Tiffany v. Costco, 1-13-CV-01041-LTS-DCF (S.D.N.Y.) (May 6, 2013 brief filed by Costco in opposition...

7/28/2019 Tiffany v. Costco, 1-13-CV-01041-LTS-DCF (S.D.N.Y.) (May 6, 2013 brief filed by Costco in opposition to Tiffany's motion to dismiss counterclaim)

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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK---------------------------------------------------------------------- x

:

TIFFANY AND COMPANY and

TIFFANY (NJ) LLC,

:

:

ECF CASE

:

Plaintiffs and Counter-Defendants, : 13 Civ. 1041 (LTS) (DCF)

against ::

:

COSTCO WHOLESALE CORPORATION, ::

Defendant and Counter-Plaintiff. :

:---------------------------------------------------------------------- x

MEMORANDUM IN OPPOSITION TO

PLAINTIFFS MOTION FOR SUMMARY JUDGMENT

OR, IN THE ALTERNATIVE, FOR JUDGMENT ON THE PLEADINGS

FRIED, FRANK, HARRIS, SHRIVER &

JACOBSON LLPOne New York Plaza

New York, New York 10004-1980

(212) 859-8000

Attorneys for Defendant and Counter-Plaintiff

Costco Wholesale CorporationJames W. Dabney

Victoria J.B. Doyle

Richard M. Koehl

Of Counsel

Case 1:13-cv-01041-LTS-DCF Document 23 Filed 05/06/13 Page 1 of 24


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TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES .............................................................................................. iiThe Non-Infringement, Privilege, and Invalidity Grounds on WhichCostcos Counterclaim Seeks Relief ........................................................................4The Parties Factual Disputes Over the Nature and Effect(s) of Costcos

Use of the Word Tiffany ......................................................................................6The Parties Factual Disputes Over Whether Costco Made Only Good

Faith Descriptive Use of the Word Tiffany ..........................................................8The Parties Factual Dispute Over the Primary Significance of the Word

Tiffany in the Context of Pronged Jewelry Settings ..........................................10 The Plaintiffs Failure to Submit Competent Evidence .........................................13Plaintiffs Erroneous Reliance on Registrations as Evidence ............................15Plaintiffs Erroneous Reliance on Judicial Opinions as Evidence .....................18Plaintiffs Improper Invocation of Rule 12(c) .......................................................18

CONCLUSION ..................................................................................................................19



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TABLE OF AUTHORITIES

Page(s)

CASES

815 Tonawanda Street Corp. v. Fays Drug Co.,

842 F.2d 643 (2d Cir. 1988).........................................................................................15

Abercrombie & Fitch Co. v. Hunting World, Inc.,537 F.2d 4 (2d Cir. 1976) (Friendly, J.) .............................................5 n.4, 5 n.5, 16, 18

Advance Magazine Publers, Inc. v. Norris,627 F. Supp. 2d 103 (S.D.N.Y. 2008) (Sullivan, J.) ....................................................17

Blue Cross and Blue Shield of New Jersey, Inc. v. Phillip Morris, Inc.,

141 F. Supp. 2d 320 (E.D.N.Y. 2001) (Weinstein, J.) .................................................18

Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc.,973 F.2d 1033 (2d Cir. 1992)...................................................................................8, 11

Colt Defense LLC v. Bushmaster Firearms, Inc.,486 F.3d 701 (1st Cir. 2007) ................................................................................17 n.10

EMI Catalogue Pship v. Hill, Holliday, Connors, Cosmopulos Inc.,

228 F.3d 56 (2d Cir. 2000)...........................................................................................10

Genesee Brewing Co. v. Stroh Brewing Co.,

124 F.2d 137 (2d Cir. 1997)...........................................................................................6

Harley-Davidson, Inc. v. Grottanelli,164 F.3d 806 (2d Cir. 1999)................................................................................. passim

Kellogg Co. v. Natl Biscuit Co.,

305 U.S. 111 (1938) .............................................................................................6, 8, 10

