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.
Editors' Picks
Sponsored by
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
FinancialsAug 08, 2025
Brilliant Earth’s Q2 Sales Up 3% as Engagement Ring Sales RiseThe company raised its full-year sales guidance while noting it has not yet assessed the potential impact of the latest tariff news.
Events & AwardsAug 08, 2025
GJEPC’s Jewellers for Hope Celebrates 10 Years of FundraisingThe organization has raised more than $1.3 million for charity since its inception.
TrendsAug 08, 2025
Piece of the Week: Rahaminov Diamonds’ Bezel BangleThe brand’s latest iteration of a bezel-set diamond bangle features clean lines and a timeless design for a new modern silhouette.
Brought to you by
Taking the Moment Head On: How Rio Grande Champions the Present & Future of Fine JewelryAs a leading global jewelry supplier, Rio Grande is rapidly expanding and developing new solutions to meet the needs of jewelers worldwide.
WatchesAug 07, 2025
Bulova’s New Collection Honors Tony BennettThe first watch in the series commemorates his participation in the Civil Rights movement, marching from Selma to Montgomery in 1965.
Weekly QuizAug 08, 2025
This Week’s QuizTest your jewelry news knowledge by answering these questions.
Lab-GrownAug 07, 2025
Chatham Releases Catalog for Loose Lab-Grown GemstonesThe catalog contains a complete listing of all the loose gemstones in stock, as well as information about the properties of each stone.
TechnologyAug 07, 2025
Rembrandt Charms Debuts New Website, Bird CharmsThe company added a retailer dashboard to its site and three new birds to its charm collection, the cardinal, blue jay, and hummingbird.
Brought to you by
Investing in the Next Generation of Bench JewelersThe Seymour & Evelyn Holtzman Bench Scholarship from Jewelers of America returns for a second year.
Policies & IssuesAug 06, 2025
Tariff on India to Rise to 50%, Trump Says An additional 25 percent tariff has been added to the previously announced 25 percent.
IndependentsAug 06, 2025
Smith & Son Jewelers to Close 107-Year-Old Location Its Springfield, Massachusetts, store is set to close as owner Andrew Smith heads into retirement.
CollectionsAug 06, 2025
Zahn-Z Swims With Whales in ‘Beluga’ CollectionDesigner Hiba Husayni looked to the whale’s melon shaped-head, blowhole, and fluke for her new chunky gold offerings.
TrendsAug 06, 2025
Paola De Luca to Release Trendbook 2027+She will present the 23rd edition of the trend forecasting book at Vicenzaoro on Sept. 7.
CrimeAug 05, 2025
Report: Suspect Arrested in 1992 Murder of Miami JewelerOmar Roy, 72, was arrested in connection with the murder of jeweler Dionisio Carlos Valladares.
CollectionsAug 05, 2025
Mignon Faget Commemorates 20th Anniversary of Hurricane KatrinaThe New Orleans-based brand’s “Beyond Katrina” jewels honor the communities affected by the storm.
ColumnistsAug 05, 2025
The PR Adviser: Affiliate Marketing Is the Cost of CoverageLilian Raji explains why joining an affiliate network is essential for brands seeking placements in U.S. consumer publications.
Events & AwardsAug 05, 2025
JA Announces Seymour & Evelyn Holtzman Bench Scholarship WinnersThe organization has awarded a total of $42,000 through its scholarship programs this year.
Events & AwardsAug 04, 2025
Gem Awards, David Yurman Introduce $50K Grant for Emerging DesignersThe winner of the inaugural David Yurman Gem Awards Grant will be announced live at the 2026 Gem Awards gala.
TrendsAug 04, 2025
Amanda’s Style File: August’s Bright BaublesAs summer winds down, celebrate the sunny disposition of the month’s birthstones: peridot and spinel.
CrimeAug 04, 2025
‘The Watch King’ Assaulted, Robbed in QueensMoshe Haimoff, a social media personality and 47th Street retailer, was robbed of $559,000 worth of jewelry by men in construction outfits.
MajorsAug 01, 2025
Helzberg President Julie Yoakum Moves Over to Signet JewelersThe addition of Yoakum, who will lead Kay and Peoples, was one of three executive appointments Signet announced Thursday.
MajorsAug 01, 2025
Jewelers Mutual Names Mike Alexander as President The insurance company’s previous president and CEO, Scott Murphy, has split his role and will continue as CEO.
SourcingAug 01, 2025
Gemfields’ Auction Revenue Drops 50% in H1The nearly six-month pause of operations at its Kagem emerald mine earlier this year impacted the miner’s first-half results.
CollectionsAug 01, 2025
Piece of the Week: Hernsdorf’s ‘Tears of Aphrodite’ NecklaceThe necklace uses spinel drops to immortalize the moment Aphrodite’s tears mixed with her lover Adonis’ blood after he was fatally wounded.
SourcingJul 31, 2025
De Beers Records $189M First-Half Loss The diamond miner and marketer warned last week that it expected to be in the red after significantly cutting prices in Q2.
Events & AwardsJul 31, 2025
These Are the 2025 CASE Award WinnersJewelers of America’s 35th annual design contest recognized creativity, artistry, style, and excellence.
IndependentsJul 31, 2025
Matthew Tratner Takes Over as CBG President Tratner succeeds Andie Weinman, who will begin stepping back from the buying group’s day-to-day operations.
Policies & IssuesJul 30, 2025
Tariff on India Will Be 25%, Trump Says The president made the announcement via Truth Social Wednesday, adding that India also will face a penalty for its dealings with Russia.
