Majors

Appeals Court Reverses $21M Judgment Against Costco in Tiffany Case

MajorsAug 18, 2020

Appeals Court Reverses $21M Judgment Against Costco in Tiffany Case

The closely followed trademark case over use of the “Tiffany” name is going back to the district court for a trial by jury.

Appeals Court Reverses $21M Judgment Against Costco in Tiffany Case
A trademark case involving Costco’s use of the word “Tiffany” to describe unbranded diamond rings has been sent back to a lower court for reconsideration by a jury. Pictured here is a diamond engagement ring featuring the jeweler’s famed six-prong setting.
New York—A federal appeals court has overturned the $21 million judgment levied against Costco Wholesale Corp. for its use of the name “Tiffany” for unbranded goods.

Tiffany & Co. sued Costco in early 2013 for selling rings in its stores with signs that read “Tiffany” that were not made by Tiffany & Co.

Costco argued in a countersuit that “Tiffany” had become a generic term that could be used by any company to describe a particular style of ring setting (multiple slender prongs holding a single stone).

In 2015, the U.S. District Court for the Southern District of New York granted Tiffany’s motion of summary judgment of liability, and in 2017, a civil jury awarded the jeweler damages totaling about $21 million

Costco appealed the judgment and won, with the Second Circuit Court of Appeals reversing the decision.

In a filing Monday, the appeals court the said question of liability for infringement and counterfeiting should have been presented to a jury during the first trial, rather than be decided by the district court judge.

In a 3-0 decision, the appeals court judges said “reasonable” jurors could find Costco’s use of the word “Tiffany” wasn’t likely to confuse customers or make them think the latter had produced or endorsed the rings. 

They could understand “Tiffany” wasn’t only a brand name but also “a widely recognized descriptive term for a particular style of pronged ring setting.”

The case has been remanded to U.S. District Judge Laura Taylor Swain in Manhattan for a jury trial.

“We are disappointed in the court’s ruling … We continue to believe that the district court was correct in its findings, and that the jury’s finding on damages, which resulted in a $21 million award for Tiffany & Co., is a clear indicator of the strength of the Tiffany brand, and of the jury’s outrage over Costco’s actions,” said Leigh Harlan, Tiffany senior vice president, secretary and general counsel.

“We have no qualms about trying this case again and remain confident that a jury will find counterfeiting and infringement upon retrial, just as the district court judge originally ruled.”

The attorneys at Debevoise & Plimpton LLP, which represented Costco in the appeal, declined to comment on the ruling.
Brecken Branstratoris the senior editor, gemstones at National Jeweler, covering sourcing, pricing and other developments in the colored stone sector.
tags:

The Latest

Watch: How Is the Industry Doing When It Comes to Diversity?
Recorded WebinarsMar 31, 2023
Watch: How Is the Industry Doing When It Comes to Diversity?

Annie Doresca and Michelle Graff welcome Reggie Johnson and Sheryl Jones for a frank conversation on the state of DEI in fine jewelry.

Piece of the Week: The Extraterrestrial Lunar Necklace
AuctionsMar 31, 2023
Piece of the Week: The Extraterrestrial Lunar Necklace

Artisan Martin Roberts fashioned lunar meteorites into 48 beads to create this out-of-this-world necklace.

At Watches & Wonders, a $20M Watch Makes Its Debut
WatchesMar 30, 2023
At Watches & Wonders, a $20M Watch Makes Its Debut

Jacob & Co.’s new “Billionaire” timepiece features more than 200 carats of yellow diamonds.

Full Disclosure at Your Fingertips
Brought to you by
Full Disclosure at Your Fingertips

Distinguishing natural diamonds from laboratory-grown stones – now more available than ever – has been difficult for jewelers. Until now.

See the Jewelry Collection Expected to Top Elizabeth Taylor’s at Auction
AuctionsMar 30, 2023
See the Jewelry Collection Expected to Top Elizabeth Taylor’s at Auction

Heidi Horten, wife of department store magnate Helmut Horten, collected jewelry from Bulgari, Cartier, Harry Winston and Van Cleef & Arpels.

Weekly QuizMar 31, 2023
This Week’s Quiz
Test your jewelry news knowledge with this short test.
Take the Quiz
Jewelers Mutual Marks a Major Milestone
MajorsMar 30, 2023
Jewelers Mutual Marks a Major Milestone

The jewelry industry insurer and solutions provider is celebrating 110 years in business this month.

NRF Says Brick-and-Mortar Stores Remain ‘Primary Point of Purchase’
SurveysMar 30, 2023
NRF Says Brick-and-Mortar Stores Remain ‘Primary Point of Purchase’

The statement came as the National Retail Federation released its retail sales forecast for 2023.

Bringing Over 130 Years of Diamond Expertise to Modern Grading
Brought to you by
Bringing Over 130 Years of Diamond Expertise to Modern Grading

De Beers Institute of Diamonds provides the very best in diamond verification, education and diamond services.

10.57-Carat Purplish Pink Diamond Expected to Sell for $35M+
AuctionsMar 29, 2023
10.57-Carat Purplish Pink Diamond Expected to Sell for $35M+

Sotheby’s will auction the diamond, which it says is “arguably the most significant pink diamond to ever appear at auction,” in June.

