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Does generic terminology impact my intellectual property case?

On Behalf of | Aug 31, 2021 | Intellectual Property

In New York, not every dispute over intellectual property will be easy to navigate. Some have significant ambiguity that give credence to the claim of a violation on one end and a defense against the allegation of wrongdoing on the other. This can lead to confusion. When dealing with intellectual property, trademark issues, copyrights and other considerations in this area of the law, it is important to understand how generic terms might factor in with how the case is resolved. Having comprehensive advice can be vital to achieve a positive outcome.

Trademark dispute between two prominent companies settled

Two large companies – Costco and Tiffany & Co. – were embroiled in an eight-year case that centered on terminology and how to define whether it is generic or not. It was recently settled, but there is still a debate over this. Tiffany filed the case claiming that Costco’s use of the word “Tiffany” in its stores to point customers in the direction of rings was a violation of its trademark. Costco replied that it was not referring to Tiffany, but the setting of the diamonds. Costco asserted that the term is based on the setting created by the Tiffany founder and it could use it.

In response, Tiffany’s stated that the term was not generic and the labeling was unclear. The court decided in Tiffany’s favor and a $21 million award was made. However, that was reversed on appeal. The sides came to a confidential settlement. This does not alter the remaining confusion over generic terminology. Because of this, many brands are trying shield themselves from similar circumstances. On the other side, companies that try to use terms that are recognizable in some way could face legal scrutiny without the generic argument to protect them.

Intellectual property should be understood from all perspectives

This case exemplifies the difficulty that companies are confronted with when there is a lack of clarity as to trademark and intellectual property. This includes copyrights; registering, maintaining and protecting a trademark; licensing intellectual property and allowing it to be used; and filing claims due to infringement. Having experienced assistance with these complex areas of the law can be essential to avoid an extended legal case like the one between Tiffany & Co. and Costco.