Solution for Larry's Double Creme Trademark issue

[LtKojak]

There's been some talk lately in two of the forums I frequent about the double creme trademark issue, which is obviously pissing people off, not to mention poor Seymour.

I haven't heard of any boutique p'up maker being called of by Larry's lawyers for selling double creme p'ups without his consent. But, that doesn't mean he hasn't, so if some of you have something to say, please post it here, if with a copy of the document of complain, the better!

I've just realized that a solution at industrial level to Larry's Double Creme Trademark issue could be the following:



That would be a good aesthetic way to keep the all-creme scheme without having Larry breathing down your neck... and it would look great with golden screws as well as chromed. And because it's plastic, it won't take any tone from you as a metal cover would do, plus it can be made overseas for next to nothing, and it could be offered with matching p'up rings and even pickguards as a set.

Any takers of the idea? It's free...

[big_teee]

There's been some talk lately in two of the forums I frequent about the double creme trademark issue, which is obviously pissing people off, not to mention poor Seymour.

I haven't heard of any boutique p'up maker being called of by Larry's lawyers for selling double creme p'ups without his consent. But, that doesn't mean he hasn't, so if some of you have something to say, please post it here, if with a copy of the document of complain, the better!

I've just realized that a solution at industrial level to Larry's Double Creme Trademark issue could be the following:



That would be a good aesthetic way to keep the all-creme scheme without having Larry breathing down your neck... and it would look great with golden screws as well as chromed. And because it's plastic, it won't take any tone from you as a metal cover would do, plus it can be made overseas for next to nothing, and it could be offered with matching p'up rings and even pickguards as a set.

Any takers of the idea? It's free...

Sounds good to me.
I always thought it was pretty Cheezie in the first place to put a CopyCat, I mean Copyright on someone elses patent, and invention.
Later,
Terry

[belwar]

I phoned dimarzio and ask if I could licence the use of double cream for use on my guitars. I offered $5-$10 a set licence fee. They said no (Steve I think?). Couldnt believe it. I doubt they make much more profit than that per pup.

If you change the look of the bobbin slightly you would have no problem. i.e. if your bobbins were rectangular ended instead of round you could do it. Carvin gets by it by using 12 poles per bobbin. The TM is for a standard looking HB bobbin, so all you have to do is make it look a little different.

[EFK]

To split hairs: is the trademark based upon double CREAM or double WHITE (like the old Super Dist)? Really two different colors. Perhaps he isn;t going after dbl. cream makers b/c he knows it wouln't hold up (albeit costing a boatload of legal fees in the process).

[belwar]

Double cream. Companies can use certain colors to associate with thier products. For example, 3M owns a TM on purple sand paper. only 3M can use the color purple for that. It's intent is that when people see sandpaper that is purple, they will always think 3M.

I believe David S had the idea about requesting what specific PMS color dimarzio recognizes as cream - and I used to think that would work.. However I now think that the legal interpretation is probably more vague.. i.e. if an average person considers this color "cream" then its "cream".

[LtKojak]

This is the Trademark:

Goods and Services IC 015. US 036. G & S: Electronic Sound Pickup for Guitars. FIRST USE: 19740200. FIRST USE IN COMMERCE: 19740200
Mark Drawing Code (2) DESIGN ONLY
Design Search Code 22.01.25 - Batons, orchestra conductor's; Bows, violin; Conductor's wands, batons; Drumsticks (musical instrument); Harmonicas; Instrument cases (musical); Music stands; Picks, guitar; Wands, conductors' and magicians'
26.11.27 - Oblongs not used as carriers for words, letters or designs
Serial Number 73150505
Filing Date December 1, 1977
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition June 23, 1981
Registration Number 1169205
Registration Date September 15, 1981
Owner (REGISTRANT) DiMarzio Musical Instrument Pickups, Inc. CORPORATION NEW YORK 643 Bay St. Staten Island NEW YORK 10304

(LAST LISTED OWNER) DIMARZIO, INC. CORPORATION BY ASSIGNMENT NEW YORK 1338 RICHMOND TERRACE PO BOX 100387 STATEN ISLAND NEW YORK 10310
Assignment Recorded ASSIGNMENT RECORDED
Description of Mark The mark comprises the double design representation of an electronic sound pickup for guitars, which is disclaimed apart from the mark as shown. AND IS LINED FOR THE COLOR YELLOW WHICH RESEMBLES THE DISTINCTIVE SHADE OF CREAM.
Type of Mark TRADEMARK
Register PRINCIPAL-2(F)
Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20010928.
Renewal 1ST RENEWAL 20010928
Live/Dead Indicator LIVE

In the original document (which I foolisly deleted. ) it's represented a design of the Super Distortion p'up, with hex screws.

HTH,

[David Schwab]

A few ways to get around is is not using 6 poles per coil. Both Carvin and Lawrence are able to make double cream because one has 22 poles and the other uses blades.

Like Belwar said, just change the look a little. Or use off white.

I actually think someone could challenge that trademark, because right on DiMarzio's website, in the FAQ section, it states:

What is the "standard" color for DiMarzio® pickups?
Unless otherwise noted, the standard color for all full-sized Humbuckers, Soap Bars, Tele, Bass and Acoustic pickups is black.

So it's no longer their trade-dress, if you ask me.

[WolfeMacleod]

I've studied this trademark for the better part of the last 13 years. There IS a way to defeat it, but it would require the joining of all forces.

