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

Jacquie Aiche Lizzie Bracelet
CollectionsNov 05, 2024
Jacquie Aiche is Hosting an Online Treasure Hunt

One lucky winner will receive a “Lizzie” diamond bracelet.

Samantha Larson
IndependentsNov 05, 2024
Long's Jewelers Names New Director of Buying

Samantha Larson has joined the Boston-based retailer.

Emerging Jewelers Accelerator Program logo
Events & AwardsNov 05, 2024
JA, BIJC Now Accepting EJAP Applications for 2025

The Emerging Jewelers Accelerator Program will guide retail jewelry entrepreneurs through an eight-month educational curriculum.

Jewelers Mutual Group Cybersecurity
Brought to you by
Navigating Cybersecurity: Essential Guidance for Jewelers

From protecting customer data to safeguarding inventory records, it's crucial to learn how to tackle cybersecurity challenges.

Tiffany & Co. x CFDA Jewelry Designer Award
Events & AwardsNov 05, 2024
Tiffany & Co., CDFA Announce Design Award Finalists

Ten chosen designers will receive mentorship and participate in a design contest for the Tiffany & Co. x CFDA Jewelry Designer Award.

Weekly QuizOct 31, 2024
This Week’s Quiz
Test your jewelry news knowledge by answering these questions.
Take the Quiz
Dana J. Lorberg
MajorsNov 04, 2024
Jewelers Mutual Appoints Mastercard Exec to Its Board

Dana J. Lorberg brings 35 years of experience in finance, technology, and strategy to the role.

FBI robbery surveillance photo
CrimeNov 04, 2024
FBI Offering $15K Reward for Info on Halloween Mask-Wearing Robbers

The suspects are said to have been involved in the armed robberies of four jewelry stores across three Midwest states.

Article-Top-Image.jpg
Brought to you by
Enhance Your Expertise with IGI’s In-Person Courses in NYC

This fall, sharpen your skills in jewelry grading, quality control and diamond assessment.

Models wearing Black Sand Pebble ring and Surf bracelet
CollectionsNov 04, 2024
John Hardy’s New Jewels Turn the Black Sands of Bali into Diamonds

The new designs blend Creative Director Reed Krakoff’s aesthetic with the brand’s Balinese roots.

Jaeger-LeCoultre Reverso Tribute watch
IndependentsNov 04, 2024
Eiseman Jewels is Celebrating Watches All Month-Long

The Dallas-based jeweler will showcase timepieces from Cartier, IWC Schaffhausen, Jaeger-LeCoultre, Parmigiani Fleurier, and more.

Artist Reena Ahluwalia “Pristine” painting
SourcingNov 01, 2024
Reena Ahluwalia Donates Diamond Painting to Benefit CJA

The artwork, titled “Pristine,” was raffled off at the Canadian Jewellers Association’s recent summit.

Gunderson’s Jewelers in Omaha, Nebraska
IndependentsNov 01, 2024
Gunderson’s Jewelers Opens New Location in Nebraska

The new store features a custom design studio and a bridal salon.

Sydney Evan x Wicked “Spell Book” coin charm
CollectionsNov 01, 2024
Piece of the Week: Sydney Evan Gets ‘Wicked’

Designer Rosanne Karmes has created a collection to coincide with the release of the movie musical, which is expected to be a blockbuster.

Charles & Colvard moissanite ring
FinancialsOct 31, 2024
Charles & Colvard Faces Possible Nasdaq Delisting

The retailer said it will file the necessary paperwork to regain compliance as soon as it is able.

National Jeweler columnist Peter Smith
ColumnistsOct 31, 2024
Peter Smith: Nervous Flyers and Emotional Selling

Whether you’re calming the jittery gentleman in seat 13B or selling a diamond ring to a hesitant customer, an empathetic approach is best.

Annie E. Doresca, Grant Mobley, Alexis Padis, Terry Chandler
Events & AwardsOct 31, 2024
WJA Will Celebrate 4 Award Winners at ‘Future of Forty’ Gala

The gala includes a red carpet, music from DJ Renata, an awards program, and “mystery boxes.”

Instore show 2025
Events & AwardsOct 31, 2024
The Instore Show Returns To Chicago Area

The trade show, in its third year, will take place in late September at the Donald E. Stephens Convention Center in Rosemont, Illinois.

Constance Polamalu
Lab-GrownOct 31, 2024
Q&A: Constance Polamalu on Selling Natural and Lab-Grown Diamonds

The jeweler shared her change of heart on lab-grown diamonds and why she keeps them separate from natural diamonds in her business ventures.

Gem Awards New York City
Events & AwardsOct 30, 2024
These Designers, Journalists, and Retailers Are Up for a Gem Award

The 2025 Gem Awards are scheduled to take place March 14 at Cipriani 42nd Street in New York City.

Peggy Grosz
MajorsOct 30, 2024
Peggy Grosz Leaves Assael After Company Is Sold

Grosz had served as Assael’s senior vice president and creative director since 2017.

CD Peacock Love and Celebration Rings
CollectionsOct 30, 2024
CD Peacock Honors Its Hometown of Chicago in First Bridal Collection

“Love and Celebration” is the jeweler’s first in-house collection featuring engagement rings, wedding bands, and celebration rings.

Hands pushing a shopping cart
SurveysOct 30, 2024
Consumer Confidence Rebounds in October

A more positive view of the labor market contributed to the strongest monthly gain since March 2021.

Mejuri store
Events & AwardsOct 30, 2024
Mejuri to Award $50K in Scholarships to Jewelry Design Students

The funds will be distributed to schools in the U.S., Canada, and the U.K.

Jewelers’ Security Alliance President Jennifer Mulvihill
MajorsOct 29, 2024
Cybersecurity Expert Selected as President of Jewelers’ Security Alliance

Jennifer Mulvihill, the first woman to lead JSA in the organization’s 141-year history, takes over for the retiring John Kennedy.

20241030_NYCJW.jpg
Events & AwardsOct 29, 2024
The Can’t-Miss Events of 2024 New York City Jewelry Week

This year’s festivities include more than 100 experiences, such as designer showcases, panel discussions, and even a treasure hunt.

Edgar Mitchell’s Rolex GMT-Master Pepsi
AuctionsOct 29, 2024
Rolex Worn on Apollo 14 Mission Sells for More Than $2M

The GMT-Master “Pepsi” that belonged to astronaut Edgar Mitchell is one of two Apollo-flown Rolex watches ever sold at auction.

Pandora ambassadors Chloe Bailey, Halle Bailey, and Pamela Anderson
MajorsOct 29, 2024
Pandora’s Holiday Campaign, New Jewelry Celebrate Light and Love

The ads star brand ambassadors Chloe and Halle Bailey and Pamela Anderson.

×

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