LIKELIHOOD OF CONFUSION®

Originally posted 2010-11-25 20:36:59. Republished by Blog Post Promoter

“You’re gonna have to face it, you’re addicted to law!”

Well, that’s what the song always sounded like to  me.  When you’re a hammer… (and I do try to be a hammer!) …

Surely the subject of that years-ago Robert Palmer MTV cheesecake staple must be Gibson, the litigation-addled guitar company.  (Yes, one of the three guitars in the video may very well have been a Gibson, as I vaguely remember it!)  And, as I’ll explain, they’re at it again.

What's the matter with you? Is this what you've become?

From the very beginning I’ve pondered all these out-of-tune lawsuits, followed them and mostly spanked Gibson and fellow guitar litigator Fender — and maybe a little bit got spanked back here, you think? (I don’t) — for litigating instead of making beautiful musical instruments and selling them to make beautiful music.

Not that litigation isn’t music to my ears.  It is! So I’m going to enjoy — I’m going to give thanks, even — for this posting from Trademark Scroll that, well, is just this Scribd upload of the complaint with the highly descriptive title, “Gibson Guitar is suing multiple defendants, including Wal-Mart, Amazon, eBay and others over trademark infringement.”  I actually see the outlines of a strategy:  keep thinking of defendants until you find one you can win against!

Works for me!  Especially considering that, well, there is always the possibility that this time Gibson really is right.  Right?

Originally posted 2005-01-07 09:57:00. Republished by Blog Post Promoter

John Welch’s TTAB Blog — which monitors developments at the Trademark Trials and Appeals Board — picks up this recommended reading from a recent article in the Trademark Reporter journal on the topic of trade dress rights in musical instruments. John quotes authors Robert M. Kunstadt and Ilaria Maggioni commenting on the recent decision in Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 70 UPSQ2d 1911 (M.D. Tenn. 2004), which ruled in essence that under trade dress law, only a Gibson guitar can make a Gibson-looking guitar, to wit:

[H]ad the court properly appreciated how to play a LES PAUL guitar, the court would not have granted summary judgment for Gibson. At a minimum, the functionality of the alleged Gibson trade dress features presents fact issues for trial.

In other words, a Gibson looks like a Gibson because it sounds like a Gibson — and in trademark law, functional features are not granted trademark protection. (If they’re novel, you may be able to get a patent, of course.)

I don’t know as much about guitars as these authors, I guess, but back in the day when I used to play bass guitar on my Gibson SG – copy! — (see leftl yep, that’s your blogger) I sure knew that it wasn’t playing like the real thing. But it did look enough like a Gibson and, what I found most valuable, had a guitar-proportioned fret board unlike the long Fender basses that were most popular but which I found harder to play. So on the one hand I, as the consumer, was driven by functionality. On the other hand, I wanted a bass that looked like a real big-boy bass. Considering the fairly low quality of my instrument, it’s hard to imagine that the product configuration had much if anything to do with how it sounded. At the end of the day, and on a quick read of the excerpts, I might agree with the TTAB here.

UPDATE: On the other hand, the issue isn’t how my Acme guitar’s sound was affected by its shape, it’s how the Gibson was — that’s what drives the functionality argument. So perhaps I should reconsider after I read the whole opinion and the article.

Originally posted 2009-07-16 10:25:07. Republished by Blog Post Promoter

Since the beginning I’ve been blogging about the attempts by Gibson and Fender, the makers of fine guitars, to avoid copycat competition via the trademark and litigation route.  My most recent post on the progress of that campaign is here, where I wrote:

[T]he main reward for a great, original product is a successful business based on that product.  Intellectual property notwithstanding, the best way to protect most great ideas is by consistently excellent execution, high quality, responsive customer service, continued innovation and overall staying ahead of the competition by delivering more value.  . . .  [I]f an enterprise can’t fathom protecting its value proposition without some kind of gaudy trademark protection, ultimately something has to give.