Belwar... listen up.
Yes, companies CAN trademark a color. However, a portion of an object that serves any sort of FUNCTION cannot be "trademarked" - Aesthetics is part of function.
Look at one of Dimarzio;s other recent (2005ish) trademarks for "chrome" colored that was refused on the basis of AESTHETIC functionality based on the use of chrome hardware on guitars. Yes, the USPTO refused to register the mark. They did good, this time.

Also, when "color depletion" becomes an issue, it raises other issues in registering trademarks. Because pickups generally come in few colors, depletion is an issue.

A portion of an ojbect also cannot be registered where it has an affect on cost of manufacture. I have very odl documents that shows that the cream bobbins were considerably less for Dimarzio to purchase from the manufacturer than the black bobbins. Thus.. affecting cost of manufacture.

I invite everyone here to read the TMEP Chapert 1200. All of it. Every stinking page, as I have for the last 13 years, over and over and over.

The trademark CAN be defeated.
David, I have also pointed out here in the past about the Standard color being Black.

[madzub]

doesn't duncan get around this by selling double cream pickups WITH A COVER ON, which you can then remove?

[RedHouse]

I get around it by calling mine "Vintage Bone" when anyone asks.

If you have to mention "double cream" (which is Larry's trademark) in your verbiage all the USP&T needs to see is that you have a trademark non-affiliation notice included to alert the buyer that you, are not them.

Trademark law's function is to protect the holder from others doing business in a way that would imply they are providing your product or art. It's not about preventing people from doing similar things, it's to prevent someone who is not you, from declaring they have your product for sale.

Double cream. Companies can use certain colors to associate with thier products. For example, 3M owns a TM on purple sand paper. only 3M can use the color purple for that. It's intent is that when people see sandpaper that is purple, they will always think 3M.

I believe David S had the idea about requesting what specific PMS color dimarzio recognizes as cream - and I used to think that would work.. However I now think that the legal interpretation is probably more vague.. i.e. if an average person considers this color "cream" then its "cream".

That's not entirely true.

If you sell a "replacement" for an OEM product, of similar color, and have your non-affiliation disclaimer attached to the product (or advertisement) there is no trademark infringement.

For example in the automotive industry, you can go down to the local NAPA and buy an Echlin turn signal switch for your Honda Accord, it looks exactly like the OEM switch ...but it isn't... and it's not advertised as OEM or from Honda, so there is nothing Honda can do about it. It's an aftermarket replacement part.

That whole "trade dress" thing is a stretch, sabre-rattling.

[David Schwab]

There are some real nice "antique" white colored bobbins that I think look a lot nicer than the typical cream. But I guess some people are trying to match other plastic parts. I remember when DiMarzio was selling pickguards and binding for LPs in his shade, but now it seems they come with that color anyway.

But you sure can tell what pickups someone was using in videos from the late 70s when you see those double cream bobbins. That was his trademark, but it isn't anymore. I don't think most people would see double cream and think it's a Dimarzio pickup. When I had a SDHB in my LP I painted it white. I hate that cream color.

[RedHouse]

... I hate that cream color.

Me too, DiMarzio "cream" looks like nicotine stained white, or old yellowed lacquer topcoat over white binding, it's not "cream" IMO.

If you have a copy of "Beauity Of The Burst" you'll notice many (if not most) of the un-covered PAF's are white(er) and not the "cream" like DiMarzio uses in his shade of trademark color.

[LtKojak]

This a quote from the MLP forum, the poster the maker of Skatterbrane p'ups, telling the different times he was contacted by DMZ lawyers:

It was for offering double CREAMS for sale in the US on my site. I cannot offer them for sale. What someone happens to get under covers is no one's concern. He also holds the trademark for "PAF", which I got another letter warning me about. I once had an option for "albino zebras" on my site, and that was what DiMarzio had a problem with.

Your Honor, I rest my case!

[jason lollar]

"That's not entirely true.

If you sell a "replacement" for an OEM product, of similar color, and have your non-affiliation disclaimer attached to the product (or advertisement) there is no trademark infringement. "
Thats not accurate- yes the law is intended so consumers are not confused who they are buying the item from but disclaiming you are affiliated does not mean you are not infringing on a trademark- thats why the fender body shape was such a huge deal, fender could sue you even though people knew they were not buying a guitar from fender. Talk to a trademark lawer- they have to vigorously defend thier mark or Laches, estoppel defenses apply.

"For example in the automotive industry, you can go down to the local NAPA and buy an Echlin turn signal switch for your Honda Accord, it looks exactly like the OEM switch ...but it isn't... and it's not advertised as OEM or from Honda, so there is nothing Honda can do about it. It's an aftermarket replacement part."
Not accurate again- they can make the part either because its functional and cant be trademarked or it wasnt bothered to be trademarked to begin with.
I spend an inordinate amount of time and money on this stuff and have had lawyers talk my ear off.
Dimarzio does patrol thier trademarks and if they see you advertising double cream in the us they will ask you to stop.
Really though the amount of people asking for double creams is so small its not worth worrying about IMO. I probably make 200 humbuckers for every one request for a double cream.
Trying to fight a trademark that has been standing that long- it could cost over 100,000 dollars, is it worth it?
The trademark office certainly has screwed up many many times, they often have no expertise in the area they are trademarking and make major mistakes- once its made there is really no official forum to appeal after a certain time.
Find a lawyer that will dontate thier time unless your made o money or can forsee selling a pile of double creams to recoup the cost
just having one letter written or replied to costs an arm and a leg!

[jason lollar]

ps

heres something interesting about functionality- the court found functionality applies to an incontestable trademark 177 F.3d 1204

As its been explained to me by lawyers you basically have to get sued to have your day in court and you have to prove your case against the trademark holder