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Tiffany Asks for $5.6 M in Attorney Fees in Trademark Case

October 4, 2017 | Posted in : Defense Fees / Costs, Fee Request, Fee Shifting

A recent Law 360 story, “Tiffany, Costco Trade Blows After $21M TM Award” reports that Tiffany and Costco are trading post-trial blows following a ruling that the retailer must pay the jeweler more than $21 million for using “Tiffany” on diamond engagement rings, with Tiffany demanding millions more in attorneys' fees and Costco pushing to overturn the loss.

The new wrangling comes after more than four years of litigation over the Tiffany trademark. Costco argued it had merely used it as shorthand for “Tiffany setting” — a generic term for a style of ring — but U.S. District Judge Laura Taylor Swain ruled in favor if the jeweler in 2015.

With Costco already on the hook for $21 million, Tiffany asked earlier this month for $5.6 million in attorneys' fees, saying Costco’s aggressive defense made the big fee-shifting reasonable.  “Throughout the case Costco revisited and relitigated issues previously decided against it, and generally engaged in a scorched earth strategy that forced Tiffany — and the court — to undertake all manner of extra work,” the company wrote.

Costco, meanwhile, asked Judge Swain last week to change her ruling, particularly her findings that the company was liable for counterfeiting, a more serious infraction that is usually reserved for situations where “entire products have been copied stitch-for-stitch.”  “Counterfeiting is the ‘hard core’ or ‘first degree’ of trademark infringement,” the retailer wrote.  “The evidence here shows no such ‘stitch-for-stitch’ mimicry.”

The rings at issue in the case, Costco told Judge Swain, were sold in unbranded packaging that didn’t look anything like Tiffany boxes and were not identified as Tiffany rings on the store receipt.  They were also stamped with a manufacturer’s mark, not Tiffany’s.  The retailer also asked the judge to toss out a finding that it infringed the trademarks willfully, saying that finding, too, was “clearly unsupported.”

This month’s filings were merely a prelude to an appeal to the Second Circuit, a move Costco has already repeatedly promised.  The retailer tried to get an immediate appeal following the 2015 ruling, but was refused at the time.  The two companies instead held a damages trial, leading to an award of $19 million; interest and other fees later increased the award to $21 million.

The case is Tiffany & Co. v. Costco Wholesale Corp., case number 1:13-cv-01041, in the U.S. District Court for the Southern District of New York.