Costco Wholesale Corp. has asked a New York federal judge to rule that Tiffany setting is a generic term, not a trademark of the legendary retailer.
“The word Tiffany is a generic term for ring settings comprising multiple slender prongs extending upward from a base to hold a single gemstone,” wrote company lawyers, in legal papers filed March 8. “Costco has sold unbranded rings with Tiffany settings for years.”
The discount giant was responding to a Feb. 14 lawsuit from Tiffany & Co., which claimed that Costco was selling counterfeit rings falsely advertised as Tiffany.
Costco’s counterclaim asks that Tiffany “be prohibited and enjoined from ever again asserting false claims of right to exclude use of Tiffany as a generic term of a style or type of a ring setting,” and requests that the retailer’s registrations for the term be cancelled.
The claim includes samples from books like Wedding Planning for Dummies and Dictionary of Gems and Gemology as well as different advertisements that use the term Tiffany setting.
The warehouse company’s response also stresses that it does not sell counterfeits.
“Costco has never purported to sell ‘Tiffany rings,’” said the statement, “as distinct from unbranded rings having Tiffany settings.”
It argues that the rings in question have no brand name embossed on them, are returnable at Costco, and come with a Costco appraisal.
In response, Tiffany & Co. spokeswoman Linda Buckley says the Costco filing is an attempt to “muddy the waters.”
“When Costco used the [Tiffany] trademark to refer to goods that had nothing whatsoever to do with Tiffany & Co., they infringed Tiffany’s trademark, while damaging both their own customers and the Tiffany brand,” she adds. “Costco’s counterclaim is an unfounded and weak attempt to defend its willful and infringing use of the Tiffany trademark. We look forward to proving this in the upcoming court case.”