In this ruling handed down in March
2009, the United States Patent and
Trademark Office’s Trademark Trial
and Appeal Board rejected Fender’s
bid to trademark its Telecaster,
Stratocaster, and Precision bass
body shapes after decades of
neglecting to protect the trademark.
A 1959 P bass owned by Clifford Antone. Photo by Billy Mitchell taken from Electric Guitars & Basses: A Photographic History by George Gruhn and Walter Carter, © Gruhn Guitars, used by permission.
Shapes of Things
of Ibanez guitars. During that time, Hoshino
made several lines of instruments that were
clearly meant to evoke, if not outright copy,
the look and sound of Gibson Les Paul and ES
series guitars. According to a history of Ibanez
by Michael Wright, Gibson’s parent company at the time (Norlin) filed suit in Federal
District Court in June of 1977 against the US
distributor of Hoshino instruments “to send
a message to all companies making copies”
of Gibson instruments. The suit wasn’t aimed
at cloned body styling per se, but at overly
similar headstock designs, which have always
had more weight in the guitar world’s code of
honor than body styling anyway.
Wright says Hoshino had been preparing
internally for such a challenge from US makers for several years and that Ibanez was
moving away from copies to unique designs
anyway. So the suit was easily settled out of
court when Elger, the US distributor, pledged
to stop making any evocative headstocks or
using any confusing branding. Despite the
lack of legal bloodshed, today you can find
so-called “lawsuit” Ibanez guitars with Gibson-like headstocks from the mid-’70s fetching
anywhere from nearly a thousand dollars to
more than two grand.
Clash of the Titans, Pt. 2
More recently, Gibson made a major trademark move on our own shores by suing
Paul Reed Smith Guitars, one of the most
esteemed craft builders in the country. Filed
in November of 2000, the suit claimed PRS
Singlecut solid-bodies infringed on Gibson’s
trademark of the Les Paul body shape, a
trademark it had secured seven years prior.
It was a sweeping, aggressive claim that
demanded massive damages and accused PRS
of unfair competition, fraud, and deceptive
business practices. It seemed almost surreal,
especially since a variety of companies around
the world had been making far more accurate
facsimiles of Les Pauls for years. Nevertheless,
in 2004 a district court ordered PRS to
stop making, distributing, and selling the
Singlecut—one of its best-selling guitars.
3
W D
Fender Musica
Opposit
to application Serial No
filed on
__
Sadowsky Gui
v.
Fender Musical Instrum
Opposition No. 9
to application Serial Nos. 765161
filed on April 25,
_____
The ESP Guitar Compan
v.
Fender Musical Instruments Corp
Opposition No. 91161520
to application Serial Nos. 76516126, 76516
filed on April 25, 2003
_____
Lakland Musical Instruments, LLC
v.
Fender Musical Instruments Corporation
Opposition No. 91162312
to application Serial No. 76516127
filed on April 25, 2003
_____
Michael Tobias
v.
Fender Musical Instruments Corporation
Opposition No. 91162313
to application Serial No. 76516127
filed on April 25, 2003
2
_____
Indoor Storm, Ltd.
v.
Fender Musical Instruments Corporation
Opposition No. 91161411
to application Serial Nos. 76516126, 76516127, 7
filed on April 25, 2003
_____
Tradition Guitars, Inc.
v.
Fender Musical Instruments Corporation
Opposition No. 91161413
to application Serial Nos. 76516126, 76516127, 765159
filed on April 25, 2003
_____
Raise Praise, Inc. d/b/a Tom Anderson Guitar Works
v.
Fender Musical Instruments Corporation
Opposition No. 91161420
to application Serial Nos. 76516126, 76515928
filed on April 25, 2003
_____
Schecter Guitar Research, Inc.
v.
Fender Musical Instruments Corporation
Opposition No. 91161422
to application Serial Nos. 76516126, 76516127, 76515928
filed on April 25, 2003
_____
JS Technologies, Inc.
v.
Fender Musical Instruments Corporation
Opposition No. 91161486
to application Serial Nos. 76516126, 76516127, 76515928
filed on April 25, 2003
e
Opposition Nos. 91161403 et al.
THISOPINION IS A
PRECEDENT OF THE TTAB
Oral Hearing: Mailed:
November 6, 2008 March 25, 2009
Opposition Nos. 911
_____
Trademark Trial and Appeal Board
______
Stuart Spector Designs, Ltd.
v.
Fender Musical Instruments Corporation
Opposition No. 91161403
to application Serial No. 76516127
filed on April 25, 2003
_____
U.S. Music Corporation
v.
Fender Musical Instruments Corporation
Opposition No. 91161405
to application Serial Nos. 76516126, 76516127, 76515928
filed on April 25, 2003
_____
Warmoth Guitar Products, Inc.
v.
Fender Musical Instruments Corporation
Opposition No. 91161406
to application Serial Nos. 76516126, 76516127, 76515928
filed on April 25, 2003
UNITED STATES PATENT AND TRADEMARK OFFICE
1
The November 23, 2005 order dismissing this proceeding was
vacated on December 12, 2005. The electronic case file has now
been updated to reflect this correction. Opposition Nos.
91162245, 91162246 and 91162923 were dismissed without prejudice
on September 9, 2005. Two other proceedings, Opposition Nos.
91161269 and 91162484, were dismissed with prejudice under
separate orders, December 12, 2005 and February 11, 2008,
respectively.
1
to be worth much anyway. “First, you’ve got
to know enough about guitars to be even
able to confuse the two,” he says. “If you
don’t know anything about automobiles at all,
you’re not going to confuse a Volkswagen with
a Cadillac. And then you can’t have too much
knowledge, or you won’t be fooled for more
than a second.”
The ban lasted just about a year. Then the
Sixth Circuit Court of Appeals overturned the
injunction and in every possible way rebuked
the findings of the lower court. One key part
of the ruling hinged on one of the core criteria
by which trademark infringement is tested—
the likelihood that a consumer will be con-
fused into purchasing an imitator brand while
thinking he’s buying the original. In assessing
whether PRS Singlecuts passed this particular
test, the appeals court cited the testimony of
guitar historian Walter Carter, an expert wit-
ness called by Gibson, who famously said in
a deposition (much to Gibson’s dismay) that
even if there were a possibility that someone
could mistake a Singlecut for a Les Paul at
a distance or in a smoky bar, “only an idiot”
would confuse one for the other at the point
of sale. Given that the PRS Singlecut had
been such a hot seller before the court battle,
it comes as no surprise that the company
launched back into production of the single-
cutaway guitar designs immediately after the
court ruling. Current PRS guitars with that
shape now include several SE import versions,
US-made signature guitars such as the Mark
Tremonti model, and the new US-made SC 58.
In the end, while Gibson failed to prove
that PRS had violated its trademark, Gibson
retained the trademark itself. So nothing rules
out the prospect that the company could go
after makers of more convincing Les Paul copies in the future.
Carter, who works for Gruhn Guitars in
Nashville, says the confusion test is too vague
Back to the Future (2003, That Is)
The case pitting Fender against Ron
Bienstock’s consortium of guitar builders was
different. While Gibson had been trying to
defend a trademark it already owned, Fender
