Gibson Loses Trademark Appeal

Post by **Dave Mudgett** » 19 Sep 2005 7:54 am

To me, the issue is not whether Gibson should protect their trademarks - of course they should. The issue is what actually constitutes a trademark. Body shapes, headstock shapes, etc., IMO, do not constitute trademarks, but are designs, protectable by patent for a limited time only. Both Fender and Gibson have argued for some time that the shapes of their body/headstock are proprietary trademarks - I and many others disagree. They are primarily functional. This is sort of like the formula for ketchup, to me. Others can make ketchup, using the exact same formula if they like, but only Heinz can call it Heinz. Most manufacturers even make a ketchup bottle pretty much the same way - across the room, you can't tell the difference. But when you get up close, there are clear identification differences - primarily the trademarked name.

I believe the Les Paul double cut is strikingly similar to a PRS Custom in many ways. I think it's all fair game - these guitar designs have been around for a very long time. Hamer initially adapted the double-cut LP Special shape in the 70s. PRS refined this with a carved top and other unique design features in the 80s. Gibson followed in the 90s with a double-cut, carved-top LP. Any possible patent protection on these design features would have ended a long time ago. This is the same as Promat making a P/P guitar - entirely legal, since any patentable designs expired a long time ago. People are free to support this design adaptation by buying the guitars - or not - but I don't think the courts should get into this at all.

Finally, I'm not bashing Gibson, even though I think that this lawsuit was wrong-headed. I agree that many of the current Nashville-made Gibsons plain blow away most of what was made in the very late 60s, 70s, and early 80s. I proudly play a current Les Paul Standard, reissue Firebird V, and Sheryl Crow acoustic (a reissue of a '63 SJN - Country & Western). These are among the finest Gibsons I've ever played, and I have owned 50s LP Gold Tops, 60s SGs, 40s-50s-60s J45-50 and SJs over the years.

HowardR · Post by **HowardR** » 19 Sep 2005 8:09 am

Steinar, your design infringes on the game known in America as "Knock Hockey".

You can end up in a penal colony.....

Stephen Gambrell · Post by **Stephen Gambrell** » 19 Sep 2005 10:04 am

"Body shapes, headstock shapes, etc., IMO, do not constitute trademarks, but are designs, protectable by patent for a limited time only. Both Fender and Gibson have argued for some time that the shapes of their body/headstock are proprietary trademarks "

Dave, I don't know about NOW, but back when Paul Smith actually BUILT guitars, he explained in the promp video that came with his guitars, that the PRS body style, headstock shape, and bird inlays, were registered trademarks. That's why you don't see PRS knockoffs.
Bill H., BOTH companies build guitars in the U.S. They're also both RIDICULOUSLY expensive. Great guitars, though.

Jack Francis · Post by **Jack Francis** » 19 Sep 2005 10:31 am

Bill...It would be nice if Gibson COULD make a guitar as nice as a PRS. (Of any shape)

My experience with Gibson & PRS guitars is limited by what I pick up at Guitar Center and a few other music stores....maybe Gibson
is sending the good ones to areas outside the Phoenix area.

Post by **Dave Mudgett** » 19 Sep 2005 11:17 am

Stephen - it isn't PRS, Gibson or Fender that decides what are trademarks - it's the patent and trademark office implementing patent/trademark law, as well as the courts, as Gibson has just found out.

I simply argue that body and headstock shapes are designs, not trademarks. I agree with the appeals court decision wholeheartedly on this ruling, and hope this leads to additional action on other misuse of the trademark rules. If we could remove the monopoly on fabricating 50-year-old designs, there would be more competition on quality and price. This monopoly is the reason that some of these guitars are so overpriced. As always, my opinion.

Mark Lind-Hanson · Post by **Mark Lind-Hanson** » 19 Sep 2005 11:23 am

Am I blind, or don't PRS's and Gibson "Les Pauls" have quite differently shaped headstocks?
Who would "cross the floor of a store when checking out a Gibson" and not recognize the obvious distinction in headstock design. It's a dead giveaway. You just have to look a little closer, docha think?