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.,543 U.S. 111 (2004) .......................................................................................................9

Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc.,192 F.3d 337 (2d Cir. 1999).........................................................................5 n.5, 11, 17

Liquid Controls Corp. v. Liquid Control Corp.,

802 F.2d 934 (7th Cir. 1986) ...............................................................................17 n.10

Loctite Corp. v. Natl Starch & Chem. Corp.,

516 F. Supp. 190 (S.D.N.Y. 1981)...............................................................................11

Murphy Door Bed Co. v. Interior Sleep Sys., Inc.,

874 F.2d 95 (2d Cir. 1989)...........................................................................................11



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Nartron Corp. v. STMicroelectronics, Inc.,

305 F.3d 397 (6th Cir. 2002) ...............................................................................17 n.10

Nipper v. Snipes,

7 F.3d 415 (4th Cir. 1993) ...........................................................................................18

Pirone v. MacMillan, Inc.,894 F.2d 579 (2d Cir. 1990)................................................................................. passim

Retail Servs. Inc. v. Freebies Publg,

364 F.3d 535 (4th Cir. 2004) ...............................................................................17 n.10

Savin Corp. v. Savin Group,

391 F.3d 439 (2d Cir. 2004).....................................................................................5 n.3

SportsChannel Assocs. v. Commr of Patents and Trademarks,

903 F. Supp. 418 (E.D.N.Y. 1995) (Spatt, J.) ..............................................................11

Tie Tech, Inc. v. Kinedyne Corp.,

296 F.3d 778 (9th Cir. 2002) ...............................................................................17 n.10

Time, Inc. v. Petersen Publg Co.,173 F.3d 113 (2d Cir. 1999).........................................................................................16

Ty Inc. v. Softbellys Inc.,353 F.3d 528 (7th Cir. 2003) .......................................................................................10

United States v. Diebold, Inc.,

369 U.S. 654 (1962) .......................................................................................................7

United States v. Jones,

29 F.3d 1549 (11th Cir. 1994) .....................................................................................18

STATUTES &RULES

15 U.S.C. 1064(3) .............................................................................................5, 6, 10, 16

15 U.S.C. 1065 ......................................................................................................5 n.5, 15

15 U.S.C. 1115(b) ...........................................................................................................16

15 U.S.C. 1115(b)(4) .............................................................................................. passim

15 U.S.C. 1119 ................................................................................................................18

28 U.S.C. 1331 ................................................................................................................18

Federal Rule of Civil Procedure 12(c) .....................................................................4 n.2, 18



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Federal Rule of Civil Procedure 56(c)(4) ..........................................................................14

Federal Rule of Civil Procedure 56(d) ...............................................................................12

OTHERAUTHORITIES

Diamond Dictionary (2d ed. 1977) ......................................................................................1

Diamond Dictionary (3d ed. 1993) ......................................................................................2

Random House Dictionary of the English Language (2d ed. 1987) ....................................1

Websters Third New International Dictionary (2002) .......................................................1



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Tiffany setting like Phillips screwdriver is an eponymous, generic term for a

type of physical object. The word tiffany is defined in Websters Third New

International Dictionary (2002) as meaning, among other things: of a jewelry setting:

having long prongs to hold a gem. Tiffany setting is defined in The Random House

Dictionary of the English Language (2d ed. 1987) as meaning: a setting, as in a ring, in

which the stone is held with prongs. The Gemological Institute of America (GIA),

perhaps the nations foremost educational institution in the fields of gemology and

jewelry (see http://www.gia.edu/gia-about), provides the following illustration of a

Tiffany setting in The Diamond Dictionary (2d ed. 1977):

The word Tiffany in Tiffany setting is the surname of an historical figure,

Charles Lewis Tiffany (C.L. Tiffany). He is widely reputed to have introduced the

above-depicted setting style to the trade in 1886. Id. Lexicographical sources indicate

that the term Tiffany setting is named after the deceased individual, C.L. Tiffany; and

that by not later than the second decade of the twentieth century, the words Tiffany and

