Guitar design trademarks, patents, etc. - a real world example

[PurpleSport]

Okay class - picking up where our legalese class left off last week....

Just saw this one over the weekend - looks like Gibson just successfully sued PRS over a very popular "trademarked design":

http://news.harmony-central.com/News/2004/Gibson-PRS-Case.html

So, in short, looks like they own the rights to a particular single-cutaway solidbody electric guitar shape, and even a BIG manufacturer like PRS can mistakenly infringe on it and lose a ton o' $$$ in the process.

Apparently there's indeed a distinction that's been made in trademarks vs. patents that I wasn't aware of in a reply I made to a similar thread a while back (again, I'm not a lawyer, I just play one on radio/TV every now and then)...however, I do believe I've seen actual 50's era patents for not only the LP but also Strats too. Would be neat if a moderator could chime in with some words from the EBMM legal department on what the differences are.

FYI: Some of you might be asking how this thread has anything to do with EBMM....well, aside from the aforementioned updating a previous thread, as I made a quick scouring of the US Patent office website to find the trademark referenced in the article (which I didn't find)...I came across this wacky one granted our friends in San Luis Obispo - check it out!

http://tess2.uspto.gov/bin/showfield?f=doc&state=f6b3sd.2.39

 

[bing4sons]

PurpleSport,

Your second link didn't work.

Very interesting. I guess Gibson just went after the biggest player? I've seen countless knock offs of the LP. The Heritage model, built by ex Gibson employees, looks just like the LP.

Bing

 

[tvanveen]

The interesting part, as I understand it, is that Gibson Trademarked the LP years and years after the fact, and still won the lawsuit.

Apparently Fender is just now trademarking the tele and strat.

Wonder what a strat trademark would do to the silo?

 

[PurpleSport]

Thanks Bing - I think perhaps that last link was a temporary, per user/session one that the USPTO site generated when I was checking it out. I'll see if I can dig it back up and do a cut/paste of the info here. What I saw was really hysterical in the dry, legal context it was framed in...

Funny you should mention the Heritage thing. I was just trying to get a PDF brief of the case from the Tennessee district court this was heard in, but they apparently don't have it ready yet. BUT....they did have reference to what looks like another case where Gibson was claiming to have been overcharged by the firm that handled another suit of them vs. Heritage.

Apparently, Gibson is rather litigious when there's a threat of them losing market share, and my guess is that PRS must have been taking a chunk of their business and this was one of the only ways they could strike back (personally, I'd take one over an LP given the choice - PRS has blown their doors off in overall quality for years). Considering how massively overpriced LP's are these days, one wonders if the costs are due to lesser sales or all the money they spend on their legal fees...that article I just saw had expenses quoted in the $170,000 to $250,000 range!

 

[PurpleSport]

Here we go....trademark serial #78310063:

Word Mark MY GUITAR CAN KICK YOUR GUITAR'S ASS
Goods and Services IC 015. US 002 021 036. G & S: - guitars, electric guitars, electric bass guitars, basses, electric basses; - strings for fretted musical instruments, including strings for guitars, electric guitars, electric bass guitars, electric basses, mandolins, banjos; - picks for guitars; - electric connector cables for amplified musical instruments; - volume control pedals; - shoulder straps for musical instruments; - guitar tuning cranks; - cases for guitars, electric guitars, electric bass guitars, basses, electric basses [carrying]; - parts and fittings for the aforesaid goods; IC 015
Mark Drawing Code (1) TYPED DRAWING
Serial Number 78310063
Filing Date October 6, 2003
Current Filing Basis 1B
Original Filing Basis 1B
Owner (APPLICANT) Ernie Ball, Inc. CORPORATION CALIFORNIA 151 Suburban Road San Luis Obispo CALIFORNIA 93401
Attorney of Record Stephen N. Dorsi
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

 

[pack-rat]

interesting

Thanks for posting that Purp.

continuation of my thread ?

http://www.ernieball.com/forums/showthread.php?s=&threadid=1906



I'd love to read the arguments from both sides. The PRS lawyers really dropped the ball it would seem.

