READ WHAT'S NEW IN THE FAST-CHANGING WORLD OF TRADEMARKS!

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COSTCO'S "TIFF" GETS COSTLY!

According to Tiffany & Co., imitation is NOT the sincerest form of flattery!

A federal jury ruled Thursday that Costco Wholesale Corp. should pay $5.5 million to Tiffany & Co. for violating the iconic jeweler's trademark through the sale of diamond engagement rings labeled "Tiffany."  The $5.5 million far surpasses the $781,000 that Costco has argued should be the maximum it owes, which the retailer says it based on some 2,500 rings that the court ruled infringed on the trademark name. 
Costco's argument that it was merely a description of ring settings is not all that far-fetched. A "Tiffany" setting,developed in the 17th century by Charles Tiffany to raise up a diamond for maximum sparkle, is often considered to be a type of ring setting, and people inside and outside the industry toss the term around, in the way "Kleenex" has become synonymous with facial tissue.
But the court said Costco went too far with its use of the word "Tiffany," to the point of letting - or even encouraging - customers to believe they were buying Tiffany rings, and not just rings with Tiffany settings.
Costco last year took steps to address this issue, agreeing with a request by Tiffany to stop using its name. Costco also sent a letter to customers clarifying that the rings were not "Tiffany & Co." products and offered refunds to those who were disappointed.   Good thing Costco didn't pack its rings in robins' egg blue boxes!  That color is also a Federally registered trademark: " The mark consists of a shade of blue often referred to as robin's-egg blue which is used on boxes" according to the registration.
UNCERTAINTY OVER EU TRADEMARKS CONTINUES!

Right now,  a single trademark application filed in the European Union Intellectual Property Office ("EUIPO") provides protection in the 28 member countries of the European Union. In view of the UK Brexit vote on June 23, 2016, you might be wondering what this means for your EU Trademark (s).  As of now, your trademark rights are secure, until the United Kingdom formally exits the EU.  
As for the long term, EU trademark practitioners currently think that it is highly likely that the final terms of the United Kingdom's exit from the EU will include some mechanism to address the protection of EUTMs in the United Kingdom.  

Because of these uncertainties, and in order to minimize any risks associated with this changeover, anyone who owns EUTMs and views the United Kingdom as an important market may want to consider filing for United Kingdom trademark registrations now, rather than waiting to see what happens when the United Kingdom formally exits the EU. 

And for new trademarks, I recommend filing in both the EU and the United Kingdom if the United Kingdom will be an important market for you.  This increases costs only slightly and clearly secures a priority date for the United Kingdom.  I encourage you to reach out to me with any questions on your filing strategies. I'm here to help!
VISIT MY NEW WEBSITE!

I am excited to launch my beautiful new website, with links to some of my many winning arguments filed in the United States Patent and Trademark Office ("USPTO") to overcome refusals of my clients' trademarks.  I FIGHT HARD TO REGISTER AND PROTECT MY CLIENTS' RIGHT!

Click here to Visit My New Website
LAW OFFICE OF SYLVIA MULHOLLAND
5405 Wilshire Blvd. Suite 220 Los Angeles, CA 90036
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