I’ve never had a guest post in response to a LIKELIHOOD OF CONFUSION® item before, but that’s only because no one with the stature to respond to something I’ve written here based on personal knowledge of the facts has ever had the nerve to ask for one — not until I entered the rock and roll world of the fascinating Ritchie Fliegler, that is. Ritchie’s a marketing guy, not a lawyer, so, naturally, he’s not afraid to speak truth to, uh, whatever it is this thing we have here is.Here’s what I would love to be able to say is the first of many replies to a LOC blog post from someone with a different point of view, and in a position to know. — RDC
“Where you stand depends on where you sit” – Nelson Mandela
This is one of my favorite quotes. Not only does it ring true on so many levels, it’s also easier to understand than Einstein’s theory of relativity, which says basically the same thing —“Two events, simultaneous for some observer, may not be simultaneous for another observer if the observers are in relative motion.”
What does this have to do with trademark law? Not much actually, but it has a lot to do with a spirited and interesting conversation I had recently, with Ron.
Like many of you, my Google alerts are set to tick off on a number of subjects near and dear to me, classic cars, family members, former employers and the like. A few days ago the Google light went off alerting me to a blog post about a former employer, Fender Musical Instruments Corporation (FMIC) and their failed attempt to register trademarks for their famous guitar-body shapes – Strat, Tele and P-Bass. The article was well written, and thoughtful, however, in a vortex of relativity that would do ol’ Albert proud, my blood started to boil at what I perceived as purposeful errors and omissions by an uninformed outsider.
Now, I have been away from FMIC for well over two years, but I still have many dear friends at the place as well as a lingering vested interest… so I sprung in to action and sent a message with a requisite level of rancor. I offered a lesson on the three eras of Fender ownership, some insight into the essential differences between the Gibson/PRS lawsuit (I was an expert witness for PRS. Gibson lost) and the FMIC trademark applications (we were turned down). There was a paragraph, based on my understanding of the transcripts (mostly public and there for the reading)… on my take of where it all went off the rails for us (CBS’s “most Copied Guitar campaign was the killer IMHO) and of course… a few tidbits of info that Ron could never have known and in a big way, were the drivers for the application in the first place.
Counterfeiting? Yes. Investors looking to shore up equity? Yes. Cheap knock-offs thinly veiled as FMIC products? Yes? FMIC’s licensing efforts, now raking in significant millions in retail sales? BINGO!
Headed up by yours truly, FMIC had a successful “side business” licensing it’s marks to any number of companies in businesses such as apparel, jewelry, video games and the like. Besides the obvious, one of the things a Licensee wants from a Licensor is the assurance that the Licensor actually owns the marks he’s licensing. And, that if questioned, the Licensor would go to the mat to protect their value. There was no doubt in our minds, or in the minds of the public that we owned those shapes (the actual registered names and headstock etc…. were never in doubt) but indeed, like Lee Marvin the day before he was introduced to Marvin Mitchelson, we were whistling past the graveyard on this one. On the other hand, this effort had showed Licensees we were up for a fight and willing to protect our stuff… in the end, in one man’s opinion, it was worth it. Those that did the heavy lifting of files and research are free to disagree!
By the time the ruling came down, I had already left FMIC, but still defend that decision… over and over… It seems people never tire of assuming that I want FMIC to fail (nothing could be further from the truth).
The often-assumed conclusion that this was a costly flyer that squandered mountains of money that could otherwise have been spent making better and more innovative products was at the center of our “discussion.” And, FMIC is no worse off today than it was before the application. Ron and I agreed to disagree on the wisdom of this strategy, because in the law and in marketing — where you stand, really does depend on where you sit.