The Tiffany v. Costco Battle Wages On
Now returned to a lower court, the jeweler and the big-box retailer are locking horns over damages and Tiffany’s right to a jury trial.

Tiffany & Co. first took Costco Wholesale Corp. to court in 2013, suing the big-box retailer in New York federal court for trademark infringement, counterfeiting and unfair business practices for selling rings in its stores labeled as “Tiffany” that were not made by Tiffany.
Costco filed a countersuit, claiming the term “Tiffany setting” had become genericized and could be used by any company to describe a ring with multiple, slender prongs holding a single stone. It asked the court to invalidate any federal trademark registrations that would prevent other retailers from using the term “Tiffany setting.”
A federal judge ruled in Tiffany’s favor in 2015, granting the jeweler’s motion for summary judgment (a judgment entered by the court without a full trial) in the case.
A jury decided on damages, ordering Costco to pay Tiffany $5.5 million for unlawful profits ($3.7 million in direct profits and $1.8 million for additional benefits derived from the ring sales) and $8.25 million in punitive damages.
The judge trebled the $3.7 million to $11 million, bringing the total amount Costco was to pay Tiffany to $21 million.
Last August, however, the Second Circuit Court of Appeals vacated the summary judgment on appeal from Costco.
The judges ruled unanimously that if a jury had heard the case, “reasonable” jurors could find Costco’s use of the word “Tiffany” wasn’t likely to confuse customers or make them think Tiffany had produced or endorsed the rings.
The appeals court sent the case back to the district court, where Tiffany and Costco are now at odds over punitive damages and the issue of a jury.
Tiffany fired back earlier this month, arguing the district court has ruled multiple times—a total of six before this, in fact—that punitive damages are available to it under New York law and that “nothing material” has changed about the case since those prior rulings.
The court also previously determined that Tiffany is entitled to a jury and, the jeweler argued in its March 12 memo opposing the motion, one is needed to determine damages in the case.
The now LVMH-owned jeweler also pointed out Costco itself asked for the case to be presented to a jury when it filed its appeal.
According to a joint status report filed March 12, Tiffany will not consent to a virtual trial, but said it could be ready for an in-person trial by July, if one can be held safely by then.
Court papers also indicate a settlement is not out of the question.
The two parties had a settlement discussion prior to the case going to trial in 2016 and have had additional discussions since the ruling on the appeal. Those discussions are continuing.
Tiffany v. Costco is filed in U.S. District Court for the Southern District of New York.
The Latest

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

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

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

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

Sponsored by Clientbook


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

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

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

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

The singer’s new bling, reportedly a natural old mine-cut diamond, is no paper ring.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The pop-up will display this year's Tiffany & Co. Singles Championship trophies along with a diamond-encrusted tennis racket and ball.