Tiffany setting had already entered American English as generic terms for the type of

pronged setting depicted above. Declaration of Charles M. Levine, sworn to May 6, 2013

(Levine Decl.) 2 & Ex. 1 at 7, 11-12. By the 1960s, Tiffany and Tiffany setting

had come to be so widely and generally used as to become entries in both leading general



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unabridged dictionaries of American English and in The Jewelers Manual (1964), an

authoritative GIA publication. Levine Decl. Ex. 1 at 7-8. The most recent edition ofThe

Diamond Dictionary (3d ed. 1993), which Costco gemologist Robert Newell purchased

and used as a GIA student (Declaration of Robert Newell, sworn to May 3, 2013

[hereinafter, Newell Decl.] 1 & Ex. 1), includes the following entry:

In their complaint filed February 14, 2013, the Plaintiffs pretend to be unaware of

the long-established dictionary definition meaning of the word Tiffany, and falsely

assert that Costco owed them a duty not to use standard English in the context of display

signs like as the one reproduced below (labels and lead lines added):

In the sign reproduced above, the word Tiffany is used in its generic, dictionary

definition sense to denote the type of setting that the displayed ring had. Declaration of



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Plaintiffs claim of right to exclude use of the word Tiffany as a setting style name.

Plaintiffs assert that there is no genuine issue of fact with respect to any of the matters

pleaded in Costcos counterclaim, including Costcos allegations that:

9. The word Tiffany is a generic term for a ring setting comprising

multiple slender prongs extending upward from a base to hold a single

gemstone, exemplified by the type of setting depicted on page 1, above,and by setting depicted, described, or referred to in Exhibit 1 as Tiffany

settings.

10. An actual controversy exists between Costco and Plaintiffs

concerning whether the Plaintiffs have any valid legal right to excludeCostco from using the word Tiffany to indicate that a ring has a Tiffany

setting, i.e., a setting comprising multiple slender prongs extending

upward from a base to hold a single gemstone, exemplified by the type of

setting depicted on page 1, above, and by settings depicted, described, orreferred to in Exhibit 1 as Tiffany settings.

11. An actual controversy exists between Costco and Plaintiffs

concerning whether this lawsuit was filed and publicized by Plaintiffs for

improper purposes, including to hinder lawful competition from Costco inthe retail sale of genuine diamond rings whose quality is comparable to

that of certain diamond rings sold by TAC but are offered by Costco at

lower prices than TAC offers.

Reversing the usual course of events, Plaintiffs also moved, in the alternative, for

judgment on the pleadings. This latter aspect of the Plaintiffs motion appears to have

been a discovery-related afterthought.2

The Non-Infringement, Privilege, and Invalidity

Grounds on Which Costcos Counterclaim Seeks Relief

Costcos Answer and Counterclaim puts in issue whether the Plaintiffs have any

valid legal right to exclude Costco from using the word Tiffany to indicate that a ring has

2In their original pre-motion correspondence with the undersigned, the Plaintiffs

referred only to a proposed motion for summary judgment. Dabney Decl. 14-18 &

Exs. 13-16. After Costco served a notice of deposition on April 12, the Plaintiffs for the

first time invoked Rule 12(c) and asserted that their filing of a Rule 12(c) motiontriggered an automatic stay of Costcos then-pending request for deposition discovery.

Id. 19-24 & Exs. 17-22.



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a Tiffany setting (Counterclaim 10) and the counterclaim seeks multiple forms of

declaratory and injunctive relief including a judgment declaring that Costcos past use of

the word Tiffany has not infringed or invaded any legal rights of the Plaintiffs.

