Edward Weisz and Keren Goldberger co-authored an article about how the Second Circuit Court of Appeals recently made clear that Tiffany’s 73 trademarks — many registered in connection with jewelry — will not protect it against others using “Tiffany” when that term has become commonly used to describe a particular six-prong diamond ring setting. Thus, anyone — even a discount retailer like Costco — can use it to describe that particular ring setting.
On Valentine’s Day 2013, Tiffany and Co. sued Costco, alleging that Costco was infringing the Tiffany trademark by using it to market a certain style of diamond engagement ring. On Aug. 17, 2020, the Second Circuit threw out a million-dollar judgment against Costco, remanding the case for trial. The court noted that the term “Tiffany” could identify the source of goods but could also describe a certain ring setting. In other words, a “Tiffany setting” became the generic term for a specific six-prong solitaire diamond or engagement ring. Therefore, “Tiffany setting” could be used by anyone to describe such a product. After the Second Circuit remanded the case for trial, the parties settled on July 19, 2021, and filed a dismissal with prejudice, meaning Tiffany cannot bring the lawsuit again.
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