Editors

What the Tiffany ruling means for the industry

EditorsSep 11, 2015

What the Tiffany ruling means for the industry

In a week of big stories, the outcome of Tiffany v. Costco was certainly the biggest.

In a week of big stories, the outcome of Tiffany v. Costco was certainly the biggest, as a federal court in New York handed down a decision that answered the question: Has the term “Tiffany” become genericized, making it OK for anybody who’s selling a certain style of ring to refer to it as a “Tiffany setting?”

Tiffany & Co. first filed suit against Costco Wholesale Corp. on Valentine’s Day 2013, accusing the membership-only warehouse club of selling rings with signs designating them as “Tiffany” when they were not, in fact, rings made by Tiffany & Co.

According to Tiffany, Costco even went so far as remove the Tiffany descriptor when it advertised these same rings online so as to avoid detection.

Shortly thereafter, Costco fired back with a counterclaim insisting that the term “Tiffany” had become genericized and that the phrase “Tiffany setting” could be used to describe any engagement ring of a certain style.

Now, when most people think of generic, what comes to mind is non-brand-name products, like those black-and-white bags of potato chips my mom used to buy in Foodland because they were cheaper than Ruffles. I always wanted to experience the thrill of eating those ridged potato chips in my own home but, alas, it was not meant to be.

As it relates to trademarks, however, what generic means more specifically is a trademark or brand name that has become synonymous with a more general class of product or service.

This can happen organically—laundromat was once a trademarked term but its trademark expired—or against the wishes of the company or brand.

Aspirin, for example, actually was trademarked by Bayer but deemed in court many years ago to have become genericized in the United States. The same is true for Murphy bed, the name for a type of bed that folds up into the wall in order to save space, and originally was the concept of William Lawrence Murphy.

In filing its lawsuit, Costco asserted that the Tiffany name had gone the way of aspirin or the Murphy bed and therefore all retailers could use the term “Tiffany setting” to describe any ring with multiple slender prongs extending upward from a base to hold a single gemstone. (The actual Tiffany Setting, which was created by Charles Lewis Tiffany in 1868, has six prongs.)

The judge disagreed, ruling that the term Tiffany has not become generic and, thereby, is still protected by trademark.

The JVC’s Cecilia Gardner, who actually was deposed in this case because of her knowledge of both the law and the jewelry industry, says what this means for the jewelry industry is simple. Retailers, manufacturers, etc. should not use the term “Tiffany setting” unless they are selling a ring manufactured by Tiffany & Co.

“This decision is authoritative that that phrase is an infringement on Tiffany’s intellectual property and cannot be used without real risk,” she said. “Everybody is exposed to liability if they use that term to connote something else other than a ring manufactured by Tiffany.”
Does that mean that absolutely everybody that has ever written or uttered the words “Tiffany setting” is going to get hit with a lawsuit tomorrow?

No, certainly not; but there is, as Gardner put it, “real risk” and Tiffany definitely is a company that takes protecting its 178-year-old name very seriously. 

In her decision in Tiffany v. Costco, Judge Laura Taylor Swain noted that Tiffany “expended considerable time and resources marshaling testimony and analysis purporting to demonstrate … the unquestionable strength of the Tiffany mark.”

It’s what companies have to do in order to prevent their brand or brands from becoming genericized.

Gardner told me that Xerox prominently and regularly publishes notices pointing out that Xerox is the name of a company, not the name for any photocopied pieces of paper or the action of copying them. Kimberly-Clark does the same thing in order to remind people that Kleenex is a trademarked brand, not a generic term for facial tissue.

“Tiffany (in this case) needed to do the same to protect its intellectual property and to prevent the term (Tiffany from) gathering or acquiring a secondary meaning,” she says.

 Gardner also cautions against using a softened version of the term, i.e. Tiffany-style setting, which the retailer could still take issue with, depending on how aggressively it wants to defend its intellectual property.

 “That’s not going to protect you necessarily,” she says. “If you say ‘Tiffany,’ you might hear from Tiffany.” 
Michelle Graffis the editor-in-chief at National Jeweler, directing the publication’s coverage both online and in print.

The Latest

Sothebys The Desert Rose orangy pink diamond collectors week
AuctionsAug 29, 2025
Sotheby’s UAE Sale to Feature 32-Carat Fancy Vivid Orangy Pink Diamond

The highlight of a single-owner jewelry and watch collection, it’s estimated to fetch up to $7 million at auction this December.

Calvin Klein watch and jewelry campaign
FinancialsAug 29, 2025
Movado’s Q2 Sales Rebound Despite Tariff Impact

CEO Efraim Grinberg noted a resurgence in the fashion watch market.

Mark Davis Bullseye Necklace
CollectionsAug 29, 2025
Piece of the Week: Mark Davis’ ‘Bullseye’ Necklace

The “Bullseye” necklace, with vintage bakelite and peridot, August’s birthstone, is the perfect transitional piece as summer turns to fall.

japac-btyb.png
Brought to you by
Rallying Call for the Jewelry Industry on Tariffs and Other Key Issues

Jewelers of America is leading the charge to protect the industry amidst rising economic threats.

