MajorsOct 29, 2020
LVMH Snags Tiffany at Lower PriceMajorsMar 24, 2021
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 and Costco’s fight over the term “Tiffany Setting” continues, with the two battling it out over punitive damages and a jury trial. (Photo ® Tiffany & Co.)
New York—The battle wages on between Tiffany and Costco in what is a formative case for the jewelry industry regarding the use of the term “Tiffany setting.”
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.
Related stories will be right here …
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.
On Feb. 12, Costco filed a motion in limine seeking to prevent a jury trial in the case and blocking Tiffany from seeking punitive damages on grounds the jeweler needs to prove lost profits (which it is not seeking in the case) before it can ask for punitive damages.
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.
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.
When, or if, another trial might take place remains unclear.
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.
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.
More on Majors
The Latest
Events & AwardsJun 06, 2025
Here Are the 2025 Retailer Hall of Fame InducteesThis year’s honorees include a Midwest retailer and two multi-store independents, one in New York and the other in New England.
CollectionsJun 06, 2025
Piece of the Week: Harwell Godfrey’s ‘Granny Squares Eleanor’ Necklace As an homage to iconic crochet blankets, the necklace features the nostalgic motif through a kaleidoscope of cabochon-cut stones.
Events & AwardsJun 05, 2025
The 12 Fresh Faces in Couture’s Design AtelierDiscover the dozen up-and-coming brands exhibiting in the Design Atelier for the first time.
Brought to you by
The True Power Behind the Counter: Why Sales Associates Are the Heart of the Jewelry BusinessWhen investing in your jewelry business, it's important not to overlook the most crucial element of success: the sales associates.
SourcingJun 05, 2025
A Rare Suite of Rubies Has Arrived in Las VegasThe “Royal Ruby” Collection is a quintet of untreated rubies curated by collector Jack Abraham.
Weekly QuizJun 05, 2025
This Week’s QuizTest your jewelry news knowledge by answering these questions.
Events & AwardsJun 05, 2025
Daymond John to Give Keynote at JCK Las VegasThe entrepreneur and “Shark Tank” star will share his top tips for success.
Events & AwardsJun 05, 2025
Zillion Announces 'Women in STEM' Scholarship RecipientMeredith Tiderington, an electrical engineering student, was selected for the award.
Brought to you by
Clienteling Isn’t a Buzzword. It’s an Essential Business Model.More shoppers are walking out without buying. Here’s how smart jewelers can bring them back—and the tool they need to do it right.
Lab-GrownJun 04, 2025
GIA Reverting to More General Terminology for Lab-Grown DiamondsIt will quit assigning the stones specific color and clarity grades in favor of applying “new descriptive terminology.”
Events & AwardsJun 04, 2025
As JCK Talks Returns, Don’t Miss These 12 SessionsFrom design trends to sustainability, here’s a roundup of can’t-miss education sessions at JCK Las Vegas.
CrimeJun 04, 2025
10 Safety Tips for the Las Vegas Shows The Jewelers’ Security Alliance offers advice for those attending the annual trade shows.
CollectionsJun 03, 2025
In Her Latest Collection, Viviana Langhoff Is Leaning Into GoldThe designer is embracing bold pieces with weight to them in “AU79,” a collection she celebrated with a creative launch party.
FinancialsJun 03, 2025
Signet Jewelers Sees Turnaround in Q1 With Sales Ticking Up 2%On an earnings call, CEO J.K. Symancyk discussed what’s working for the company and how it’s preparing for the potential impact of tariffs.
SurveysJun 03, 2025
Consumer Confidence Improves in May The index partially rebounded after months of decline, due in part to the U.S.-China deal to temporarily reduce import tariffs.
CollectionsJun 03, 2025
Dakota Johnson Is Roberto Coin’s New Brand AmbassadorThe actress stars in the latest campaign set in Venice, Italy, and is set to participate in other creative initiatives for the jeweler.
GradingJun 03, 2025
Mason-Kay Jade Adds ‘Fei Cui’ to Jade ReportsThe company has joined other labs, including GIA and Lotus Gemology, in adopting the Chinese term for "jadeite jade."
SourcingJun 02, 2025
Gemfields’ June Auction to Include 36-Carat RubyThe large stone will be offered at its June sale along with a selection of secondary-type rubies from a new area of the Montepuez mine.
GradingJun 02, 2025
GSI Opens New Lab in Thailand Located in Bangkok, the laboratory is Gemological Science International’s 14th location worldwide.
TrendsJun 02, 2025
Amanda’s Style File: Three Gems for June Those born in June have a myriad of options for their birthstone jewelry.
SourcingJun 02, 2025
David Allouche Joins Grandview Klein DiamondsThe diamond industry veteran has been named its senior sales executive.
FinancialsMay 30, 2025
Movado’s Q1 Sales Slip Amid ‘Challenging’ Retail Environment The company plans to raise the prices of select watches to offset the impact of tariffs.
Policies & IssuesMay 30, 2025
Tariffs & Designers: Navigating Pricing in an Unstable EnvironmentBetween tariffs and the sky-high cost of gold, designers enter this year’s Las Vegas shows with a lot of questions and few answers.
CollectionsMay 30, 2025
Piece of the Week: Renato Cipullo’s ‘Hematite Blaze’ NecklaceDesigned by founder Renato and his daughter Serena Cipullo, it showcases a flame motif representing unity and the power of gathering.
Policies & IssuesMay 30, 2025
Trade Court Declares Trump’s Tariffs InvalidHowever, the tariffs remain in effect in the short term, as an appeals court has stayed the U.S. Court of International Trade’s decision.
CollectionsMay 29, 2025
Britney Spears Files Trademark for New Jewelry LineThe pop icon is one step closer to launching her “B Tiny” jewelry collection, a collection she first began posting about last fall.
Supplier BulletinMay 29, 2025
Inoveo Platinum Grain, Exclusively Distributed by StullerSponsored by Stuller
SourcingMay 29, 2025
Grizzly Auctions 6,620-Carat EmeraldIt was featured in the miner’s latest sale, which brought in $24.8 million.
