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and a jury granted an award of $13.75 million dollars ($5.5 million dollars in profits กระเป๋า MANGO พร้อมส่ง and $8.25 million dollars in punitive damages to Tiffany & Co.). This case has two main takeaways. The first is that punitive damages are not recoverable under the Lanham Act and are only recoverable under state unfair competition laws. The second is that Costco’s arguments, although unsuccessful, attempted to attack Tiffany’s incontestable registration. Costco argued that it was using “Tiffany setting” not as a source identifier but generically to describe a type of setting that had been created by Tiffany & Co. Had they been successful, Costco’s assertions would have resulted in Tiffany’s brand name being held generic for a particular style of jewelry setting. For brand owners, this case reminds litigants that state laws may offer punitive damages that are unavailable under federal law. Also, this case is a reminder that despite the fact Tiffany’s registrations were incontestable, they were still vulnerable to attack on the ground the marks may have become generic. Trademark owners should be vigilant in guarding the use of their marks, regardless of how famous they may be, and prevent both their internal marketing team and the public from using them generically. For a more in depth analysis of the Southern District of New York decision, please see here .

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