A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Court Declines to Dismiss Claim to Declare “Tiffany Setting” Generic for Rings

In a January 17, 2014 ruling, Judge Laura Taylor Swain denied Tiffany and Company’s motion to dismiss Costco Wholesale Corporation’s counterclaim to declare the term “Tiffany setting” to be generic for a ring “‘setting comprising multiple slender prongs extending upward from a base to hold a single gemstone.’” Costco advertised two rings it sold at one of its stores as having a “Tiffany setting,” and Tiffany sued for statutory and common law trademark infringement. Costco counterclaimed for declaratory relief to declare the term “Tiffany setting” generic as applied to rings, and Tiffany then moved for summary judgment or judgment on the pleadings.

The Court first noted that although the “Tiffany” mark had first been applied to jewelry in 1868 and the registered mark had long since become “incontestable,” “[e]ven an incontestable or famous mark can become generic and lose protection.” Judge Swain further wrote that a “court may partially cancel or limit a registered trademark if only one use of the trademarked term has become generic.”

In deciding the motion, the Court observed that only “‘in the rarest of cases may summary judgment be granted against a plaintiff who has not been afforded the opportunity to conduct discovery.’” Judge Swain also noted that the “question of whether a mark is, or has become, generic is generally one of fact.” Judge Swain then denied summary judgment, writing that in “support of its argument that ‘Tiffany’ has acquired a generic meaning when used to refer to a type or style of ring setting, Costco offers excerpts from dictionary definitions of ‘tiffany’ and ‘Tiffany setting,’ a preliminary report by a lexicographer, evidence of generic use of the term ‘Tiffany setting’ by jewelry manufacturers, retailers and consumers, and examples of the generic use of the term ‘tiffany setting’ in publications.” The Court cautioned that “none of this evidence is by any means conclusive of the proposition” of genericness “advanced by Costco,” but that it is sufficient at the “pre-discovery” phase to defeat summary judgment.
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