Counterclaim WHEREFORE iv. The controversy raised by Costcos counterclaim is

thus a broad and multi-faceted one. To resolve that controversy (which substantially

overlaps with the Plaintiffs own claims), a trial will be needed to determine:

(i) whether Costco has infringedany trademarks asserted by Plaintiffs, an issue

that turns in part on such factual issues as the primary meaning of the word Tiffany in

the challenged context, the presence or absence of actual confusion, and the degree of

care that is exercised in the purchase of expensive diamond rings;3

(ii) whether Costco is privilegedto use the word Tiffany as a descriptive term

under 15 U.S.C. 1115(b)(4), an issue that turns in part on such factual issues as whether

the word Tiffany is in fact descriptive of a style or type of pronged jewelry setting

and whether that word was used by Costco in good faith (id.);4as well as

(iii) whether the Plaintiffs asserted registrations are invalid as purporting to

evidence rights to exclude use of the generic name for the goods . . . or a portion thereof,

for which it is registered, 15 U.S.C. 1064(3),5

an issue that turns in part on whether

3 Cf. Savin Corp. v. Savin Group, 391 F.3d 439, 461-62 (2d Cir. 2004) (affirming

summary judgment of non-infringement, based in part on high cost of products in

question and sophistication of buyers).

4Cf. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 12-13 (2d Cir. 1976)

(Friendly, J.) (sustaining fair use defense under 1115(b)(4)).

5 Cf. Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 344 (2d Cir.

1999) (The classification of a mark is a factual question);Abercrombie, 537 F.2d at 13-14 (ordering total and partial cancellation of registrations, notwithstanding that the

registrants rights were in other respects incontestable under 15 U.S.C. 1065).



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Plaintiffs can show that the primary significance of the word Tiffany, when used to

refer to settings like the ones depicted on pages 1-2, above, is not the product but the

producer. Kellogg Co. v. Natl Biscuit Co., 305 U.S. 111, 118 (1938) (holding that the

primary significance of the term SHREDDED WHEAT was to identify a type of cereal,

not to identify a producer of cereal). See 15 U.S.C. 1064(3) (codifying the primary

significance test for whether a mark is generic); Genesee Brewing Co. v. Stroh Brewing

Co., 124 F.2d 137, 144 (2d Cir. 1997) (applying the primary significance test).

The motion for summary judgment does not even address most of the grounds on

which Costcos counterclaim seeks relief; and with respect to Costcos invalidity defense,

the motion is wholly unsupported and fails even to address the controlling primary

significance test.

The Parties Factual Disputes Over the Nature

and Effect(s) of Costcos Use of the Word TiffanyTo defeat Costcos counterclaim for a declaratory judgment of non-infringement,

the Plaintiffs must show that Costcos complained of use of the word Tiffany was a

trademark use, that is, one indicating source of origin. Pirone v. MacMillan, Inc., 894

F.2d 579, 583 (2d Cir. 1990). Costco vigorously denies and disputes having made any

trademark use of the word Tiffany. Grewall Decl. 5-6; Costco Answer and

Counterclaim filed March 8, 2013, at pp. 1-2 & Exs. 1-3, p. 4 11, pp. 6-7 (first and

second affirmative defenses), pp. 8-9 8-11.

The merits of Plaintiffs infringement claims and Costcos counterclaim thus both

turn on a factual dispute over the nature of the use of the word Tiffany as it appears in

signage like the one depicted on page 2, above. On summary judgment the inferences to

be drawn from the underlying facts contained in such materials must be viewed in the



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light most favorable to the party opposing the motion. United States v. Diebold, Inc.,

369 U.S. 654, 655 (1962).

Here, even without the benefit of party or third-party discovery, Costco has

presented extensive evidence, including multiple general unabridged and jewelry industry

dictionary definitions spanning five decades, from which a jury could readily conclude

that the use of the word Tiffany in the sign reproduced on page 2, above, was not a

trademark use, Pirone, 894 F.2d at 583, but rather was a truthful and accurate

description of a feature of a diamond ring, namely, its style of setting. Grewall Decl.

5-6; Levine Decl. 2; Newell Decl. 2-4 & Exs. 1-2. This type of factual dispute is

plainly inappropriate for resolution by way of summary judgment.