Blue Nile to Close Fulfillment Center, Lay Off Workers
MajorsMar 29, 2023
Blue Nile to Close Fulfillment Center, Lay Off Workers

The retailer, recently acquired by Signet Jewelers, will lay off 119 employees in July.

See All the New Patek Philippe Watches for 2023
WatchesMar 29, 2023
See All the New Patek Philippe Watches for 2023

The Swiss watchmaker introduced 17 new models at Watches & Wonders Geneva.

Mark Henry Jewelry Offering Complimentary ‘Masterclass’ on Sales from Peter Smith
MajorsMar 29, 2023
Mark Henry Jewelry Offering Complimentary ‘Masterclass’ on Sales from Peter Smith

As part of the promotion, Smith will share his sales expertise during a 90-minute training session.

I’m Enchanted With Parmigiani Fleurier’s Perfect Travel Watch
EditorsMar 28, 2023
I’m Enchanted With Parmigiani Fleurier’s Perfect Travel Watch

At Watches & Wonders, the Swiss brand unveiled a follow-up to last year’s Tonda PF GMT Rattrapante.

Helzberg’s New Lab-Grown Diamond Collection Earns SCS Certification
CollectionsMar 28, 2023
Helzberg’s New Lab-Grown Diamond Collection Earns SCS Certification

The “rêve” collection’s engagement rings and wedding bands are geared toward “sustainability minded customers.”

This New Rolex Day-Date Tells Time … and Affirmations
EditorsMar 28, 2023
This New Rolex Day-Date Tells Time … and Affirmations

A new word appears on the dial each day of the week.

D.C. Jeweler That Honored 50-Year-Old Gift Certificate Closes
IndependentsMar 28, 2023
D.C. Jeweler That Honored 50-Year-Old Gift Certificate Closes

Bensons Jewelers closed for good Feb. 24, impacted in part by the decline in foot traffic downtown since the onset of the pandemic.

Swarovski Names New GM of North America
MajorsMar 28, 2023
Swarovski Names New GM of North America

Kolja Kiofsky has been with the crystal and jewelry company since 2010.

Jewels to Shine in Upcoming ‘Golden Age’ of Hollywood Auction
AuctionsMar 27, 2023
Jewels to Shine in Upcoming ‘Golden Age’ of Hollywood Auction

The Kruse GWS Auctions sale will include the replica “Taj Mahal” necklace Elizabeth Taylor made with Avon as well as a costume piece Marilyn Monroe wore.

Pandora Promotes GM to Chief of Retail Operations
MajorsMar 27, 2023
Pandora Promotes GM to Chief of Retail Operations

Massimo Basei is moving up, while Chief Commercial Officer Martino Pessina is stepping down.

Registration Is Open for the HardRock Summit
Events & AwardsMar 27, 2023
Registration Is Open for the HardRock Summit

AGTA GemFair and the Denver Gem & Mineral Show also will have a presence on the show floor.

Piece of the Week: The $5.8M Patek Philippe ‘Sky Moon Tourbillon’
AuctionsMar 24, 2023
Piece of the Week: The $5.8M Patek Philippe ‘Sky Moon Tourbillon’

Sold by Christie’s Hong Kong, this masterwork of complications now holds the record for most expensive watch ever auctioned online.

Movado Predicts Declining Sales Amid ‘Volatile’ Retail Environment
FinancialsMar 24, 2023
Movado Predicts Declining Sales Amid ‘Volatile’ Retail Environment

The watch company expects first-quarter sales to fall as much as 15 percent due to inflation and tough comps.

Lightbox Promotes General Manager to COO
Lab-GrownMar 24, 2023
Lightbox Promotes General Manager to COO

Adam O’Grady, general manager of the Lightbox Lab, has taken on the new role and will report directly to Lightbox CEO Antoine Borde.

Which Brands Do Watch Enthusiasts Love Most? Chrono24 Takes a Look
WatchesMar 23, 2023
Which Brands Do Watch Enthusiasts Love Most? Chrono24 Takes a Look

The watch marketplace gathered data from 1.3 million collectors, highlighting the most popular timepieces and exploring value appreciation.

Burgundy Diamond Backing Out of Ellendale Mine Deal
SourcingMar 23, 2023
Burgundy Diamond Backing Out of Ellendale Mine Deal

Burgundy has opted not to exercise its option to buy the mining claims Gibb River Diamonds currently owns.

GCAL Introduces 8X Cut Grade for Proprietary Cuts
GradingMar 23, 2023
GCAL Introduces 8X Cut Grade for Proprietary Cuts

Patented and specialty cuts now can receive an 8X Proprietary Certificate, which can be customized to include a company’s brand and logo.

Diamonds Do Good Names 2023 Award Recipients
Events & AwardsMar 23, 2023
Diamonds Do Good Names 2023 Award Recipients

The organization said it will recognize those who exemplify the idea that doing good is good business.

×

This site uses cookies to give you the best online experience. By continuing to use & browse this site, we assume you agree to our Privacy Policy