With regards to Fender, The strat is probaby the most copied guitar out there. (wonder how many strat copies are already produced) and for years these companies have been producing them.
Why didn't Fender trademark the design to begin with ? I actualy hope they don't get the rights to the design.
Fender is way overpriced for what you get.


maybe the reason why Gibson is overpriced because of it's huge legal department.

That site is really good

Will we be seeing EB MM in court with the guy who makes the intruder ? (an axis copy)

 

[bing4sons]

Why didn't Fender trademark the design to begin with ? I actualy hope they don't get the rights to the design.

Probably when the 1st one was built, Fender could care less about legal stuff, he just wanted to build guitars and make some money at it. He probably only became a business man out of necessity.

I actualy hope they don't get the rights to the design. Fender is way overpriced for what you get.

I agree with that. I participate in the Taylor Guitar Forum. Any time electric discussions come up, I recommend Music Man guitars, but I feel like banging my head against a brick wall. For my 1 reco. for EB, there are 20 for Fender American Strats.

Bing

 

[PurpleSport]

Hi Packrat - yup this thread is that one continued...sorry I didn't add onto the old one. I'll try to put up a link to any downloadable legal docs I find on Gibson vs. PRS.

Regarding the Mean Street guitars guy, I believe when I browsed his site a few weeks ago he actually had the balls to say he was gonna produce them as long as he could despite being legally told not to. Not sure if that was from EBMM or from EVH himself, but it appeared he did pull at least pull some pages from his site like the striped versions of what he sells. It seems he might still could get in hot water over that headstock, tho...there's one on eBay right now which looks very EBMMish to my eye. Sure hope he's buying good legal insurance!

Something else to keep in mind about patent and trademark laws is that it's getting pretty silly these days in the name of expediency. Apparently, there's a shortage of patent inspectors, so to speed up the process, they're letting a lot of stuff through without due diligence, and it's causing problems. Some guys are taking advantage of this and "patenting" things that have been around for years, but are getting the upper hand on technicalities and then turning around and suing everyone for "damages" and after the fact licensing fees.

I've got experience with this with the company I currently work for, in fact; some attorney who isn't even in my business "patented" something we sold which anyone coulda made, and we had to knuckle under rather than fight it because the legal fees to get the patent overturned woulda been astronomical.

It's getting pretty nuts. I think another example is with our friends at DiMarzio...I believe they actually have a patent or trademark on humbucking pickups with dual cream-colored bobbins. Apparently, no other manufacturer can mass produce them in that color because that's what the original Super Distortion was associated with. Or something like that....

 

[tvanveen]

Why didn't Fender trademark the design to begin with ?

I don't know...over on the FDP someone mentioned that when CBS bought him out they considered trademarking the strat but didn't want to spend the $800 it would cost.

Any time electric discussions come up, I recommend Music Man guitars, but I feel like banging my head against a brick wall.

The FDP people are pretty open to MM suggestions...there's usually a thread going from someone asking about one of the models.

This reminds me of camera gear arguments...most people think of Canon and Nikon as the only pro 35mm systems worth having...for years I shot Pentax becuase of the superior optics.

I kind of like using "underdog" brands...different is often better....

 

[pack-rat]

I'd love to hear input about trademarks and copyright material from EBMM.
I find this topic interesting

 

[puppiesonacid]

anyone ever notice that fender's strat headstock design seems to be lifted from the old school bigsby headstock? i found it quite hypocritical when they started legal action about people copying thier headstock design when thiers wasn't even an original design. As for Gibson... they piss me off with their overpriced guitars as well.

I feel bad for PRS(even though i dont particularly like their guitars) just because it has a similar design... idk its ridiculous and reflects to a great degree that which our capitalist society has done to people. sad... everything is about money...nothing is about making the world a better place.


God bless,


Tony

 

[Jimi D]

I'd love to hear input about trademarks and copyright material from EBMM.
I find this topic interesting

I doubt that EB/MM will spend money to send one of their lawyers down to chat with us about the nuances of guitar patents and trademarks... It wouldn't be a very smart thing to do, either...