Tag Archives: Fender

Where you stand depends on where you sit

Originally posted 2009-12-28 09:00:50. Republished by Blog Post Promoter

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. Read More…

While my guitar gently weeps

One of the first posts on LIKELIHOOD OF CONFUSION® was about Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 70 UPSQ2d 1911 (M.D. Tenn. 2004), and the question of whether “only a Gibson guitar can make a Gibson-looking guitar.”   Not long after that decision came down, Gibson’s rival Fender filed for what it now evidently believed it had a shot at getting — a trademark registration for guitar shapes.

Fender had an uphill battle, though.  Not only would it have to satisfy the post-TrafFix Devices standard for protection of a product configuration as a trademark, namely showing that the feature claimed as a trademark is not functional.  In addition, because in the case of a musical instrument the product is the  packaging, Fender would have to prove  “acquired distinctiveness” for its would-be trademark-protected products, such that “the primary significance of the product configuration in the minds of consumers is not the product but the source of that product.”  (Remember that.)
Obviously, however, Fender was emboldened by the Gibson decision.  Never mind that in September, 2005, the Sixth Circuit reversed the Middle District of Tennessee ruling in Gibson, in an opinion which rejected a unique theory of LIKELIHOOD OF CONFUSION.  It was a variation of downstream or post-sale likelihood of confusion divided by “initial-interest confusion,” a combination the court termed “smoky-bar confusion”:


Smokin' Guitar

Finally, Gibson argues that, taken together, the initial-interest-confusion and post-sale confusion doctrines should be extended to include something that we can only describe as a “smoky-bar theory of confusion.” Initial-interest-confusion doctrine, which we have already rejected on the facts of this case, applies when allegedly improper use of a trademark attracts potential purchasers to consider products or services provided by the infringer. Post-sale-confusion doctrine, which we have also rejected on the facts of this case, applies when allegedly improper use of protected trade dress on a lower-quality product diminishes the reputation of the holder of the rights to that trade dress. In the smoky-bar context, however, Gibson does not suggest that consumer confusion as to the manufacturer of a PRS guitar would lead a potential purchaser to consider purchasing a PRS, rather than a Gibson, or that Gibson’s reputation is harmed by poor-quality PRS guitars. Rather, Gibson argues that this confusion occurs when potential purchasers see a musician playing a PRS guitar and believe it to be a Gibson guitar:


Smokey B'ar

In the context of guitar sales, initial interest confusion is of real consequence. Guitar manufacturers know that they can make sales by placing their guitars in the hands of famous musicians. On a distant stage, a smoky bar, wannabe musicians see their heroes playing a guitar they then want.

As Gibson concedes that PRS produces high-quality guitars, we do not believe such an occurrence could result in confusion harmful to Gibson.  If a budding musician sees an individual he or she admires playing a PRS guitar, but believes it to be a Gibson guitar, the logical result would be that the budding musician would go out and purchase a Gibson guitar. Gibson is helped, rather than harmed, by any such confusion.

Fender, nonetheless, forged ahead.  This did not go unnoticed: a phalanx of guitar manufactures promptly opposed the application.  And now, according to the blog of Musical Instrument Professional magazine, MIPro:

MMR Magazine has reported that FMIC’s US trademark applications concerning its Stratocaster, Telecaster and Precision guitar body shapes have been rejected. Similar applications have previously been rejected, both in the UK and the rest of Europe. Read More…