Tiffany's original lawsuit against Costco, in February this year, did not accuse the supermarket giant of using the phrase “Tiffany setting”. It alleged the defendant used the mark “Tiffany” alone to describe two multi-thousand dollar engagement rings, the styles of which replicated a ring with a real “Tiffany® setting”.
It added that Costco knowingly and wilfully violated its trademark by promoting and selling rings as ''Tiffany,'' when in fact Tiffany & Co did not make the rings.
Costco sought to have the case dismissed on the grounds that the ''Tiffany setting'' should be a generic term and therefore unenforceable as a trademark, according to papers submitted before the US District Court of New York.
The plaintiff’s (Tiffany & Co) lawyers argue that Costco is not seeking authority to use a mark similar to ''Tiffany,'' but rather it is asking the court to declare everyone is free to use the identical mark for certain jewellery products, as if there was no registration at all.
According to Tiffany & Co’s lawyers, the company does not claim an exclusive right to the prong design it originated, a point they say Costco intentionally confuses.
''What Tiffany does have, however, is the exclusive right to use its incontestable and famous trademark 'Tiffany' for any jewellery product or design, including its own 'setting' made to Tiffany’s proprietary and exacting standards.”
The lawyers continue: ''The mark 'Tiffany' identifies the source of Tiffany’s own products and designs, a fundamental purpose for trademark protection. Tiffany has the exclusive right to use its mark as an adjective alongside any noun that designates a jewellery product or design, whether that word is setting, diamond, jewellery, bracelet or anything else.
“Such a use cannot turn the word 'Tiffany' generic, no matter how successful the modified noun becomes as a product or design.''
To reinforce their point, Tiffany & Co’s attorney used Coke, the trademark held by the Coca Cola Company, as an illustration of how words were used colloquially to describe certain products but were still protected by trademark.
“Costco, which also manufactures products under its Kirkland Signature house brand, cannot call its own soft drink 'Coke flavour' even if its taste mimics that of real Coke.
“Trademarks distinguish products of one manufacturer from another. The more famous the product, the more valuable trademark protection becomes.”
Tiffany & Co said using its trademark as an adjective to modify the noun setting, was no different than in other circumstances where the company owns and controls 97 separate trademarks.
The court is yet to rule on the suit or countersuit.
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