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 Chilling Effects Clearinghouse > Trademark > Notices > Tiffany doesn't dig trademark counterfeits (NoticeID 23880, http://chillingeffects.org/N/23880) Printer-friendly version

Tiffany doesn't dig trademark counterfeits

March 31, 2009

 

Sender Information:
Tiffany (NJ), LLC.
Sent by:
[Private]


Ft. Lauderdale, FL, 33301, US

Recipient Information:

Digg, Inc.


USA


Sent via: email
Re: Tiffany (NJ), LLC./Trademark Counterfeiting by www.tiffanya.com

Dear Sir/Madam:

We represent Tiffany (NJ), LLC. (“Tiffany”), in certain intellectual property matters.

Tiffany is the owner or exclusive licensee of the world-famous TIFFANY, TIFFANY & CO., T & CO and ELSA PERETTI trademarks (the "Tiffany Marks"). Tiffany owns or licenses numerous trademark registrations worldwide for the Tiffany Marks, including, but not limited, to the following United States Federal Trademark Registrations:

Mark Reg. No. Reg. Date

TIFFANY & CO. (Arch Design) 0,023,573 September 5, 1893

T & CO 0,261,711 September 24, 1929

TIFFANY (Stylized) 0,133,063 July 6, 1920

PORTFOLIO 1,643,550 May 7, 1991

T & CO. 1,669,365 December 24, 1991

TIFFANY & CO. SCHLUMBERGER 1,818,891 February 1, 1994

FIREWORKS 1,861,757 November 8, 1994

LUCIDA 2,526,034 January 1, 2002

LUCIDA 2,602,024 July 30, 2002

STREAMERICA 2,677,403 January 21, 2003

ATLAS 2,886,655 September 21, 2004

PERETTI 1,787,861 August 17, 1993

ELSA PERETTI 1,799,272 October 19, 1993

ELSA PERETTI 1,807,381 November 30, 1993

which are registered in International Classes 8 and 14 and are used in connection with the manufacture and distribution of, among other things, high quality earrings, necklaces, bangles, bracelets, rings, charms, pendants, bookmarks, cuff links, key chains and money clips. These Registrations constitute conclusive evidence of our client's ownership of the Tiffany Marks as well as Tiffany's exclusive right to use these marks. As a matter of law, these trademark Registrations are constructive notice to your company of Tiffany's rights in the marks.

It has come to Tiffany’s attention that your company provides online services to www.tiffanya.com, which is offering for sale counterfeit Tiffany goods. The websitewww.tiffanya.com is using your website to post photo files which contain material which infringes upon Tiffany’s intellectual property rights and which promote its web based businesses which are offering for sale goods bearing counterfeits of the Tiffany Marks. The infringing material can be found athttp://digg.com/arts_culture/Jewelry_From_the_bones_of_women_Extravagance_Oomph/who.

Furthermore, www.tiffanya.com is using Tiffany’s famous name and trademarks to divert traffic to the website in violation of multiple international criminal laws as well as civil laws regarding trademark infringement, counterfeiting, and unfair competition. The location of the web pages displaying counterfeit Tiffany goods offered for sale by the websitewww.tiffanya.com are listed below.

The use of Digg.com’s online services by www.tiffanya.com also violates your company’s Terms of Use, which states:

5. USER CONDUCT:…By way of example, and not as a limitation, you agree not to use the Services:

2. to post or transmit, or cause to be posted or transmitted, any Content that is infringing, libelous, defamatory, obscene, pornographic, abusive, offensive, profane, or otherwise violates any law or right of any third party;

Accordingly, Tiffany requests your company cease providing online marketplace services to user of the site that is accessed through the URLhttp://digg.com/arts_culture/Jewelry_From_the_bones_of_women_Extravagance_Oomph/who.

Tiffany has a good-faith belief that the above-identified website’s use of the Tiffany name and marks is not authorized by Tiffany, its agents, or the law.

This request is made without waiver of any of Tiffany’s rights or remedies, all of which are expressly reserved.

I declare under penalty of perjury that the foregoing is true and correct and that I am authorized to act on behalf of Tiffany.


Very truly yours,

STEPHEN M. GAFFIGAN, P.A.

By: ___s/ [private]___

[private]

[private]

Stephen M. Gaffigan, P.A.