Post by **Dave Mudgett** » 19 Sep 2005 11:44 am

Of course, it's absurd. The PRS guitar is extremely distinguishable even from across a room. I argue that isn't even necessary - if they can be distinguished close-up, that's enough difference.

But Gibson was arguing even more - that the single-cut LP body shape was their trademark, and not just a design feature. A decision in their favor would throw the guitar-building business in a complete tizzy, with old-name makers asserting trademark rights on old expired-patent designs.

Another ironic twist, similar to the issue in copyrightable songs, is that the modern old-name companies that own these supposed 'trademarks' have no relationship whatever, as corporations, to the original makers that invented the designs, with the exception of PRS.

David L. Donald · Post by **David L. Donald** » 19 Sep 2005 6:02 pm

Bill, please don't sue your mother to keep your business going.
She's made in American too.

Seriously. We can buy american
and still have the same issues;
as we see above.

But the guitars made overseas,
have had the same design duplication for decades,
and WERE NOT SUED.

The Gibson Name is a trademark, and the Fender name,
and each's type of font design and layout.
The headstock while identifiable is not a trademark,
but is a product desgin element.
Gibson has different heaqdstocks on different Gibson instruments. Fender has a bit of variatiopn too.
Tell me a Stringmaster and Tele look the same : but the Fender logo is close on both.

So why go after the other american company making quality instruments,
and not the Korean knock off artists??

1) because they are taking your market share at home,
by building a better product.
( oh the horror od it all)

2) Because the lawyers can get at the money easier in the USA,
and in a shorter time frame.
(and know they will get THEIR cut win or lose...)

Win, Win, for the lawyers, and lose, lose for us consumers.
But hopefully not for Bill's mom!

[This message was edited by David L. Donald on 19 September 2005 at 07:08 PM.]

Stephen Gambrell · Post by **Stephen Gambrell** » 19 Sep 2005 6:32 pm

Actually, David, the courtrooms are littered with past "replica" lawsuits. The Ibanez/Gibson suits, the Martin/Takamine lawsuits, and the Fender/Fernandes suits, just for starters. Foreign companies building complete copy instruments, AND making the logos so similar that you couldn't tell 'em apart from 10 feet. Plus selling the instruments for several hundred dollars less. Early Takamine ads actually USED a Martin D-28, and the visual similarities were the focus of the ads.

Pat Burns · Post by **Pat Burns** » 19 Sep 2005 6:40 pm

The claw hammer industry is breathing a collective sigh of relief.

Pat Burns · Post by **Pat Burns** » 19 Sep 2005 6:41 pm

hmmm...double posted, and I can't delete this one. Might as well Babylon....I suppose Gibson banjos would be next.[This message was edited by Pat Burns on 19 September 2005 at 07:44 PM.]

Rick McDuffie · Post by **Rick McDuffie** » 19 Sep 2005 7:00 pm

Why doesn't Henry sue Heritage Guitars, if'n he's gonna sue somebody?

Smithsonian magazine did an article on Gibson a few years back, quoting Henry J., who said (and I think this is dead on) "we've learned that the more we raise our prices, the more guitars we sell." I stopped stocking their instruments shortly thereafter- that's not a philosophy I can "sell" to my customers in Johnston County, NC.

Friend of mine here in Raleigh had been a loyal Gibson dealer for over 20 years. Last year, they called up and asked him for a NINETY THOUSAND DOLLAR order, and IT HAD TO BE PLACED THAT DAY. If not, he wouldn't be a dealer anymore. He declined. So did scores of other small dealers in the country who were given the same ultimatum. Why would Gibson lop off all their Mom'n'Pop dealers? My understanding is that there are only about ten Gibson dealers in the nation now... catalogs and big box stores.

With the current rate of mergers and acquisitions, it's just a matter of time until there they only have one or two customers. When you only have one or two customers, the customers dictate policy- and price.