The merits of Plaintiffs infringement claims and Costcos counterclaim also turn

on the whether, as a factual matter, the complained of use of the word Tiffany had the

actual effectof confusing or misleading Costco members. On the day this suit was filed

Plaintiffs parent company issued a press release which stated in part: We now know

that there are at least hundreds if not thousands of Costco members who think they

bought a Tiffany engagement ring at Costco . . . . Dabney Decl. 2 & Ex. 1, subexhibit

3 (Tiffany & Co. press release). Costco has propounded discovery requests seeking to

determine what possible factual basis the Plaintiffs could have had for making such an

extraordinary and libelous statement; and the Plaintiffs, perhaps understandably, have

maneuvered to try and delay when they might have to respond to Costcos discovery

requests on this point. Dabney Decl. 19-24 & Exs. 17-22.

The actual effect of the accused Costco display signs is a central disputed factual

issue in the case, and one that bears equally on the Plaintiffs infringement claims and



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Costcos counterclaim for a declaratory judgment of non-infringement. Even at this

extremely early stage, the record of this case already shows that: (i) the diamond rings

sold by Costco are expensive, high quality items (GIA grade VS2, I or better) costing

thousands of dollars; (ii) the word Tiffany has a long-established generic, non-

trademark meaning; and (iii) despite the Plaintiffs very public claim to know that the

subject display signs purportedly deceived at least hundreds if not thousands of Costco

members (Dabney Decl. 2 & Ex. 1 [Tiffany & Co. press release]), the Plaintiffs

motion for summary judgment includes no such actual confusion evidence. That

omission speaks volumes.

The Parties Factual Disputes Over Whether Costco

Made Only Good Faith Descriptive Use of the Word Tiffany

To defeat Costcos counterclaim for a declaratory judgment of non-infringement,

the Plaintiffs must also defeat Costcos defense that its use of the word Tiffany was a

use, otherwise than as a mark, of . . . a term . . . which is descriptive of and used fairly

and in good faith only to describe the goods . . . of such party. 15 U.S.C. 1115(b)(4).

To a large extent, the factual issues raised by this defense overlap with factual issues on

which the Plaintiffs will bear the burden of proof at trial in the context of their

infringement claims, and are inappropriate for resolution by way of summary judgment.

As noted above, to establish infringement, the Plaintiffs must prove that at least

some of use of the word Tiffany by Costco was a trademark use,Pirone, 894 F.2d

at 583, and that in the complained of context, the primary significance of the term

[Tiffany] in the minds of the consuming public is not the product but the producer.

Kellogg,305 U.S. at 118, quoted in Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d

137, 144 (2d Cir. 1997). See Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d



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1033, 1041 (2d Cir. 1992) (The focus in categorizing a mark is on how the words are

used in context rather than their meaning in the abstract.). Plaintiffs have not even

argued that they are entitled to summary judgment of infringement on these or any other

grounds.

But even if the Plaintiffs were to succeed in overcoming settled precedent6

and

could prove that there was some secondary meaning of Tiffany when used in

association with pronged rings settings, over and above that terms long-established

generic meaning, such proof would not entitle Plaintiffs to prevent use of the word

Tiffany in its primary, descriptive sense,Pirone, 894 F.2d at 584;

7

and this is so even

if concurrent use of Tiffany in its primary, descriptive sense and in a hypothetical

secondary, trademark sense could be shown to result in some possibility of consumer

confusion. InKP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111

(2004), the Supreme Court held that some possibility of consumer confusion must be

compatible with fair use, and so it is. Id. at 121-22.

Here again, the Plaintiffs motion for summary judgment simply ignores the

substance of Costcos counterclaim and pretends that the word Tiffany has no

6The Second Circuit has broadly held that: No manufacturer can take out of the

language a word, even a slang term, that has generic meaning as to a category of productsand appropriate it for its own trademark use. Harley-Davidson, 164 F.3d at 810.

Although the Plaintiffs have yet to make discovery on the issue, their apparently recent

initiative to try and infuse Tiffany setting with trademark significance is subject to the

stringent standard articulated in Harley-Davidson and will almost certainly suffer thesame fate as did the failed similar attempt inHarley-Davidson.

