Orange County Trademark Attorney® Blog

Recently in Dress Category

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.

Adidas Sues Orange County Based World Industries for Trademark Infringement

May 24, 2012,

shoes.jpgOrange County - Adidas filed a lawsuit against World Industries for infringing on multiple of its three parallel diagonal-striped design trademarks. Germany's Adidas as well as Adidas America, which is based out of Portland, Oregon, filed a complaint with the U.S. District Court, District of Oregon for alleged trademark infringement. Adidas accuses World Industries, a skateboard company based in Costa Mesa, California, of producing the infringing sneakers. Adidas is also suing Big 5, the sporting goods store, for selling the product.

While Adidas is the world's second largest sporting goods company it is no stranger to similar lawsuits. In previous years Adidas filed similar lawsuits against Wal-Mart Stores and Payless ShoeSource for selling "knock-off" shoes that have two, three, and four parallel diagonal stripes. In fact, Adidas was awarded a $65.3 million by a federal judge in its trademark lawsuit against Wal-Mart. The two companies later settled on a confidential amount.

Adidas trademarked the three parallel diagonal-striped designs in the United States in 1994 but claims use as early as 1952. A spokesperson representing Adidas stated: "World Industries' merchandise is likely to cause consumer confusion, deceive the public regarding its source, and dilute and tarnish the distinctive quality of Adidas' Three-Stripe Mark."

Many of World Industries' products display a "W" on the product. However, the alleged knock-off shoes' "W" is positioned in a way that Adidas states is a certain way to confuse the consumer. The "W" on the shoes in question has three pointed tips that are shaped similar to arrows.

Big 5, based in El Segundo, California is not only being accused of selling the infringing shoes but they are also being accused of promoting the shoes in large advertisements as well as "strategically" placing the World Industries shoes near Adidas shoes in its stores. In the complaint, Adidas included advertisements as exhibits to support its claims.

Adidas is seeking that the sale and production of the alleged infringing shoes stop immediately and that all of these shoes be destroyed. Adidas is also seeking monetary damages. A representative for World Industries could not be reached and a representative of Big 5 had no comment.

Microsoft Awarded Trade Dress for Retail Store

October 12, 2011,

microsoft-building.jpgOrange County - Microsoft has recently been awarded trade dress protection for the interior layout of a high tech retail store. The USPTO granted Trademark Registration 4,036,534 which covers the design of a retail store with "four curved tabletops at the front and rear side walls" along with a "rectangular band displaying changing video images on the walls." The trademark covers retail stores that sell computers, computer accessories, cell phones, video games, books, backpacks, and even apparel.

Trade dress protection granted by the USPTO can apply to the overall appearance of an article, product, or as in this case the interior or exterior of a retail store or service center. Trade dress is awarded to distinctive aesthetic designs that serve no functional purpose, as functional designs are covered under patent law. Like a trademark for a logo or brand name, trade dress should create an association in the minds of the consumers linking the source of the product or service to the aesthetic appearance or design of the retail store.

Competitor Apple has experienced vast success with its Apple stores, which allow it to debut new products, promote brand awareness, and allow consumers the opportunity to test products before purchase. The stores not only sell products to consumers, but serve as promotional tools. With 357 locations worldwide, Apple has received considerable publicity regarding its retail stores, including architectural awards. As Microsoft expands its product line, it is hoping for a similar response to its retail stores.

Microsoft, developers of the Windows Operating System, Windows Phone, and the Xbox 360, plan to open 75 retail store locations nationwide. Microsoft has several retail stores currently in operation and hopes to create a recognizable and enjoyable consumer experience utilizing its newly protected trade dress.

Microsoft has recently made significant strides in the fight to acquire a larger share of the smartphone and tablet market. Microsoft and Samsung have recently agreed to cross-license patents to develop products such as the Windows Phone, Android Smartphones, and tablets. In addition, Microsoft and Finnish cellphone makers Nokia have partnered up to develop new smartphone products. Microsoft hopes these retail stores will help the software giant compete in the ever-increasing smartphone/tablet market led by Apple, Google, and Amazon, among others.