[private]

Ft. Lauderdale, Florida 33301

Attorney for Tiffany (NJ), LLC.


[private] - Phone

[private] - Facsimile

The counterfeit Tiffany goods offered for sale by the website www.tiffanya.com can be found at:

http://www.tiffanya.com/

http://www.tiffanya.com/tiffany-packing-c-72.html

http://www.tiffanya.com/tiffany-necklaces-c-65.html

http://www.tiffanya.com/tiffany-necklaces-c-65.html?page=2&sort=20a

http://www.tiffanya.com/tiffany-necklaces-c-65.html?page=3&sort=20a

http://www.tiffanya.com/tiffany-pendants-c-66.html

http://www.tiffanya.com/tiffany-pendants-c-66.html?page=2&sort=20a

http://www.tiffanya.com/tiffany-pendants-c-66.html?page=3&sort=20a

http://www.tiffanya.com/tiffany-pendants-c-66.html?page=4&sort=20a

http://www.tiffanya.com/tiffany-pendants-c-66.html?page=5&sort=20a

http://www.tiffanya.com/tiffany-pendants-c-66.html?page=6&sort=20a

http://www.tiffanya.com/tiffany-pendants-c-66.html?page=7&sort=20a

http://www.tiffanya.com/tiffany-pendants-c-66.html?page=8&sort=20a

http://www.tiffanya.com/tiffany-bracelets-c-67.html

http://www.tiffanya.com/tiffany-bracelets-c-67.html?page=2&sort=20a

http://www.tiffanya.com/tiffany-bracelets-c-67.html?page=3&sort=20a

http://www.tiffanya.com/tiffany-bracelets-c-67.html?page=4&sort=20a

http://www.tiffanya.com/tiffany-bracelets-c-67.html?page=5&sort=20a

http://www.tiffanya.com/tiffany-earrings-c-68.html

http://www.tiffanya.com/tiffany-earrings-c-68.html?page=2&sort=20a

http://www.tiffanya.com/tiffany-earrings-c-68.html?page=3&sort=20a

http://www.tiffanya.com/tiffany-earrings-c-68.html?page=4&sort=20a

http://www.tiffanya.com/tiffany-rings-c-69.html

http://www.tiffanya.com/tiffany-rings-c-69.html?page=2&sort=20a

http://www.tiffanya.com/tiffany-accessories-c-70.html

http://www.tiffanya.com/tiffany-sets-c-71.html

http://www.tiffanya.com/tiffany-sets-c-71.html?page=2&sort=20a

http://www.tiffanya.com/specials.html

http://www.tiffanya.com/specials.html?page=2

http://www.tiffanya.com/specials.html?page=3

http://www.tiffanya.com/specials.html?page=4

http://www.tiffanya.com/specials.html?page=5

http://www.tiffanya.com/products_new.html

http://www.tiffanya.com/products_new.html?page=2&disp_order=6

http://www.tiffanya.com/products_new.html?page=3&disp_order=6

http://www.tiffanya.com/products_new.html?page=4&disp_order=6

http://www.tiffanya.com/products_new.html?page=5&disp_order=6

http://www.tiffanya.com/products_new.html?page=6&disp_order=6

http://www.tiffanya.com/products_new.html?page=7&disp_order=6

http://www.tiffanya.com/products_new.html?page=8&disp_order=6

http://www.tiffanya.com/products_new.html?page=9&disp_order=6

http://www.tiffanya.com/products_new.html?page=10&disp_order=6

http://www.tiffanya.com/products_new.html?page=11&disp_order=6

http://www.tiffanya.com/products_new.html?page=12&disp_order=6

http://www.tiffanya.com/products_new.html?page=13&disp_order=6

http://www.tiffanya.com/products_new.html?page=14&disp_order=6

http://www.tiffanya.com/products_new.html?page=15&disp_order=6

http://www.tiffanya.com/products_new.html?page=16&disp_order=6

http://www.tiffanya.com/products_new.html?page=17&disp_order=6

http://www.tiffanya.com/products_new.html?page=18&disp_order=6

http://www.tiffanya.com/products_new.html?page=19&disp_order=6

http://www.tiffanya.com/products_new.html?page=20&disp_order=6

http://www.tiffanya.com/products_new.html?page=21&disp_order=6

http://www.tiffanya.com/products_new.html?page=22&disp_order=6

http://www.tiffanya.com/products_new.html?page=23&disp_order=6

http://www.tiffanya.com/featured_products.html

http://www.tiffanya.com/products_all.html

http://www.tiffanya.com/products_all.html?page=2&disp_order=1

http://www.tiffanya.com/products_all.html?page=3&disp_order=1

http://www.tiffanya.com/products_all.html?page=4&disp_order=1

http://www.tiffanya.com/products_all.html?page=5&disp_order=1

http://www.tiffanya.com/products_all.html?page=6&disp_order=1

http://www.tiffanya.com/products_all.html?page=7&disp_order=1

http://www.tiffanya.com/products_all.html?page=8&disp_order=1

http://www.tiffanya.com/products_all.html?page=9&disp_order=1

http://www.tiffanya.com/products_all.html?page=10&disp_order=1

http://www.tiffanya.com/products_all.html?page=11&disp_order=1

http://www.tiffanya.com/products_all.html?page=12&disp_order=1

http://www.tiffanya.com/products_all.html?page=13&disp_order=1

http://www.tiffanya.com/products_all.html?page=14&disp_order=1

http://www.tiffanya.com/products_all.html?page=15&disp_order=1

