In a blow to the storied jeweler, the Southern District of New York recently denied Tiffany & Co.’s attempt to dispose by summary judgment of Costco’s counterclaim for declaratory judgment that the TIFFANY mark has become generic for a ring setting “comprised of multiple slender prongs extending upward from a base to a single gemstone.”  Tiffany & Co. v. Costco Wholesale Corp,2014 BL 13746 (January 17, 2014, SDNY).

The suit arose from Costco’s sale of two styles of engagement rings identifying two rings, not manufactured by Tiffany & Co., as “Tiffany” settings. Tiffany sued for infringement citing numerous (97) federal registrations and asserting its exclusive right to use “Tiffany setting” to identify one of its ring settings, namely, a solitaire diamond set with six prongs. In response, Costco counterclaimed, asserting the right, “in common with the rest of the American public,” to make a generic or at least descriptive use of the term “Tiffany” to identify this type of setting.

In support of the counterclaim, Costco submitted excerpts from dictionary definitions of “Tiffany” and “Tiffany setting”; evidence of generic use of “Tiffany setting” by other jewelry manufacturers and retailers, examples of generic use of “Tiffany setting” in publications, and a preliminary expert report from a lexicographer in support of its claim that the TIFFANY mark had fallen victim to “genericide.” Emphasizing that summary judgment is only appropriate in those narrow circumstances where a movant is able to demonstrate that there is “no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law,” that the court must draw all reasonable inferences in favor of the non-movant, and that the question of genericism is generally considered a question of fact, the SDNY concluded that Costco’s preliminary evidence was sufficient to establish a genuine factual dispute as to whether “Tiffany” and “Tiffany Setting” have a primarily generic meaning in the minds of the general public relative to ring settings. The court order, however, offered dismissal without prejudice to Tiffany’s right to renew the motion following discovery.