On September 29, following two years of litigation, a Manhattan federal jury handed down a $5.5 million verdict in damages against Costco Wholesale Corp., along with an additional $8.25 million in punitive damages, for infringing jeweler Tiffany & Co.’s registered trademark “Tiffany.”
District court judge Laura Swain ruled last year that Tiffany & Co. satisfactorily demonstrated that their trademark was entitled to protection, and that Costco’s use of the mark likely caused consumer confusion. In the damages phase of the case, which began on September 20, Tiffany argued that it was entitled to millions in damages. Costco argued the proper amount was in the hundreds of thousands, and called the entire lawsuit a “publicity stunt” for the jeweler. The jury decided upon a total $13.75 million in damages after a two-week trial and three full days of deliberation.
The alleged infringements concerned the design and sale of two styles of engagement rings, neither of which were manufactured by Tiffany & Co. but were sold by Costco and advertised as “Platinum Tiffany.” Costco argued in the initial suit, as a counterclaim, that “Tiffany” was a generic term that could be attributed to a certain ring style and setting, and thus the trademark registration was invalid. Tiffany initiated the lawsuit against Costco on 2013.
Pete Bush, “Jury Hammers Costco for Selling Infringing ‘Tiffany’ Rings,” Law360 (September 29, 2016), https://www.law360.com/ip/articles/846292/jury-hammers-costco-for-selling-infringing-tiffany-rings.
Pete Bush, “Jury Hits Costco for $8.28M Over Sale of ‘Tiffany’ Rings,” Law360 (October 5, 2016), https://www.law360.com/articles/848290/jury-hits-costco-for-8-25m-over-sale-of-tiffany-rings.
Pete Bush, “Tiffany’s Damages Case A Publicity Stunt,” Law360 (September 28, 2016), https://www.law360.com/articles/845762.
Phil Wahba, “Costco Now Has to Pay $8.25 Million in Punitive Damages for Selling Fake Tiffany Rings,” Fortune.com (Oct. 5, 2016, 5:44 PM), http://fortune.com/2016/10/05/costco-tiffany-jewelry/.
Tiffany & Co. v. Costco Wholesale Corp., 127 F. Supp. 3d 241 (S.D.N.Y. 2015), appeal dismissed (Nov. 10, 2015).