Fender, according to the record in this opinion, understood the truth well for decades.  It warned consumers to stick with its quality “originals” and not to be fooled by “cheap imitations,” and it flourished.  But for all these years, Fender never claimed to think the sincerest form of flattery was against the law.  Only in the feverish IP-crazy atmosphere of our current century did the company deem it “necessary” to spend a fortune that could have been used on product development, marketing or any darned thing on a quixotic quest for a trademark it never believed in itself.  That is more than an impossible dream — it’s a crying shame.

Fake rock star with fake Gibson

Gibson is beginning to make its arguments to consumers on the merits, now, instead.  Via @megLG (Megan Langley Grainger), Gibson is now online with what looks like a blog post that shows you, with words and music — well, no, that would actually have been really compelling, but at least with words and pictures — how to tell the difference between a counterfeit Gibson and the real thing.

The piece is pretty interesting, especially for a former guitar player, although it is entirely about counterfeit Gibson guitars (bearing the GIBSON name and trademark), which are clearly a trademark infringement.  That’s not the same as knockoffs — copies of unprotectible elements of the guitar style meant to evoke the Gibson (or Fender) “look” — which is what I’ve written about in the past.

Unfortunately for Gibson, they hired someone out of the RIAA copywriting program and gave this very cool, informative and interesting post the leaden title, “Gibson Leads Industry Fight Against Counterfeit Gibsons,”  instead of “Is Your Gibson the Real Thing?” or “How to Spot a Fake Gibson.”  Read More…

Originally posted 2005-09-15 16:25:38. Republished by Blog Post Promoter

The AP reports:

NASHVILLE, Tenn. Nashville-based Gibson Guitar Corporation has lost a legal battle. A federal appeals court has ruled that a competitor‘s copy of Gibson’s popular Les Paul model does not infringe on Gibson’s trademark.

Here’s a link to the decision.

We blogged on this story a while back and expressed some doubt about the lower-court decision. Guess now it’s Gibson‘s turn to fret.

Originally posted 2009-03-24 15:47:16. Republished by Blog Post Promoter

Via Marty Schwimmer’s Trademark Blog:

Marty, you got peanut butter in my chocolate! You’re considering the respective design and layout choices in isolation, seriatim, rather than looking at the whole and acknowledging, hey, peanut butter cups!

Having said that: I acknowledge that this is a borderline case. It may very well be properly described as allusive of the TM in question… but I’ve argued on some blog or another that I don’t endorse the idea that every allusion to a cultural icon is a trademark infringement, or even a dilution.

But if you buy into the philosophy of dilution at all, and hey, it’s the law, this may meet the new and devolved “likelihood of dilution” test. I just can’t conceive what could be motivating this defendant to litigate.

Frankly Reese’s has a bit of problem in that it has probably established such a strong “look” in the peanut butter category that peanut-butter based convenience food products are routinely sold utilizing the not-all-that-intuitive orange color in one way or another. It’s a little bit like the Hellmans’ Mayonnaise “official mayonnaise colors” problem, too…

Well, that’s a digression. But, you know — Reese’s, cursive, orange, brown, disk shapes — I’d sign that complaint for money.

Originally posted as a comment by Ron Coleman on The Trademark Blog using Disqus.

We blogged a while ago about the Les Paul guitar lawsuit, based on the idea that the shape of the Les Paul guitar was a trademark of Gibson Guitars when the District of Tennessee declined to agree with that idea. Now it’s been finally resolved, and the winner isn’t Gibson — the Supreme Court denied to hear their appeal from the Sixth Circuit Court of Appeals, which affirmed the decision. The Baltimore Sun reports:

William D. Coston, a Venable LLP attorney who represented Paul Reed Smith in the case, said the appellate court ruling and the Supreme Court’s refusal to hear the case further clarify trademark restrictions on product shape.

“The law says to win a trademark case you have to show a likelihood of confusion,” Coston said. “Gibson was forced to concede that no one would ever be confused at the point of sale.”

Steve Duvall, a sales associate at Music-Go-Around in Cockeysville, said many companies have mimicked the Les Paul style.

“For the longest time, Gibson overlooked it,” he said. But with the popularity of the Paul Reed Smith’s Singlecut, “the company had really broken into the same market.”

Point of sale, not “initial interest,” is what governs confusion? What a concept!