under both federal and New York state law for trademark infringement, dilution, counterfeiting, unfair competition, injury to business reputation, false and deceptive business practices and false advertising. Costco assertsa Counterclaim against Tiffany, seeking to dismiss Tiffany’s Complaint with prejudice andseeking a judgment that Tiffany’s federal trademark registrations are invalid in that they purportto exclude others from using the word “Tiffany” to describe or refer to a certain type of ringsetting; that such registrations must be modified or restricted to make clear that “Tiffany” is ageneric term for ring settings “comprised of multiple slender prongs extending upward from a base to hold a single gemstone;” and that Costco’s past use of the word has not infringed or invaded any legal rights of Tiffany. (See Counterclaim ¶¶ 11, 13.) Currently pending before theCourt is Tiffany’s motion for summary judgment dismissing Costco’s Counterclaim pursuant to
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IFFANYSJ
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Federal Rule of Civil Procedure 56 or, in the alternative for judgment on the pleadingsdismissing Costco’s Counterclaim pursuant to Federal Rule of Civil Procedure 12(c). The Courthas jurisdiction of this action under 15 U.S.C. § 1121 and 28 U.S.C.§§ 1331, 1338 and 1367(a). The Court has considered carefully the parties’ submissions and arguments and, for thefollowing reasons, Tiffany’s motion, which the Court treats as one for summary judgment onCostco’s Counterclaim, is denied.BACKGROUNDUndisputed FactsThe following facts are undisputed. Tiffany holds 97 separate trademarks
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relating to the “Tiffany” company name. (Pl. Local Civil Rule 56.1 Statement ¶ 4) (“Pl. 56.1Stmt.”).) Among the Tiffany trademarks relevant to this case is Registration No. 1,228,409, for 
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the word “Tiffany” in International Class 14, which was first used in commerce in 1868. (Id. ¶¶5-6.) This mark covers “decorative art objects made in whole or in part of precious or semi- precious metals – namely, figurines, boxes, bowls, trays, and flowers, jewelry, semi-preciousstones, and natural and cultured pearls” in Class 14. (Id. ¶ 7.) Tiffany also holds Registration No. 133,063, for the stylized mark “Tiffany” in U.S. Class 28, which covers “jewelry for  personal wear, not including watches, precious stones, and flat and hollow ware made of or Costco has denied several of Tiffany’s allegations concerning ownership of 
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registered trademarks, arguing that the word “Tiffany” has become generic in thecontext of a certain style of pronged ring setting. The Court does not understandsuch contentions to constitute denials that Tiffany at this point has the registeredtrademarks to which Tiffany’s contentions refer.
Citations to the parties’ S.D.N.Y. Local Rule 56.1 Statements incorporate by reference
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the evidence cited therein.
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 plated with precious metal,” and was also first used in commerce in 1868. (Id. ¶¶ 9-11.) Tiffanyfurther asserts that it calls one of the styles of engagement ring that it sells, a solitaire diamondset with six prongs, a “
Tiffany®
 Setting” ring. (Id. ¶¶ 18-20.) Prior to December 2012, Costco, a large warehouse chain, was selling two stylesof engagement rings at its Huntington Beach, California Store with Point of Sale signs (“POS”signs) reading as follows: “639911 – Platinum Tiffany.70CT, VS2, 1 Round Diamond Ring – 3199.99 ” and “605880 – Platinum Tiffany VS2.1 1.00CT Round Brilliant Diamond SolitaireRing – 6399.99.” (Pl. 56.1 Stmt. ¶¶ 23-24.) Neither of those rings was manufactured by
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Tiffany. (Id. ¶¶ 25-26.) Furthermore, according to Tiffany, prior to December 2012, Costco didnot describe every engagement ring that it sold with a “setting comprising multiple slender  prongs extending upward from a base to hold a single gemstone” as a “Tiffany” setting and didnot use “Tiffany” to describe settings in any online descriptions of the rings. (Id. ¶¶ 28-29.) Costco acknowledges that it “has not always verbally called out the type of setting that adisplayed diamond ring has,” but proffers no prior examples of display usage of the standaloneword “Tiffany.” (Def. Stmt. of Material Facts in Dispute ¶ 28.) As to online usage, Costco proffers two screen shots of Costco jewelry advertisements that include ring descriptionsincorporating the phrase “tiffany setting.” (Id. ¶ 29; Grewall Decl., Ex. 10.)
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Costco’s CounterclaimAlthough Costco disputes the meaning of the terms in the signs, it does not dispute
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Tiffany’s iteration of the wording of the POS signs.
In its Rule 56.1 Statement and in the body of the Grewall Declaration, Costco
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mischaracterizes the online usage as use of the word or phrase “Tiffany setting in itsdictionary definition sense.” (
Def. 56.1 Stmt. of Material Facts in Dispute
 ¶ 29;Grewall Decl. ¶ 8.) The advertisements depicted in the screen shots do not capitalize“tiffany.”
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