A true Tiffany setting can only be manufactured by the iconic retailer, its lawyers asserted in a March 14 response to discount giant Costco.
“A Tiffany Setting is only one that is manufactured and certified by Tiffany as being in accordance with Tiffany’s strict standards and specifications,” said the response, filed in New York federal court. “It is available from only one place—Tiffany. Anything else is a fake.”
The filing later added flatly, “The phrase Tiffany setting is not generic.”
Tiffany was responding to a March 11 counterclaim from Costco Wholesale Group. Tiffany had sued the discount giant a month earlier for allegedly selling products falsely described as from the upscale jeweler. In its response, Costco said that it never purported to sell Tiffany rings, just rings with a Tiffany setting, and asked that Tiffany setting be ruled a generic term.
Tiffany’s lawyers countered that the phrase Tiffany setting—which they repeatedly rendered in capital letters, accompanied by a “Registered” mark next to the Tiffany—“describes only one thing, a particular style of engagement ring that was designed by [company founder] Charles Lewis Tiffany.”
The filing contended that true Tiffany settings are manufactured according to the company’s proprietary standards, which include specifications for their appearance, shank, head, prongs, diamond setting, and quality.
The retailer also took aim at the evidence in Costco’s counterclaim, which includes several dictionary and online references to Tiffany settings. It noted they differ in their descriptions, with some calling it a four-pronged setting, and others saying it varies.
Costco’s counterclaim also asserted that its packaging differs markedly from Tiffany’s, which would prevent consumers from being confused. But Tiffany’s lawyers responded that Costco members are accustomed to see it “repackaging authentic merchandise or selling what are known as gray market goods at reduced prices, so the packaging in which the subject rings were delivered—which was only given to the customer after payment and was not displayed in the jewelry cases …—is not relevant.”
The response also charged that, contrary to Costco’s counterclaim, a salesperson at a Huntington Beach, Calif., Costco described the products in question as “Tiffany” rings.
“[Costco] used the Tiffany Trademark Tiffany to describe replicas of actual Tiffany engagement rings, and not the phrase Tiffany Setting for which defendant seeks a declaration,” it concluded.
Click here for reaction to the case from trademark and patent attorneys.
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