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    Mar 14

    Tiffany and CoNot long ago, we wrote about Tiffany’s trademark infringement case against Costco for engagement rings sold at Costco’s warehouse club. Although Costco is clearly in the wrong in this case, Tiffany may yet end up getting the short end of the stick. A popular and successful brand name can sometimes be devalued into a generic description of a type of product. When this happens, the brand name loses it’s unique qualities and the power of brand association. This is not something new; take Xerox as an example. Xerox was so dominate in the copying machine sector that its brand became synonymous with making copies. When their brand was disseminated into common speech, it was no longer a defensible trademark. Tiffany is now facing a counterclaim from Costco; who claim that the Tiffany brand has become devalued.

    Authentic Tiffany?

    Costco claims that the generic term for the setting they sold is “Tiffany.” A Tiffany setting, according to Costco, is one in which there are multiple prongs that reach upwards to hold a single diamond or gemstone. They further claim that the rings themselves were never sold as being Tiffany brand rings, but only that the setting was of the “Tiffany” style. Costco’s argument lies on the premise that the “Tiffany” setting has become a ubiquitous term, and that the usage of the term is so common that Tiffany has lost the right to enforce their trademark.

    You Must Fight For Your Right

    The case could have important repercussions for the diamond industry. It’s not just company brand names, like Tiffany, that need to be defended. There are many trademarked brand name perfect cuts, like Hearts on Fire, that may also be vulnerable to dilution. Costco’s counterclaim states that they have used the term “Tiffany setting” for years and that they are only just now being sued over it. This plays into Costco’s favor as the longer a trademark is used without an infringement claim, the stronger the implication that the term is no longer salvageable as a true trademark. While no company can stop the general populous from adopting a brand name as a descriptive term, strong efforts should be made to prevent competitors from diluting their brand. Those in the diamond industry who wish to retain their trademark rights should pursue all infringements of their trademarks to the maximum extent of the law, and do so with all haste.  Those who wait may find themselves in a losing battle to defend a diluted trademark.

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