http://www.tiffanya.com/products_all.html?page=16&disp_order=1

http://www.tiffanya.com/products_all.html?page=17&disp_order=1

http://www.tiffanya.com/products_all.html?page=18&disp_order=1

http://www.tiffanya.com/products_all.html?page=19&disp_order=1

http://www.tiffanya.com/products_all.html?page=20&disp_order=1

http://www.tiffanya.com/products_all.html?page=21&disp_order=1

http://www.tiffanya.com/products_all.html?page=22&disp_order=1

http://www.tiffanya.com/products_all.html?page=23&disp_order=1

http://www.tiffanya.com/page.html?id=8

http://www.tiffanya.com/index.php?main_page=create_account

http://www.tiffanya.com/page.html?id=15

http://www.tiffanya.com/shippinginfo.html

http://www.tiffanya.com/privacy.html

http://www.tiffanya.com/conditions.html

http://www.tiffanya.com/contact_us.html

http://www.tiffanya.com/site_map.html

http://www.tiffanya.com/gv_faq.html

http://www.tiffanya.com/discount_coupon.html

http://www.tiffanya.com/index.php?main_page=unsubscribe

 
FAQ: Questions and Answers

[back to notice text]


Question: What can be protected as a trademark?

Answer: You can protect

  • names (such as company names, product names)
  • domain names if they label a product or service
  • images
  • symbols
  • logos
  • slogans or phrases
  • colors
  • product design
  • product packaging (known as trade dress)


[back to notice text]


Question: What are the limits of trademark rights?

Answer: There are many limits, including:

  • Fair Use
    There are two situations where the doctrine of fair use prevents infringement:
    1. The term is a way to describe another good or service, using its descriptive term and not its secondary meaning. The idea behind this fair use is that a trademark holder does not have the exclusive right to use a word that is merely descriptive, since this decreases the words available to describe. If the term is not used to label any particular goods or services at all, but is perhaps used in a literary fashion as part of a narrative, then this is a non-commercial use even if the narrative is commercially sold.
    2. Nominative fair use
      This is when a potential infringer (or defendant) uses the registered trademark to identify the trademark holder's product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements:
      • the product or service cannot be readily identified without the mark
      • he/she only uses as much of the mark as is necessary to identify the goods or services
      • he/she does nothing with the mark to suggest that the trademark holder has given his approval to the defendant
  • Parody Use
    Parodies of trademarked products have traditionally been permitted in print and other media publications. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that it is not the original and is instead a parody.
  • Non-commercial Use
    If no income is solicited or earned by using someone else's mark, this use is not normally infringement. Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a literary sense, but not to label or otherwise identify the origin of other goods or services, then the term is not being used commercially.
  • Product Comparison and News Reporting
    Even in a commercial use, you can refer to someone else?s goods by their trademarked name when comparing them to other products. News reporting is also exempt.
  • Geographic Limitations
    A trademark is protected only within the geographic area where the mark is used and its reputation is established. For federally registered marks, protection is nationwide. For other marks, geographical use must be considered. For example, if John Doe owns the mark Timothy's Bakery in Boston, there is not likely to be any infringement if Jane Roe uses Timothy's Bakery to describe a bakery in Los Angeles. They don't sell to the same customers, so those customers aren't confused.
  • Non-competing or Non-confusing Use
    Trademark rights only protect the particular type of goods and services that the mark owner is selling under the trademark. Some rights to expansion into related product lines have been recognized, but generally, if you are selling goods or services that do not remotely compete with those of the mark owner, this is generally strong evidence that consumers would not be confused and that no infringement exists. This defense may not exist if the mark is a famous one, however. In dilution cases, confusion is not the standard, so use on any type of good or service might cause infringement by dilution of a famous mark.


