Tiffany V. Costco Ruling: Keeping ‘Generic’ Label At Bay

Retail and Consumer Confidence
14/09/2015 23:34

Unlike the laundromat, aspirin and the Murphy bed, "Tiffany" is not (yet) a generic product, thanks to last week's ruling that US wholesale giant Costco committed trademark infringement by labeling its engagement rings as "Tiffany". Costco claimed in a countersuit that "Tiffany setting" is a generic term for any ring with prongs extending upward from a base to hold a single gemstone, but the court rejected this argument. Michelle Graff, from National Jeweler, writes that companies need to expend considerable time and resources to prevent their brand or brands from becoming genericized. 

JVC’s Cecilia Gardner told Graff that Xerox prominently and regularly publishes notices pointing out that Xerox is the name of a company, not the name for any photocopied pieces of paper or the action of copying them. Kimberly-Clark does the same thing in order to remind people that Kleenex is a trademarked brand, not a generic term for facial tissue. “Tiffany (in this case) needed to do the same to protect its intellectual property and to prevent the term (Tiffany) from gathering or acquiring a secondary meaning,” Gardner said. For the time being, however, anyone who uses the 178-year-old name is running a significant risk.