I got a fax recently from the Gibson rep, saying that if I wanted to be an Epiphone dealer I should call him. Yeah, right. I'd rather have exploratory rectal surgery. If I sell a Korean guitar here, it won't be a Pretender.[This message was edited by Rick McDuffie on 19 September 2005 at 08:10 PM.]

HowardR · Post by **HowardR** » 19 Sep 2005 7:28 pm

....I suppose Gibson banjos would be next.

You jest, but it's going on as we speak, er, or type. Gibson vs Elderly Instruments....yep

--------------------------------------------------------------------------------
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Published July 12, 2005
[ From the ]

Gibson Guitar sues Old Town music shop
Elderly's chief hopes to reach a settlement

By Stefanie Murray
Lansing State Journal

Gibson Guitar Corp. is suing Elderly Instruments because of a knockoff banjo.

Gibson claims Elderly committed trademark infringement when it advertised it was selling a banjo touted as a copy of one made by Gibson Guitar.

Gibson also is suing Elderly for violating an agreement to sell only Gibson-made banjos and mandolins, according to a 16-page suit filed in Nashville, Tenn., last week.

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In the suit, Gibson - a global instrument manufacturer most well-known for its acoustic and electric guitars - asks for damages and that Elderly stop carrying its products altogether.

"Basically, this is a misunderstanding," said Stan Werbin, president of Elderly, 1100 N. Washington Ave. in Lansing.

"What happened in this case was there was an error made in acquiring this banjo in the first place and putting it out for sale, and it got by us."

Werbin said he's hopeful Elderly and Gibson can work out a settlement before a hearing scheduled for Aug. 18 in Tennessee.

Officials with Gibson were unable to be reached late Monday.

Specifically, the suit says Gibson learned in June that Elderly was advertising for sale a banjo it called in its ads a "Gibson Copy."

The suit says Gibson sent Elderly a cease and desist letter, but that Elderly only changed the heading on the ad to "Famous Maker Copy" and later to "Classic Bluegrass Banjo Copy."

It claims the ad, posted on Elderly's Web site, was still active as of July 5.

However, Werbin said, Elderly had stopped selling the banjo by then.

Elderly - a nationally known music shop specializing in used instruments that's noted for it's unusual and wide variety - has carried Gibson products for more than 30 years. It's one of only nine distributors that carry the company's bluegrass instruments nationwide, Werbin said.

"We are one of their top dealers in the country," said Werbin, who employs 100.

"We have a long-standing relationship that we would certainly like to continue."

While Gibson makes up only a small percentage of Elderly's sales, "it's an important percentage because it's Gibson and we think Gibson makes a fine product, and we'd like to continue carrying them," Werbin said.

Rick McDuffie · Post by **Rick McDuffie** » 19 Sep 2005 7:33 pm

Elderly's been bad. Now there'll be the dickens to pay.

Will Mr. Werbin's pathetic boot-licking be enough? Tune in next week![This message was edited by Rick McDuffie on 19 September 2005 at 08:39 PM.]

Jim Cohen · Post by **Jim Cohen** » 19 Sep 2005 7:51 pm

Hmmmm... I wonder who holds the patent on non-cutaway guitars. A lotta folks are gonna have a lotta explainin' to do...

Stephen Gambrell · Post by **Stephen Gambrell** » 19 Sep 2005 8:38 pm

"Will Mr. Werbin's pathetic boot-licking be enough?"

A REAL nice comment, about a VERY nice gentleman running a music store---seems to be a rarity, doesn't it, Rick???

Rick McDuffie · Post by **Rick McDuffie** » 20 Sep 2005 3:13 am

Steve, here was a man trying to do something to grow his business by breaking his dependence on the "traditional" product lines. Gibson didn't like it, so they sued him. Sue Elderly Instruments? That probably IS the moral equivalent of suing your mama.