7Besides being a generic term for a style or type of pronged jewelry setting, the word

Tiffany may also refer to the historical figure, C.L. Tiffany. Cf.Pirone, 894 F.2d at

584-86 (noting that there exists no post-mortem right of publicity under New York lawand rejecting trademark-based claim of right to exclude use of BABE RUTH in its

primary sense of referring to a historical figure).



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descriptive meaning that Costco could possibly have any right to use. That is, however,

one of the very factual matters to be determined at trial. Cf. EMI Catalogue Pship v.

Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 65-68 (2d Cir. 2000) (reversing

summary judgment where a defendants good faith was factually disputed).

The Parties Factual Dispute Over the Primary Significance of

the Word Tiffany in the Context of Pronged Jewelry Settings

To defeat Costcos counterclaim for a declaratory judgment of invalidity and for

partial cancellation relief, the Plaintiffs will also be required to overcome Costcos

factual allegation that: The word Tiffany is a generic term for a ring setting comprising

multiple slender prongs extending upward from a base to hold a single gemstone,

exemplified by the type of setting depicted on page 1, above, and by setting depicted,

described, or referred to in Exhibit 1 [to the Answer and Counterclaim] as Tiffany

settings. Counterclaim 9.

As noted above, 15 U.S.C. 1064(3) explicitly provides that: The primary

significance of the registered mark to the relevant public . . . shall be the test for

determining whether the registered mark has become the generic name of goods . . . on or

in connection with which it had been used. (Emphasis added.) The motion for

summary judgment pointedly fails to cite or to argue the primary significance test,

which was applied in theKelloggcase cited above, 305 U.S. at 118.

Instead, based on a wishful misreading of dictum in an out-of-circuit case, Ty Inc.

v. Softbellys Inc., 353 F.3d 528 (7th Cir. 2003),Plaintiffs erroneously assert that [f]or a

mark to be found generic, it must have lost all significance as a source identifier and

become the name of the product class itself. Pltf. Mem. at 17 (emphasis in original); id.

at 24. That is simply not the law, as the Ty decision itself recognizes. See id. at 530-31



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F.3d 806, 810 (2d Cir. 1999) (dictionary definitions of a word to denote a category of

products are significant evidence of genericness.).

Given that Costco has yet to receive requested discovery from Plaintiffs and

multiple third parties (Dabney Decl. 2-13), the Court would be justified in denying

Plaintiffs motion under Federal Rule of Civil Procedure 56(d). Costco respectfully

suggests, however, that the record as it now stands is already such as to require outright

denial of the Plaintiffs motion, based on the evidence that Costco has submitted and that

which the Plaintiffs have failed to submit.

In the face of more than a century of use of Tiffany as a generic, eponymous

name for a type of jewelry setting, including in authoritative GIA publications and

multiple general unabridged dictionaries dating back to at least the 1960s (Levine Decl.

2 & Ex. 1), the Plaintiffs appear to have quite recently initiated a campaign to try and

infuse the term Tiffany setting with spurious trademark significance, including through

misuse of the symbol in the unregistered composite term, TIFFANY

SETTING

(see Declaration of Jeffrey A. Mitchell, sworn to April 17, 2013 [hereinafter, Mitchell

Decl.]) Ex. F). Plaintiffs have yet to respond to discovery concerning when they started

misusing the registered trademark symbol in public displays of the unregistered

purported trademark, TIFFANY SETTING,8

but the Plaintiffs position here is similar

to that of the losing trademark claimant inHarley-Davidson, Inc. v. Grottanelli, 164 F.3d

806 (2d Cir. 1999).

8In a web page displayed in April 2013, Plaintiffs asserted: TIFFANY, T&CO,

TIFFANY & CO., the TIFFANY SETTING and the TIFFANY BLUE BOX are

trademarks of Tiffany and Company and its affiliates. See Dabney Decl. 2 & Ex. 1.During the initial conference held May 3, Plaintiffs counsel erroneously stated the

Plaintiffs had never claimed rights in the composite term TIFFANY SETTING.



