Orange County Trademark Attorney® Blog

February 2013 Archives

Tiffany Sues Costco for Trademark Infringement over Engagement Rings

February 19, 2013,

diamond_ring.jpgOrange County - Tiffany & Co. filed a trademark infringement lawsuit against Costco Wholesale Corp. claiming that the discount retail giant sold unauthorized diamond engagement rings with the Tiffany brand name.

The high-end jewelry maker claimed that it discovered Costco was using the Tiffany name to market and sell diamond engagement rings at its various retail locations across the United States through an internal investigation.

"Costco was able to sell... engagement rings falsely identified as 'Tiffany,' and thereby unlawfully trade on Tiffany's goodwill and brand awareness to increase its own sales," the complaint said.

Tiffany claimed that Costco's use of the Tiffany brand name harmed the high-end jewelry retailer by associating its high-end name with a budget retail chain. Tiffany also claimed that Costco purposely attempted to evade detection of its infringement by only selling and marketing the unauthorized Tiffany-branded engagement rings in stores and not promoting the rings online.

"The only place the Tiffany trademarks were displayed were on point of sale signs within a glass case in the jewelry departments of Costco warehouse stores, making them visible only to Costco members shopping for engagement rings in particular stores where the rings were displayed," Tiffany said.

Tiffany claims that Costco's use of its trademark in conjunction with the engagement rings it sold mislead customers to believe they were buying genuine Tiffany rings and caused them to see Costco as a retailer of fine jewelry products.

"Since these rings themselves were not Tiffany, the counterfeits made other non-branded jewelry in the same display case appear more valuable by comparison since those other items were, in fact, no different than what was falsely labeled as Tiffany," Tiffany said.

Tiffany addressed the alleged infringement with Costco in December and Costco agreed to cease using the Tiffany name in all of its store locations. However, Tiffany is still seeking Costco's profits from selling the alleged counterfeit goods, treble damages, and an order requiring Costco to make a public statement regarding its misconduct and to notify all purchasers of the rings that they had not bought authentic Tiffany jewelry.
Tiffany is accusing Costco of trademark infringement, counterfeiting, dilution, and false advertising.

DC Comics Sues Batmobile Maker for Trademark and Copyright Infringement

February 5, 2013,

batman-keys.jpgOrange County - DC Comics Inc. filed a lawsuit in Orange County against a custom carmaker claiming that the automaker is infringing its trademarks and copyrights by building and selling replicas of the Batmobile.

Mark Towle, who owns Gotham Garage in Orange County, asked U.S. District Judge Ronald S.W. Lew of the Central District of California to grant his motion for summary judgment claiming that DC Comics knew he had been building the Batmobile for at least ten years and said the company had waited too long to assert its rights.

The carmaker claimed that he was contacted in 2003 by counsel for Warner Bros. Entertainment Inc., the parent company of DC Comics, regarding a photograph the company had come across depicting the Batmobile in various stages of production at Towle's place of business in Santa Ana, the most populous city in Orange County.

Towle argued that although they knew his business made Batmobiles much earlier, DC Comics did not sue him for copyright and trademark infringement until May 2011. Because of this, Towle claims that DC Comics waited too long to file the lawsuit. He also argued that counsel for Warner Bros. never mentioned to him he was infringing on its copyrights or trademarks and never told him to stop his replica building activities.

According to Towle, the testimony of DC Comics' deputy counsel for intellectual property demonstrated that the company had not been enforcing its intellectual property rights with Batmobile reproducers in any way from 1995 to 2010, effectively waiving its right to sue for infringement by failing policing its trademarks and copyrights.

Towle also argued that DC Comic's trademark BATMOBILE only registered in November of last year for use on automobiles. Before that date, DC Comics was not in the automobile market and therefore it could not have suffered any damages from his Batmobile sales.

The comic book publisher argued that Judge Lew should grant its competing motion for summary judgment, arguing there is no evidence DC Comics knew about Towle's infringement in 2003 and claiming he should have to reimburse the company for the profits he earned by using the company's trademarks and copyrights without authorization.

Gotham Garage's business relies on building replicas of the most iconic cars from the movies, the Batmobile being crucial to the business. The cars sell for as much as $90,000 and customers wait more than a year for a custom car.