Best of 2009: “While my guitar gently weeps”

This was first posted on March 31, 2009.

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”:

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:

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.

The Trademark Trial and Appeal Board of the United States Patent and Trademark Office reached a decision on March 25th . . .

“Fender refers to the ‘iconic’ status of these [instrument] outlines in American popular culture,” noted the Board, “however, we must resolve a narrow issue: Do consumers associate these two-dimensional outlines, depicted in the drawings, as indicators of source?” . . .

“The applicant has not established acquired distinctiveness such that these two-dimensional outlines of guitar bodies, standing alone, serve to indicate source,” the TTAB concluded. “The evidence overwhelmingly demonstrates that these configurations are so common in the industry that they cannot identify source. In fact, in the case of the [Stratocaster] body outline, this configuration is so common that it is depicted as a generic electric guitar in a dictionary.”

In its acquired distinctiveness analysis, the TTAB picked up on a point that is often lost not only in general discussion about trademark, but all too often by legal professionals, robed and otherwise, who forget to ask the question: Is the purported trademark being used — whether by the one asserting it, or the one defending such use — as a trademark?:

[A]lthough there have been substantial sales and expenditures on advertising, the more important question is how is the alleged mark being used, i.e., in what manner have consumers been exposed to the alleged mark so that we can impute consumer association between the configurations and the product producer. To determine whether a configuration has acquired distinctiveness, advertisements must show promotion of the configuration as a trademark.

Here, other than trademark notices on advertisements that include the body designs beginning in 2003, there is nothing in the record that shows that the alleged marks are being promoted as source indicators. The examples in the record simply show a picture of the product and in all of the examples the word mark FENDER is prominently displayed.

In other word, your trademark, Fender, is FENDER. That’s how you tell people it’s a Fender, and that’s how they look to see if it’s a Fender. You have therefore failed to demonstrate that “the primary significance of the product configuration [i.e., the guitar shape you call a trademark] in the minds of consumers is not the product but the source of that product.”

Interesting side note: Including on the extensive docket (the richly-illustrated 75-page decision is found at that link too) for this opposition proceeding are two entries styled as “confidential brief on the merits for plaintiff.” Proprietary trade secret stuff, I guess, but pretty intriguing!

I often explain to clients and prospective clients that the 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. Absent the rare circumstance of an entire industry dedicated to counterfeits, à la Vuitton, if 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.

Originally posted 2015-01-26 15:03:05. Republished by Blog Post Promoter