Tiffany - the Legalities and the Linguistics
August 26, 20
When is a Tiffany ring not a Tiffany ring?
That depends whether you ask Tiffany and Co, the iconic New York-based jeweler or Costco, the world's biggest warehouse retailer.
And it depends on whether Tiffany has become a "genericized trademark". Or not.
This is a story as much about linguistics as it is about legality, and how seven letters that identify both a luxury jeweler and its solitaire setting may or may not have lost their trademark status as they slip (or not) into common parlance.
Costco argues that "Tiffany" refers to the setting, and has never suggested its rings come from the luxury jewelry store founded in 1837 by Charles Lewis Tiffany.
The setting, introduced by Tiffany in 1886, transformed the engagement ring.
Until then diamonds were set in a bezel so that only the crown was visible, and much of the main attraction was obscured by metal.
The Tiffany setting firmly secured the diamond while exposing far more of the stone than ever before and allowing light to strike it from more angles for maximum brilliance.
We'll get to linguistics and genericized trademarks, but first the legal background.
Tiffany & Co. was concerned that Costco had been selling what it described as "Tiffany" engagement rings of "inferior" quality and supplied by other manufacturers.
Costco agreed to amend the way it marketed the diamond solitaires but refused to drop the word Tiffany, claiming it referred to the six-pronged pioneered by Tiffany & Co, rather than the jeweler itself.
That didn't wash with Tiffany & Co. It issued proceedings against Costco on Valentine's Day 2013, alleging trademark infringement, counterfeiting, and unfair business practices.
In 2015 the U.S. District Court for the Southern District of New York ruled in 2015 that Costco had indeed confused customers by using the word Tiffany. Its conduct amounted to "gross, wanton or willful fraud," the judge said.
Costco was ordered to stop "using the mark Tiffany as a standalone term, not combined with any immediately following modifiers such as 'setting,' 'style' or 'set' in connection with its advertisement and/or sale of any products not manufactured by Tiffany's or its affiliates."
After further court hearings, Costco was ordered to pay $21m.
That decision was overturned last week by the 2nd U.S. Circuit Court of Appeals in Manhattan. In a 3-0 ruling the judges concluded customers would understand that Tiffany meant Tiffany setting, not Tiffany & Co. They would not be fooled into thinking the rings they were buying had been made by Tiffany & Co. The trademark and counterfeiting case will now go to a new trial.
Now for the linguistics. Many brand names become so much a part of our language that we don't realize they actually are, or were, a registered trademark.
Reach for a Kleenex, relax in a Jacuzzi, borrow a Biro, scribble a Post-It note, Xerox a document and you're actually name checking somebody's corporate property. Likewise Hoover, a Pandora charm bracelet, a Zimmer Frame, Tupperware, Perspex, Bubble Wrap.
These are all proprietary eponyms, also known as genericized trademarks - successful trademarks or brand names taken as referring to a generic class of objects, rather than an actual tissue made by Kleenex, or a pan scrubber made by Brillo Pad or a flask made by Thermos.
A century ago the German pharmaceutical company Bayer Co lost its trademark for two well-known drugs - Aspirin and Heroin- after a court ruled that the terms were too widely used to be understood only as referring to their proprietary products.
The Aspirin case was said to set the standard. If the public associates the word with a broad category of goods and services, rather than something specifically branded, then the company risks losing its trademark. Think escalator, cellophane, laundromat, Kiwi fruit, Jet Ski, Ping Pong (coined as a brand name for the table tennis table, rather than the sport itself) Dumpster, Popsicle, Realtor, Rollerblade and Trampoline.
In truth the 1921 Aspirin ruling is hopelessly vague. Many brands risk losing their trademark, but how do you measure whether they've fallen over the edge? Is Tiffany - the setting, not the jeweler - still a trademark, or has it become a trademark?
Time, and the courts, will tell.
As a postscript I have to confess that delving into genericized trademarks has become something of an addiction. Here are a few more I've unearthed that may amuse or surprise you: Breathalyzer, Chapstick, Fibreglass, Microchip, Super Glue, Valium and TV Dinner.
Have a fabulous weekend.