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The plaintiff there acquiesced in use of the word HOG as a generic term for large

motorcycles for many years, and then reversed position and attempted to claim that the

word HOG either always was or had become distinctive of Harley-Davidson motorcycles.

The Second Circuit held that where a word is or has been generic for a type of product, a

manufacturer cannot withdraw from the language a generic term, already applicable to

the relevant category of products, and accord it trademark significance, at least as long as

the term retainssome generic meaning. 164 F.3d at 812 (emphasis added).

UnderHarley-Davidson, the Plaintiffs here confront the formidable burden of

demonstrating that the words Tiffany and Tiffany setting do not retain any generic

meaning forany segment of the relevant public. Not only is this a disputed issue of fact,

but it is an issue of fact as to which the Plaintiffs have presented no admissible evidence.

The Plaintiffs Failure to Submit Competent Evidence

As purported evidentiary support for their motion for summary judgment, the

Plaintiffs have submitted only a declaration of their litigation counsel, Mr. Mitchell. The

Mitchell declaration is not grounded in personal knowledge of facts that establish any

basis for dismissal of Costcos counterclaim. The evidence submitted by Plaintiffs

through Mr. Mitchell consists of the following:

(i) the pleadings in this action (Mitchell Decl. Exs. A-C), in which Costco alleges

that made only non-trademark, descriptive use of the word Tiffany and that the word

Tiffany is, further, a generic term for a type of pronged setting;.

(ii) two photographs of unidentified authorship, displaying what Costco contends

are descriptive, non-trademark uses of the word Tiffany in its generic, dictionary

definition sense (Mitchell Decl. Ex. D);



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(iii) a third-party web page quoting Costcos President as saying, among other

things, that That was intended to describe a setting style used in those rings, and was not

intended to claim that the rings were of any particular brand (Mitchell Decl. Ex. E);

(iv) a web page bearing the phrase TIFFANY

SETTING (Mitchell Decl. Ex.

F) whose apparently recent vintage and creation are subjects of as yet unsatisfied

discovery requests outstanding to Plaintiffs (Dabney Decl. 2 & Ex. 1);.

(v) a purported summary of United States trademark registrations held by

Plaintiffs (Mitchell Decl. Ex. G), only five of which were mentioned in Plaintiffs

complaint;

(v) two certificates of registration for TIFFANY and TIFFANY (stylized),whose

validity is under challenge (Mitchell Decl. Ex. H-I);

(vi) a Costco online advertisement for jewelry items dated February 5, 2013

(Mitchell Decl. Ex. J);

(vii) a 2009 opinion in a default case administered under the Uniform Dispute

Resolution Policy (Mitchell Decl. Ex. K); and

(vii) two newspaper clippings from 2006 and 2007 which have nothing whatever

to do with the substance of Costcos counterclaim (Mitchell Decl. Exs. L-M).

None of the above evidence even begins to establish any undisputed factual

basis for dismissal of Costcos counterclaim. Federal Rule of Civil Procedure 56(c)(4)

provides that a declaration supporting a motion for summary judgment must be made on

personal knowledge, set out facts that would be admissible in evidence, and show that the

affiant or declarant is competent to testify on the matters stated.



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which might have adopted the same or a similar mark earlier than the registrant did. See

815 Tonawanda Street Corp. v. Fays Drug Co., 842 F.2d 643, 648 (2d Cir. 1988).

To say, however, that a registrants rights in a trademark are incontestable,

however, is to say nothing about the breadth of infringement protection that a mark is

accorded. Time, Inc. v. Petersen Publg Co., 173 F.3d 113, 118 (2d Cir. 1999). A

registration held by a person whose right to use has become incontestable is still

subject to proof of infringement, 15 U.S.C. 1115(b), and is further subject to

cancellation where a registered mark is shown to be the generic name for the goods or

services, or a portion thereof, for which it is registered. 15 U.S.C. 1064(3), cited in 15

U.S.C. 1065.

