New York Trademark Attorney Blog
This blog post is a follow-up to our post entitled, Has One Of Tiffany And Company’s Trademarks Become Generic? posted on February 14, 2014. The U.S. District Court for the Southern District of New York answered the question we asked in our previous post after a two year court battle and the answer is no. Costco Wholesale Corporation (“Costco), the discount retailer displayed the term TIFFANY next to several diamond rings for sale, none of which were manufactured by Tiffany & Co. (“Tiffany”). Tiffany filed a lawsuit alleging trademark infringement, false advertising, unfair competition, counterfeiting, and dilution among other claims.
Costco counterclaimed alleging that the term Tiffany is generic for ring settings with six prongs. A trademark can become generic if the meaning becomes associated with the category of goods and services and the mark can no longer distinguish the goods and services on the basis of source. Essentially, Costco was alleging that the public had appropriated the term Tiffany to mean all rings with a particular setting type. See our blog post of February 14, 2014 where we discuss the legal concept of genericide.
Tiffany offered a significant amount of evidence to rebut Costco’s genericism claim. Among the evidence was a study of consumers. The study consisted of a survey administered to 464 men and women over the age of 21. The studied group received training for the survey. The group was first given a list of words and was asked to identify which words were brand names and which were descriptive terms. Then, they were each given a context to evaluate whether the term Tiffany was a brand name or a descriptive term. Nine out of ten of the prospective consumers considered Tiffany to be a brand identifier. Costco submitted evidence to rebut the survey. However, Costco was unable to raise a material issue of fact with respect to whether the primary significance of the Tiffany mark to the relevant public was a generic descriptor or a brand identifier. Therefore, the Court held that the counterclaim would be dismissed.