994 F. Supp. 2d 474
S.D.N.Y.2014Background
- Tiffany owns multiple registered trademarks for the word/mark “Tiffany,” including long‑standing Class 14 and stylized Class 28 registrations and sells a six‑prong solitaire called the “Tiffany® Setting.”
- Costco sold non‑Tiffany‑made engagement rings at its stores labeled with the word "Tiffany" in POS signs and has used the phrase "tiffany setting" in some online listings; Tiffany sued for trademark infringement and related claims.
- Costco counterclaimed seeking (a) a declaration that “Tiffany” is generic as to a type of prong ring setting, (b) cancellation or restriction of Tiffany’s registrations to exclude that generic meaning, and (c) a finding that Costco’s prior uses did not infringe.
- Tiffany moved to dismiss Costco’s counterclaim (treated as a motion for summary judgment because both sides submitted extrinsic evidence) arguing the mark is valid, incontestable, and not generic.
- Costco submitted dictionaries, a lexicographer’s report, industry and media uses, and other evidence to show possible generic use of “Tiffany”/“Tiffany setting” for a pronged solitaire style.
- The Court held that the question whether the mark (or part of its uses) is generic is a factual issue and that Costco’s evidence sufficed to create a genuine dispute, so Tiffany’s motion was denied without prejudice to renewal after discovery.
Issues
| Issue | Plaintiff's Argument (Tiffany) | Defendant's Argument (Costco) | Held |
|---|---|---|---|
| Whether Tiffany’s registered marks are invalid because the term “Tiffany” is generic for a prong ring setting | Marks are valid, incontestable, identify source, not generic | “Tiffany” (or “Tiffany setting”) is used generically to denote a style of pronged solitaire and should not foreclose others | Denied summary judgment for Tiffany: factual dispute exists on genericness; issue for resolution after discovery |
| Whether the registrations should be partially cancelled or restricted to exclude the generic setting meaning | Registrations cover Tiffany’s goods and must remain intact | At least partial genericization is possible and the register should be rectified accordingly | Denied as a matter of law at summary stage; partial genericization is a question of fact |
| Whether Costco’s past uses infringed Tiffany’s rights | Tiffany contends prior uses were infringing | Costco contends its past uses were noninfringing descriptive/generic uses | Court declined to decide; factual dispute remains and summary judgment denied |
| Whether summary judgment is appropriate before discovery on factual genericness issues | Tiffany argues the record disposes of Costco’s counterclaim | Costco argues it needs discovery; its submitted evidence creates triable issues | Court: because extrinsic evidence and factual disputes exist, summary judgment denied; discovery permitted |
Key Cases Cited
- Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (U.S. 1985) (incontestable registration generally conclusive but can be canceled if mark becomes generic)
- Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373 (2d Cir. 2005) (trademark strength spectrum and generic mark definition)
- Feathercombs, Inc. v. Solo Prods. Corp., 306 F.2d 251 (2d Cir. 1962) (primary significance test for genericness)
- Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976) (partial genericization and differing categories/markets)
- Bristol-Myers Squibb Co. v. McNeil-P.P.C. Inc., 973 F.2d 1033 (2d Cir. 1992) (genericness is generally a question of fact)