The Plaintiffs are thus simply wrong in asserting that the incontestable status of

Plaintiffs right to use the word Tiffany somehow bolsters the Plaintiffs motion

seeking dismissal of Costcos counterclaim. The incontestable status of Plaintiffs

right to use the word Tiffany is, in fact, irrelevant to Costcos counterclaim, which

raises no invalidity issue as to which the incontestable status of the Plaintiffs claimed

trademark rights would affect the analysis. Costcos privilege to use the word Tiffany

under 15 U.S.C. 1115(b)(4) is not affected by the incontestable status of the

Plaintiffs own right to use Tiffany; and as even Plaintiffs acknowledge, federal courts

have broad statutory authority to order partial cancellation of registrations of marks that

are proved to be generic names for a type of product, even though while a registered

mark might retain trademark significance for other goods within a given product

category. See Abercrombie, 537 F.2d at 13-14 (ordering partial cancellation of

registrations dating back to the 1930s, despite incontestable status).



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Plaintiffs Erroneous Reliance on Judicial Opinions as Evidence

Plaintiffs also cite, as purported evidence supporting their position, judicial

opinions issued in past cases to which Costco was not a party. The short answer to this

portion of Plaintiffs motion is: Judicial findings in other cases proffered as evidence are

generally characterized as inadmissible hearsay. Blue Cross and Blue Shield of New

Jersey, Inc. v. Phillip Morris, Inc., 141 F. Supp. 2d 320, 323 (E.D.N.Y. 2001) (Weinstein,

J.) (granting plaintiffs motion in limine to exclude judicial opinion). Accord United

States v. Jones, 29 F.3d 1549, 1554 (11th Cir. 1994); Nipper v. Snipes, 7 F.3d 415 (4th

Cir. 1993). Plaintiffs would not be permitted, at trial, to introduce judicial opinions in

other cases as purported evidence of the truth of factual findings contained therein, and

such opinions are equally insufficient to establish a basis for summary judgment.

Plaintiffs Improper Invocation of Rule 12(c)

On a motion for judgment on the pleadings under Federal Rule of Civil Procedure

12(c), a court must assume the truth of the claimants well-pleaded factual allegations.

Here, the Plaintiffs do not accept but, to the contrary, explicitly deny Costcos allegations

that Tiffany and Tiffany setting are generic terms of a type of pronged ring setting

and at all events, Costcos complained of use of Tiffany was otherwise than as a

trademark, in good faith and descriptive. 15 U.S.C. 1115(b)(4). The Plaintiffs

allegations of infringement are also explicitly denied by Costco.

Plaintiffs have presented no theory on which, if Costcos pleaded allegations are

accepted as true, they would still be entitled to summary judgment dismissing Costcos

counterclaim seeking declaratory and injunctive relief. Federal courts have broad

equitable authority under 28 U.S.C. 1331 and 15 U.S.C. 1119 to award declaratory

judgments of non-infringement and invalidity and to rectify the register so as to prevent



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overly broad registrations from being used to give false color to meritless infringement

claims like the ones Plaintiffs have made against Costco here. See Abercrombie, 537

F.2d at 13-14 (ordering cancellation of registrations of incontestable trademarks).

CONCLUSION

The Plaintiffs motion should be denied in all respects.

Dated: New York, New York

May 6, 2013

FRIED, FRANK, HARRIS,SHRIVER& JACOBSON LLP

By: s/ James W. Dabney

James W. DabneyVictoria J.B. Doyle

Richard M. Koehl

One New York Plaza

New York, New York 10004-1980

(212) 859-8000

Attorneys for Defendant/Counter-Plaintiff

Costco Wholesale Corporation8978161


Tiffany v. Costco, 1-13-CV-01041-LTS-DCF (S.D.N.Y.) (May 6, 2013 brief filed by Costco in opposition...

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Transcript of Tiffany v. Costco, 1-13-CV-01041-LTS-DCF (S.D.N.Y.) (May 6, 2013 brief filed by Costco in opposition...