Federal court: The term "Tiffany setting" might be generic, and the question is (probably) one for a jury (+ AmLaw gives me ink)

Posted by Charles Colman

Yep, that sounds about right.

LAW OF FASHION sends a hearty "thank you" to Jan Wolfe, reporter at The Litigation Daily (an American Lawyer publication), for giving me some "told you so" props in his article, "Will Tiffany Regret Suing Costco?", which examines Judge Laura Swain's recent decision in the Tiffany v. Costco case.

Wolfe reports:

In a well-publicized trademark fight between the two companies, Tiffany is now at risk of losing its trademark on the term 'Tiffany setting.' U.S. District Judge Laura Taylor Swain in Manhattan has held that a jury could reasonably find that the term is generic and the trademark [thus] invalid.

Later in the piece, Wolfe writes:

At least one trademark litigator questioned Tiffany's litigation strategy back in March. 'This case might have repercussions that the jewelry company should have anticipated—but apparently did not,' New York University School of Law acting assistant professor Charles Colman told the jewelry trade publication JCK. 'When cases are brought for reasons having more to do with business than law, they have a way of backfiring.'

Of course, litigation is very often brought for "business" reasons; a company's bottom line might well be impacted by (at least someactual trademark infringement, after all.  But when questionable IP infringement suits are brought perhaps because certain high-end jewelry companies are anxious about the growing market share of discount retailers like Costco and perhaps because said jewelry companies see the potential to manipulate trademark law to stem the tide, well, that's a very different -- and, from the judiciary's perspective, one imagines, rather unappealing -- narrative.  (Thanks to the-industry-veteran-you-know-who-you-are for the input.)

So, Tiffany, in the mood for some single-colors-as-trademarks litigation?  I have a little doctrinal proposal that might just find its way into an amicus brief...


  Tiffany and Co. v. Costco Wholesale Corp., 13 Civ. 1041 (LTS)(DCF) (S.D.N.Y. Jan. 17, 2014)



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