[back to notice text]


Question: What exactly are the rights a trademark owner has?

Answer: In the US, trademark rights come from actual use of the mark to label one's services or products or they come from filing an application with the Patent and Trademark Office (PTO) that states an intention to use the mark in future commerce. In most foreign countries, trademarks are valid only upon registration.

There are two trademark rights: the right to use (or authorize use) and the right to register.

The person who establishes priority rights in a mark gains the exclusive right to use it to label or identify their goods or services, and to authorize others to do so. According to the Lanham Act, determining who has priority rights in a mark involves establishing who was the first to use it to identify his/her goods.

The PTO determines who has the right to register the mark. Someone who registers a trademark with the intent to use it gains "constructive use" when he/she begins using it, which entitles him/her to nationwide priority in the mark. However, if two users claim ownership of the same mark (or similar marks) at the same time, and neither has registered it, a court must decide who has the right to the mark. The court can issue an injunction (a ruling that requires other people to stop using the mark) or award damages if people other than the owner use the trademark (infringement).

Trademark owners do not acquire the exclusive ownership of words. They only obtain the right to use the mark in commerce and to prevent competitors in the same line of goods or services from using a confusingly similar mark. The same word can therefore be trademarked by different producers to label different kinds of goods. Examples are Delta Airlines and Delta Faucets.

Owners of famous marks have broader rights to use their marks than do owners of less-well-known marks. They can prevent uses of their marks by others on goods that do not even compete with the famous product.


[back to notice text]


Question: What do these registration numbers mean? or Why don

Answer: Do not be led astray by the registration numbers: trademark rights in the United States arise from use of the mark in commerce, not from registering. However, both state and federal law can provide relief from trademark infringement.

If your opponent has registered its mark on the Patent & Trademark Office


[back to notice text]


Question: What are the benefits of federal trademark registration?

Answer: Federal registration of a trademark has several advantages including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.

Registration Provides the Following:
1. Constructive notice nationwide of the trademark owner's claim.
2. Evidence of ownership of the trademark.
3. Jurisdiction of federal courts may be invoked.
4. Registration can be used as a basis for obtaining registration in foreign countries.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.


[back to notice text]


Question: What is contributory trademark infringement?

Answer: Even if you are not using someone's mark directly in a product or service you sell, your opponent may say you have liability under the theory of "contributory trademark infringement." This liability may exist if you knowingly allow someone else to violate another party's trademark rights and personally gain from such violation. It may also exist if you intentionally encourage another person to violate a trademark.

For example, in one case a court found that the operator of a California swap meet was liable for contributory trademark infringement because it was aware that vendors at its swap meet were selling counterfeit recordings that violated the trademark of the company that owned the rights to the recordings. While the swap meet operator did not sell the counterfeit items itself, it profited on the sale of the items by selling booth space to the vendors and collecting an entrance fee from the customers buying the infringing products. In another case the manufacturer of a generic drug was found liable for contributory trademark infringement because it continued to supply the drug to pharmacists it knew were mislabeling the drug with the name of the trademarked medication.

However in another case a court felt that a company providing domain name registration, had less control over the use of its service and was not liable for contributory trademark infringement when someone registered a domain name that infringed a trademark.

The important issues in determining liability for contributory trademark infringement are if you are aware of the infringement, if you have the ability to monitor and control the use of your product or service, and you are in a position to receive some benefit from the violation.


[back to notice text]


Question: What is a "counterfeit" mark?

Answer: The Lanham Act defines a counterfeit mark as a false mark which is identical to or substantially indistinguishable from a registered mark.


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