Solution for Larry's Double Creme Trademark issue

[WolfeMacleod]

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

Jason.. this is simply one of the most awesome finds I've seen in years.

Mind you, now, that Dimarzio'z other color mark was denied on grounds of functionality. Therefore, the USPTO has ruled that color in this application is absolutely functional.

it CAN be done, and we (all) need our (joint) day in court.

Frank... ARE YOU LISTENING?

[kg]

wow, i had no idea the pickup world was this political/legal! crazy stuff.

[jason lollar]

some companies are crazier than others thats for sure! The trademark office has very little idea whats going on- they dont check that hard into the facts because they dont understand alot of technical points , you can outrite lie about wether something is or was functional or not and they wont often know-
I think at the time the dimarzio double cream probably was a recognisable trademark. BTW the wording in the trademark is "the color that resembles cream" which could mean any off white color from - its not a specific shade

[David Schwab]

some companies are crazier than others thats for sure!

[cough]Rickenbacker[/cough]

But then they didn't lose their designs as Fender did.

[WolfeMacleod]

Today I spoke to two of the lawyers who handled the case that Jason cited above...
Yep... it could be done. Unfortunately, they're both retired now.

[RedHouse]

Talk to a trademark lawer!

I have, your council has apparently advised you differently.

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

Pretty much proves my point (sec III-A).

Anyway, the trademark issue is LD's double-creams, that's his thing, call yours double off-whites, or double egg-shell or double bleached-wheat, or whatever, and you're there.

Thing is, it's like you said, there's little demand for it really so why bother? Larry's day in the sun has passed, the world has moved on from the whole PAF/Cream-Bobbin thing that was such a big deal in the late 60's and 70's.

One last interesting point about that Littlefuse case which they avoided touching on, the twin blade fuse also has a color which could fall under the trade dress argument except, the "color" of the fuse has become an industry standard demarcation for it's current capability rating (ie; Blue=15A) so that would be a short arguement.

We could argue that creame has become the industry standard of PAF pickups which Larry already established.

[the great waldo]

Does anyone know how long the double cream patent can run, I always thought that 25 years was the limit on a patent. Also is the patent valid in Europe or is it just for America.

Cheers

Andrew

[WolfeMacleod]

Thing is, it's like you said, there's little demand for it really so why bother? Larry's day in the sun has passed, the world has moved on from the whole PAF/Cream-Bobbin thing that was such a big deal in the late 60's and 70's.

More than half my customers have been askign for double cream since 2006.

[RedHouse]

This is relative to the Larry issue:

It's discussing Functionality (de facto and de jure)

"Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1531 (Fed. Cir. 1994), cert pending, No. 94-1075.

"Competitiveness" included visual desirability in addition to the use, quality and cost of the product in Brunswick. There the trade dress sought to be registered was the color black for outboard motors. The color had no effect on either the cost of making the motors, on their quality or ability to function. But black was held to be de jure functional and unprotectable because black outboard motors are compatible with many boats' color schemes, and black makes the motors look smaller. Competitors' inability to use black would therefore decrease their ability to effectively compete, and trademark protection was held to be unavailable. 35 F.3d at 1533."

and

Supreme Court has now expressly held that "the doctrine of `functionality' does not create an absolute bar to the use of color alone as a mark." Qualitex, slip op. at 6.

A similar arguement could be applied to cream pickups. Us (we) competitors and our inability to use cream bobbins would decreace our ability to effectively compete in the pickup trade.

More than half my customers have been askign for double cream since 2006.

I'm sure they have Wolfe, my comment was big-picture, in light of the hundreds of thousand (millions?) of pickups sold by everyone not just us boutique winders. Most exposed bobbin humbuckers sold are black.

Does anyone know how long the double cream patent can run, I always thought that 25 years was the limit on a patent. Also is the patent valid in Europe or is it just for America.

Cheers

Andrew

It's not a patent, it's an asserted trademark issue.

[the great waldo]

Hi Brad

If itīs a trademark issue I would think that the shade of cream would have to be specified as anything between off white to peach could be contested. Just a thought i`m not a legal eagle.

Cheers
Andrew

[David Schwab]

Does anyone know how long the double cream patent can run, I always thought that 25 years was the limit on a patent. Also is the patent valid in Europe or is it just for America.

Cheers

Andrew

It's not a patent, it's a trade mark. They can keep renewing it. If you read the case cited above, once you get past five years of consistent use, you can file for incontestability.

