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New York, NY—It’s back to court for Tiffany & Co. and Costco. At issue, of course, is the latter’s use of the word “Tiffany” for its four-prong diamond rings, and the former’s desire to protect its brand.

As the late intellectual property attorney Peter Berger explained in 2015, the use of “Tiffany setting” as a generic descriptive term for a four-prong diamond solitaire ring is an industry-wide practice that, because Tiffany for years did not fight it, now has achieved a “dual use” status. 

Tiffany, however, says mere generic use of its name for a four-prong setting isn’t the point of its lawsuit, or why it believes it’s entitled to punitive damages. At least some instances, Costco’s in-case signage did not include the word “setting” next to “Tiffany” so the point, says the jeweler, is that Costco customers—it deposed six—believed they were getting actual Tiffany merchandise at the warehouse club. An article on Fashionlaw.com says the Costco customers who bought the rings thinking they were Tiffany product were greatly disappointed by the rings’ quality, which gives the jeweler enough standing to claim damage to its reputation and brand and justify actual injury, not merely lost profits. 

In-case signage at a Costco warehouse did not include the word "setting" after "Tiffany," leading some customers to assume they were getting Tiffany & Co. product at the warehouse. Image: Fashionlaw.com. 

Related: Tiffany Ready To Re-Try Case Against Costco

Tiffany first filed suit against Costco in February 2013 for trademark infringement and counterfeiting. In September 2015, the U.S. District Court for the Southern District of New York granted Tiffany’s motion of summary judgment of liability, after which a civil jury awarded Tiffany both damages and punitive damages. 

In August of last year, the Second Circuit Court of Appeals reversed the District Court’s grant of summary judgment on the ground that the question of liability should have been presented to a jury, opening the door for Tiffany—which now has the mega-deep pockets of LVMH behind it—to litigate the claims on remand.