Image #1_Resized.png
Supplier BulletinAug 28, 2025
Clientbook Is Helping Jewelers Turn Clienteling Challenges into Wins with Hands-On Training and Coaching

Sponsored by Clientbook

Weekly QuizAug 29, 2025
This Week’s Quiz
Test your jewelry news knowledge by answering these questions.
Take the Quiz
GIA’s new report for lab-grown diamonds
GradingAug 28, 2025
GIA’s New ‘Quality Assessment’ for Lab-Grown Diamonds Is Coming

It will classify lab-grown stones into one of two categories, “premium” or “standard,” in lieu of giving specific color and clarity grades.

Botswana President Duma Boko
SourcingAug 28, 2025
Botswana Declares Public Health Emergency Amid Diamond Sales Slump

President Duma Boko addressed the country’s medical supply chain crisis in a recent televised address.

rio-article photo-diamond.jpg
Brought to you by
Taking the Moment Head On: How Rio Grande Champions the Present & Future of Fine Jewelry

As a leading global jewelry supplier, Rio Grande is rapidly expanding and developing new solutions to meet the needs of jewelers worldwide.

Afton Robertson-Kanne Borsheims
MajorsAug 28, 2025
Borsheims Names New Jewelry Buyer

Former Free People buyer Afton Robertson-Kanne recently joined the retailer.

Sissy’s Log Cabin Back to School and Bling
IndependentsAug 28, 2025
Sissy’s Log Cabin Donates School Supplies to Memphis Students

The jeweler teamed up with two local organizations for its inaugural “Back to School and Bling” event.

11,685-carat Imboo emerald
SourcingAug 27, 2025
11,685-Carat Emerald Recovered From Zambia’s Kagem Mine

Dubbed the “Imboo,” or “buffalo,” emerald, the rough gemstone is part of Gemfields’ latest emerald auction, which is taking place now.

Shopping cart
SurveysAug 27, 2025
Consumer Confidence Slips in August Amid Job, Income Worries

Plans for dining out, booking vacations, and buying big-ticket items were down.

Mine + Found Play Collection Prize Bubble Locket, Whistle Pendent, Fortune Dice
CollectionsAug 27, 2025
Mined + Found’s New Collection Gets Playful

The “Play” collection centers on nostalgic toys that have kinetic elements to carry playfulness and wonder into adulthood.

CCWW lifesaver necklace
CollectionsAug 26, 2025
Does Your Jewelry Stack Need a Snack?

Designer Christina Puchi, the creative force behind CCWW Designs, has created charms and pendants based on iconic candies and crackers.

Nick Jonas x Fossil Campaign
WatchesAug 26, 2025
Nick Jonas Gets Nostalgic in New Fossil Campaign

The Jonas Brothers star showed off new timepieces against the backdrop of his favorite spots in his home state of New Jersey.

Wally Hinkamp and Donna Hinkamp Warren
IndependentsAug 26, 2025
Hinkamp Jewelers Celebrates 70 Years

The family-owned jeweler in Fayetteville, North Carolina, is in the hands of the second generation.

Emmanuel Raheb
ColumnistsAug 26, 2025
Back to School, Back to Style: Why August is Prime Time for Self-Gifting

In his latest column, Emmanuel Raheb shares tips for encouraging customers to treat themselves to new jewelry.

London Jewelers Rolex East Hampton Boutique Exterior
WatchesAug 25, 2025
London Jewelers Brings Rolex to Historic Hamptons Home

The new stand-alone Rolex boutique is housed in the former Odd Fellows Hall, a landmark built in 1897.

Madison Keys
CollectionsAug 25, 2025
Tennis Star Madison Keys Has the Perfect Necklace for the US Open

The Brilliant Earth ambassador co-designed a diamond medallion featuring meaningful symbols.

Marie Lichtenberg emerald and diamond locket on the 18-karat gold “Rosa” chain
TrendsAug 25, 2025
Amanda’s Style File: That’s a Wrap

Wrap jewelry is more than just a trend; it’s the perfect motif for the coming season of layering, scarves, and pumpkin spice.

WatchTime New York
WatchesAug 25, 2025
WatchTime NY Show Returns for 10th Anniversary Edition

The three-day watch collector show, coming this October, will feature 44 exhibiting brands, as well as a new dinner experience.

Sriram “Ram” Natarajan
GradingAug 22, 2025
Former Head of GIA India Promoted to Oversee Global Operations

Sriram “Ram” Natarajan is now GIA’s senior vice president of laboratory operations and is based out of the lab’s headquarters in Carlsbad.

Retrouvaí Diamond Vein Bond Collar
CollectionsAug 22, 2025
Piece of the Week: Retrouvaí’s ‘Diamond Vein Bond’ Collar

The one-of-a-kind collar represents the beauty of imperfection and the strength to rebuild.

Kendra Scott
MajorsAug 22, 2025
Kendra Scott Returns as CEO of Her Jewelry Empire

Three C-suite executives, including former CEO Tom Nolan, have resigned as part of what the company describes as a “transition.”

Claire’s storefront
MajorsAug 21, 2025
Claire’s Finds Buyer, Could Save up to 950 Stores

The retailer, which recently filed Chapter 11, inked a deal to sell its North American business and intellectual property.

Target CEO Brian Cornell and COO Michael Fiddelke
MajorsAug 21, 2025
Target Names New CEO as Sales Continue to Lag

Target CEO Brian Cornell will step down in February and be replaced by the company’s chief operating officer, Michael Fiddelke.

Jewelers of America in Washington DC
Policies & IssuesAug 21, 2025
JA, IDMA Talk Tariffs With Execs in DC

The group met with the president's senior trade advisor earlier this week to express the industry’s concerns about the effects of tariffs.

×

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