After five years of continuous use, the Lanham Act allows the owner of a registered trademark to obtain incontestable status by filing an affidavit affirming that certain statutory requirements have been met. 15 U.S.C. § 1065.
Once a registration has achieved incontestable status, it is treated as conclusive evidence of the registrant's right to use the trademark, subject to certain enumerated defenses. 15 U.S.C. § 1115(b).
Thus, incontestability narrows, but does not eliminate, the grounds upon which the trademark's validity may be called into question by a defendant. These incontestability provisions allow a "registrant to quiet title in the ownership of his mark. The opportunity to obtain incontestable status by satisfying the requirements of § [1065] thus encourages producers to cultivate the goodwill associated with a particular mark." Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 198, 105 S.Ct. 658, 663, 83 L.Ed.2d 582 (1985). Until the enactment of the Trademark Law Trety Implementation Act, functionality was not one of the enumerated defenses to incontestability. Of course, functionality was not mentioned anywhere in the Lanham Act at that time.

[RedHouse]

Hi Brad

If itīs a trademark issue I would think that the shade of cream would have to be specified as anything between off white to peach could be contested. Just a thought i`m not a legal eagle.

Cheers
Andrew

It doesn't have be "specified", just asserted.

The missing point here is that the rest of the pickup making world shouldn't be approaching this issue as to whether or not LarryD is entitled to his trademark, he is, to some degree. Or if he/they think your "parallel off-white" is the same as his "double cream" which it isn't.

The arguement is (or should be), despite what Jason posted, the fact that your product is not his product, and his assertion is actually using trademark law unfairly to inhibit competition in the market. The whole trade dress thing is a supporting point, a part of, a node in a checklist to proving a trademark infringement has occurred, it's not the entire criteria as the opinion popularly held here would tend to make one believe.

Regardless, the whole thing is not absolute, law is argued on a per case basis, just look at all the conflicting court opinions of the circuit courts on trademark "interpretation". If you base your arguement on disproving LarryD's right to his established trademark you'e done before you start, it's easy on them that way, the weight of the case is on you.

Rather, if your approach is based on the fact that your product, is not their product, and you compete fairly in the open market, and the color of the product is not related to logo, or company trade dress (the DiMarzio trade logo is not done in cream or any shade of yellow resembling cream, it's silver), but that bobbin color is relative to the colors of the instrument, historic perception (general public relates it historically to Gibson, not DiMarzio) and and the market desire is that of actually having a pickup bobbin that matches the pickup rings and scratchplate, and more importantly that Larry and company are unfairly using trademark law inhibit competition in the market, and that the color is not unique to them and never was when they filed for their trademark again purposfully using trademark law to inhibit fair competition in the market, then you have a case that can be heared and (likely) decided in favor.

You will never "overturn" LarryD's trademark, don't go there unless you have big-$ to burn, but you can prove that you (or anyone alse) are not infriging on the crux of trademark protection law with regards to the color of pickup bobbins and competing in the open market, that is where others have won in the past. Nothing gets "overturned", just the plaintif gets dismissed, and that is all that really needs to happen.

[RedHouse]

It's not a patent, it's a trade mark. They can keep renewing it. If you read the case cited above, once you get past five years of consistent use, you can file for incontestability.

And if you read it more carefully, you see that such filing's can be ruled against.

Here is a good read for the non-attourney type: TRADE DRESS BASICS

One can see that there is actually a series of steps that have to be gone through, established, interpreted/argued, then a decision is made on the individual case. It's not a cut-n-dried thing and it's why you don't want to argue Larrys trademark, you want to argure misuse of trademark law to inhibit competition, like the boat motor case mentioned in the link above (which was dismissed).

Trademarking Black outboard boat motors is directly and exactly relative to trademarking Cream pickup bobbins.

[jason lollar]

heres whats happened to me- the lawyer says oh yeah you could win this because bla bla bla and they lead you to believe its solid but then when you say OK lets do it they start backpeddeling really fast! Oh it could cost XYZ and its never a sure thing yada yada. So thats why I am cautious about this sort of thing- too much talk and hot air has gone under the bridge
It comes down to $ and what its worth to you

[RedHouse]

heres whats happened to me- the lawyer says oh yeah you could win this because bla bla bla and they lead you to believe its solid but then when you say OK lets do it they start backpeddeling really fast! Oh it could cost XYZ and its never a sure thing yada yada. So thats why I am cautious about this sort of thing- too much talk and hot air has gone under the bridge
It comes down to $ and what its worth to you

Rodger that.
(Roger?)