Read Mr. Werbil's remarks; his response is to say "we didn't mean it."

Obviously they DID mean it, and you can't blame them for trying to sell a good quality banjo on which they can make a reasonable profit (as opposed to the Gibson stuff that ALL the other catalog/internet guys have, and which they're probably being forced to sell for a few dollars over actual cost).

I know what I'm talking about here- for years, I competed effectively with Elderly and all the others on internet sales of Taylor Guitars, and watched my profit margin steadily evaporate. Sold a LOT of fine guitars, but I just didn't make any money. You can't fault Elderly or any other retailer for trying to develop some proprietary lines that will make them a profit.

It's just unfortunate that (1) Gibson is trying to intimidate and strong-arm a long-time friend and loyal supporter like Elderly and (2) that Elderly is folding up under pressure. Caving in to them will be like giving a drink to an alcoholic.

Elderly has the reputation and strength to tell Gibson to stuff it, and keep on truckin'. I wish they would.

I may have a Mom n Pop operation in a one-horse town, but at least nobody tells me what to do![This message was edited by Rick McDuffie on 20 September 2005 at 05:15 AM.]

Keith Cordell · Post by **Keith Cordell** » 20 Sep 2005 4:29 am

American made is only good when the American company is not putting the screws to the American public. Gibson strongarms its dealers, treats the buying public like millionaire idiots, and has lowered the quality of the product while pricing has gone totally through the roof- largely due to its ongoing partnership with GC. I long ago gave up on the idea that an American company can force loyalty down our throats simply due to location. The American automotive companies spent 25 years getting their butts kicked before they figured this out; now their pricing is comparable to or competitive with the foreign makers. For the first time since the '70's, I drive a Chevy. Of course, Honda and Toyota cars are currently being built here too, so the lines are being blurred.
Gibson has been so aggrieved by PRS as a result of their own blunders. Take a stock PRS at $2000 and it looks better than anything Gibson has ever built. Better quality woods, hardware and design. A PRS sounds pretty much like every other PRS, which has both positive and negative connotations, but at least they are consistent. You can play any 10 new Gibsons and you might find 2 that are reasonably decent, at a higher price than the PRS.
Gibson needs to wake up- treast your best customers like patsies and you might end up getting spanked.

Drew Howard · Post by **Drew Howard** » 20 Sep 2005 5:39 am

If I want a Gibson I'll buy a Gibson, etc., etc. Sounds like some lawyers got a little alpha over there at Norlin HQ.

I used to hang at the Kazoo factory in the '70's, a wonderful place with long-time employees.

Drew

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Drew Howard - website - Fessenden D-10 8/8, Fessenden SD-12 5/5 (Ext E9), Magnatone S-8, N400's, BOSS RV-3

