Costco Wholesale Corp. is punching back at Tiffany & Co., after the luxe jeweler sued the warehouse club for selling unauthorized Tiffany-branded engagement rings in its stores.
The big box retailer denied ever selling Tiffany-branded baubles, instead claiming that it only used the words “Tiffany setting” to describe the ring setting.
In counterclaims, which were filed in Manhattan federal court on Friday, Costco said “the word Tiffany is a generic term for ring settings comprising multiple slender prongs extending upward from a base to hold a single gemstone.”
Citing multiple examples of dictionary entries, references and advertising using the word “Tiffany” to denote a type or style of ring setting, Costco said it has “sold unbranded rings having Tiffany settings for many years.”
The jeweler became aware of the situation last November, and a month later sent out a cease-and-desist letter. Costco immediately took down the signage, but according to Tiffany intangible damage had been sustained. The New York-based retailer is looking for a permanent injunction and damages, which will be decided by the court.
In its counterclaims, Costco argued that Tiffany “falsely accused” it of using “counterfeit trademarks and selling counterfeit Tiffany rings.” The rings, which were unbranded, included Tiffany settings and were “accurately described as such on in-store signs,” Costco’s lawyers said.
“Diamond rings purchased at Costco come in plain beige outer gift boxes unlike rings sold by Tiffany & Co., which come in blue outer gift boxes bearing the name Tiffany & Co.,” attorneys noted, adding that rings purchased at Costco are unbranded and come with receipts that clearly indicate their origin of purchase — Costco.
In a bold move, Costco not only denied having infringed on Tiffany’s trademarks, but it also asked the court to permanently ban Tiffany from claiming it controls the name of the ring setting, which Costco deems as “generic.” As a result, Costco said it wants court-ordered changes to the federal trademark registration, which Tiffany is putting forward as evidence.
The wholesaler also wants Tiffany to “admit” that its well-publicized lawsuit against Omega SA was “dismissed on grounds of copyright misuse.” In its complaint, Tiffany had cited the lawsuit, implying that the cases had similarities, Costco said.
Finally, Costco is looking for the court to drop Tiffany’s lawsuit and award it any equitable relief it deems proper.
EXCLUSIVE: @tomford is opening its first-ever beauty store. The boutique, which opens November 20 in London’s Covent Gardens, was designed with the over-the-top glam Ford is known for. Read the full story on WWD.com, link in bio. #wwdbeauty #wwdnews (📷: Simon Wagner) #TomFordBeauty
New York-based DJ @harleyvnewton threw a party to celebrate the holiday collection of her dress and pajama line @hvn at the Ladurée Beverly Hills. It Girls @katebosworth, @rashidajones and more joined in on the fun, which included cocktails, croque monsieur sandwiches and a photo booth. #wwdfashion (📷: Owen Kolasinski/BFA.com)
For the holidays, @Burberry partnered with 20-year-old artist @blondeymccoy on a series of three outdoor murals in downtown Manhattan. The murals are McCoy’s interpretation of a Christmas eve party, the idea of charity and the spirit of family. His third mural, pictured here, is the most personal. The image depicts McCoy’s grandparents and father in London’s Trafalgar Square in the Seventies. “My work often features lots of sentimental objects.” #wwdeye
For spring 2018, designers applied bold colors and cartoonish motifs on everything from sneakers and belts to key chains. See all the top men’s accessories trends on WWD.com. #wwdtrends (📷: George Chinsee; Prop Styling by @rnasti; Market Editor: @luiscampuzano)
The @dior-sponsored @guggenheim international gala pre-party has a history of drawing cool-girl musical acts to serenade the crowd –– and last night was no exception. @haimtheband performed songs both new and old, and lured a star-studded audience with the likes of Rebecca Hall, Kate Mara, Mamoudou Athie and more. #wwdeye (📷: @lexieblacklock)
In a partnership between the @metopera and the @englishnationalopera, “Marnie” was born. The opera, with costumes sponsored by @mrporterlive, is an adaptation of the 1961 thriller by Winston Graham. Arianne Phillips, who created the costumes, is no rookie: She’s styled Madonna for her tours and created costumes for a myriad of films in the past. Read WWD’s interview with Phillips, where she talks about her inspiration for the opera’s costumes on WWD.com #wwdfashion
@barneysnyc took a different approach to their holiday windows this year. Instead of Christmas decor, Barneys tapped @thehaasbrothers to tell a story of positivity, gratitude and inclusivity via heartwarming silliness and humor. “It’s about kids and it’s about coming together and being family and loving each other,” said Simon Haas. #wwdfashion (📷: @joshuascottphoto)
Beauty influencer @kandeejohnson makes her foray into hair care with a collaboration with @ogx_beauty — making it the first time that OGX has teamed up for a product creation. The collab includes shampoos and conditioners in three scents. At 39 and a mom, Johnson is a different profile than the emerging social media stars, but is considered one of the pioneers of the digital beauty influencer world. Read WWD’s interview with her on wwd.com, including the strangest beauty product she’s ever tried #wwdbeauty