25 July 2019TrademarksSaman Javed

Tiffany & Co urges Second Circuit to reject Costco appeal

Jewellery retailer Tiffany & Co has asked an appeals court to uphold a $19.4 million ruling against Costco, after a jury found the wholesale company had infringed its trademark.

In its brief, filed yesterday, July 24, at the US Court of Appeals for the Second Circuit, Tiffany said the case was “properly decided, and the judgment should therefore be affirmed”.

In 2015, the US District Court for the Southern District of New York granted Tiffany’s motion for summary judgment and found Costco liable for counterfeiting and trademark infringement.

The luxury jeweller had sued Costco in February 2013, after receiving information from consumers that the retailer was selling a range of rings under the name Tiffany.

Costco then filed a counterclaim which alleged that the term ‘Tiffany’ had become generic.

But the court rejected Costco’s argument, holding that the retailer had failed to produce any affirmative evidence that demonstrates that ‘Tiffany’, when used as a mark, is not strong or that any potential generic use of Tiffany had “undermined the strength of the ‘Tiffany’ trademark”.

This was then upheld by a jury in September 2016. As reported by WIPR, Costco appealed the ruling in January this year, but this was rejected by the district court.

In its latest filing, Tiffany said Costco “intentionally” used Tiffany’s famous name in “point-of-sale signs to sell inferior copies of an engagement ring for which Tiffany is renowned”.

It said: “Costco seeks reversal by misstating the evidence, mischaracterising cases, and ignoring its own failures of proof.”

It added: “A review of the admissible evidence, untainted by Costco’s false narrative, shows that the district court and the jury properly found for Tiffany”.

Additionally, Tiffany said Costco’s salespeople referred to the rings as “Tiffany” when showing them to customers, and that Costco “did nothing to prevent” consumer confusion.

According to the brief, at jury trial Costco admitted using “Tiffany” intentionally to describe these rings, “despite knowing the word has been in the pantheon of the world’s most famous brands for generations, and that no case has ever found the mark generic”.

‘Absurd’ defence

It also disputed Costco’s descriptive fair use defence.

“To illustrate the real-world absurdity of Costco’s descriptive fair use defence, according to Costco, a ‘Tiffany’ sign in a jewellery case stocked with authentic Tiffany bracelets, earrings, necklaces and other styles of rings would denote the brand, but for these rings only, ‘Tiffany’ would denote a style, an objectively confusing result,” Tiffany said.

Additionally, it said Costco had failed to conduct any consumer perception surveys to show that it had not caused consumer confusion.

Contrastingly, six Costco purchasers testified at deposition that they took their rings home believing they were real Tiffany rings, the jeweller said.

“As such, Costco’s claims of innocent intent, both in terms of using ‘Tiffany’ descriptively and in trying to shift blame to vendors, are nothing more than self-serving conjecture,” Tiffany added.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.

Today's top stories:

China promises ‘severe’ penalties for IP infringers

Switzerland ranked world’s ‘most innovative’ country

Marvel hits out at BlackBerry over ‘Jarvis’ TM

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at

More on this story

3 October 2016   Wholesaler Costco should pay luxury jeweller Tiffany $5.5 million in compensation for selling thousands of counterfeit diamond rings.
9 January 2019   Wholesale company Costco has lost a bid to reverse or reduce a $19.4 million judgment against it in a lawsuit filed by jewellery retailer Tiffany & Co for unlawfully using its trademark on engagement rings.
10 June 2020   A make-up artist has lost his copyright appeal at a US federal appeals court, but the judges declined to issue a highly-anticipated judgment on whether the human skin is a “tangible medium of expression”.