Stephen Gambrell · Post by **Stephen Gambrell** » 20 Sep 2005 5:42 am

First of all, Keith, I was one of the old guys who actually BOUGHT a PRS, along about '88 or '89, when they were hand-built by Paul and his "Merry-Prankster-ish" crew up in Annapolis. That was one of the most beautiful, well put together, best playing guitars I will ever own. But tone? WHAT tone??? The guitar had ABSOLUTELY NO TONE!!
And since this guitar was built back when Paul was accessible, even to a clown like me, I had several phone conversations with him, and he tried to "build" tone into that guitar. It NEVER happened, the guitar sounded like an unplugged lap steel, and I went back to Fenders and Gibsons. The Les Paul which I now own, was bought NEW from a "mom and pop store," Rick. Jackson Music, Grand Island, NY. Great bunch of folks to deal with, have fun with, and, this weekend, go visit! Price? $1667.00, including case and shipping---This when Musicians' so-called Friend was selling the same guitar for 1999.00, shipping NOT included.
This is getting sorta off-topic, but one reason the mom and pop store is dying, is because of the way customers are treated. When a call is made to M.F., EVERYBODY is the same, as long as they're holding that plastic. Most local stores seem to have forgotten customer courtesy, and those that haven't, are THRIVING, at least in my area. I don't want to order gear through the mail, but I WILL NOT be treated rudely, looked down on, or talked down to, just because somebody is trying to sell a kid an over-profited guitar, and a series of lessons at the local music store. I think I've paid more dues than that!
As for the Gibson vs. PRS suit, I'm glad it's over, as I have stated. When is Gibson gonna go after the mandolin builders who are making F-5 shaped mandolins? And what difference does it make, if a buying public knows which is the better instrument, and buys accordingly. Wasted court time, and bad press, as witnessed by this thread.
And, BTW, have any of you played any new Gibsons? Does Fender have more integrity, with their "relic'd" series of Strats and Teles, already beat up, for 3 times the money? Rick, are you a Fender dealer? Got any SRV Strats? You know, the ones that came out with AFTER SRV's death?
You guys who see Gibson, Fender, Martin, and the other major manufacturers as lovely folks, trying to build nice instruments for wonderful people, are deluding yourselves! Leo's dead, Orville's dead, and Martin would rather sell a John Mayer (WHO???) model to the kids, and turn their backs on the 'grassers and country guys who put 'em on the map.
More about endorsements in the next installment.

Keith Cordell · Post by **Keith Cordell** » 23 Sep 2005 2:26 pm

Yeah, I remember us having that discussion about PRS. I don't particularly care for the PRS sound either, but then there isn't a guitar on the planet that has humbuckers that I'd be interested in; just a personal preference for single coils. One thing about them though, guys that like 'em really like 'em. And the are very consistently what they are. Whereas Les Pauls and SG's coming out of the factory these days have errors in the finish almost every time, much less interesting appearance, and are extremely inconsistent tonally. And I agree totally with you on the big box retailer vs. Mom and Pop issue- but that is the way things are going, and if the Mom and Pops try to compete directly with these guys they will get creamed. There are lots of small shops, though, that are doing quite well by NOT going directly against these guys. Midtown Music in Atlanta is a good example, carrying only quality used instruments, very high end new stuff (Fender custom shop teles and Strats) and boutique amps and effects that the big guys can't be bothered with.

Kenny Drake · Post by **Kenny Drake** » 26 Sep 2005 9:46 am

It's not all about litigation. John Paganoni is a close friend and co-worker of mine. He alone makes some of the finest mandolins around and Doyle Lawson is one of his more famous customers. There are only about 44 Paganoni mandolins and all of them are fashioned after the Gibson F5. (google "John Paganoni") Many think his work is far superior to that of Gibson, and years ago John got an exclusive written permission from Gibson to manufacture F5's, so long as he doesn't use the Gibson name or logo. John says he asked Gibson not to use his name on their instruments either. FWIW

Stephen Gambrell · Post by **Stephen Gambrell** » 26 Sep 2005 1:31 pm

Kenny, you're right about the Pagononi's! GREAT mandolins. The last couple of times I've seen and talked to Doyle, though, he was playing a Gibson "Doyle Lawson" mandolin. There was a guy in Georgia who was building "Lloyd Loar" F-5's, down to the Gibson logo, and Loar-signed label! They were awesome mandolins, and the guy also built mandolins under his own name, but he got a threatening letter from Gibson, and the "Loars" stopped---before I got one

.

Kenny Drake · Post by **Kenny Drake** » 27 Sep 2005 11:19 am

Steve, et al; I spoke with John Paganoni today. He's had permission from Gibson to build F5's since 1970. He's built a total of 49 Paganoni Mandolins but hasn't built one in three years. Recently two of his mandolins changed hands on the market, selling for $15k and $17.5k. Doyle Lawson owns four, and the good news is that he may begin building again early next year. He's got a few roughed out backs, tops and necks waiting to become mandolins. Contact Doyle if you'd like to own one but be prepared to wait. Also, among his personal instruments is a mint 1923 LL, which is a "July 9" just like Monroe's. A rare and valuable bird indeed.