Solution for Larry's Double Creme Trademark issue

[belwar]

Everyone here just needs to set a date to start "infringing". I doubt they could afford to got after everyone at once.

[WolfeMacleod]

At this very moment I am writing an email to one J. Thomas McCarthy , author of a series of books called Trademarks and Unfair Competition. I learned about McCarthy while reading the case that Jason cited above.
http://west.thomson.com/productdetai...uctdetail.aspx

J. Thomas McCarthy | Morrison Foerster

[WolfeMacleod]

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.

.

In the refusal documents for the "mirrored" trademark Dimarzio attempted in 2005, the USPTO gave this statement

The determination that a proposed mark is functional constitutes an absolute bar to registration either on the Principal Register or the Supplemental Register, regardless of evidence showing that the proposed mark has acquired distinctiveness. Trademark Act §§2(e)(5) and 23(c), 15 U.S.C. §§1052(e)(5) and 1091(c); See TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001); Valu Engineering, Inc. v. Rexnord Corp., 61 USPQ2d 1422 (Fed. Cir. 2002); In re Controls Corp. of America, 46 USPQ2d 1308, 1311 (TTAB 1998).

and

Registration is refused because the proposed mark comprises a configuration of the goods that is not inherently distinctive and would not be perceived as a mark. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127. The United States Supreme Court has held that a configuration of a product can never be inherently distinctive, and is registrable on the Principal Register only with a showing of acquired distinctiveness. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000). See also Textron, Inc. v. U.S. International Trade Commission, 753 F.2d 1019, 224 USPQ 625 (Fed. Cir. 1985); In re Craigmyle, 224 USPQ 791 (TTAB 1984); TMEP §1202.02(b)(i).

and

Configuration / functionality / distinctiveness refusal
Registration is refused because the proposed three-dimensional configuration mark appears to be functional for the identified goods. Trademark Act Section 2(e)(5), 15 U.S.C. §1052(e)(5). That is, the proposed mark comprises the configuration of a design feature of the identified goods that serves a utilitarian purpose. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001); Valu Engineering, Inc. v. Rexnord Corp., 61 USPQ2d 1422 (Fed. Cir. 2002); In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985); In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984); TMEP §§1202.02(a) et seq.



The proposed mark is the mirrored surface of electronic sound pickups for guitars and basses, and the goods are electronic sound pickup for guitars and basses. The particular features of this proposed mark, namely, the mirrored surface, are functional for the goods because goods of this nature often have a stainless steel or mirrored surface.



A feature is functional as a matter of law if it is “essential to the use or purpose of the [product] or if it affects the cost or quality of the [product].” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.10, 214 USPQ 1, 4 n.10 (1982), quoted in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001

[David Schwab]

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

Just for fun you should make a double cream horseshoe pickup! You seem to have gotten away with one of them so far. (I'm being silly)

[jason lollar]

If it was true all you have to do is assert whatever you are selling is made by you and not the trademark holders company why do so many people oppose trademarks? Like the fender body shape- huge deal with dozens of companies participating and it took years to resolve. so you could take a bottle shaped like a coke bottle and paint the coke name on it- both are trademarked and fill it with the coke formula, advertise it on TV but at the same time say- this isnt coke its not made by coke- we have no affiliation with coke and that would be ok? I think its more complicated than that That definately does enter the picture- its a way to help stave off frivolous attempts to hassle comptetitors by the trademark holder. So what happens- coke lets me get away with that and people are drinking it at the superbowl- television cameras are focusing on these bottles that look just like coke millions of people see it but people are catching on its not always really made by coke so eventually the trade dress and bottle design no longer mean "Coke" to people it becomes generic and coke looses its trademark- true, false?
i dont really know for sure but I do know if you play around it will wind up costing you $ wether you are right or wrong.
There are so many bizzarre ends to this stuff I wish I could talk more about it but cant.

[RedHouse]

...coke lets me get away with that and people are drinking it at the superbowl- television cameras are focusing on these bottles that look just like coke millions of people see it but people are catching on its not always really made by coke so eventually the trade dress and bottle design no longer mean "Coke" to people it becomes generic and coke looses its trademark- true, false?
...

Just being silly I hope?

You of all people around here know well the humbucker bobbin (shape) was not a LarryD/DiMarzio design (S Lover).

The shaped coke bottle's origin is of Coke and your coke bottle example is a very good example of Trade Dress in the proper context ...but... the humbucking pickup bobbin (and it's color) is not. It can not only be proved to pre-exist his registration date, but was in use by Gibson long before LarryD made his move on it through his end-run registering it as his trademark. Even during the time he was registering it others were making cream bobbin pickups (Mighty-Mite, Ibanez, Carvin) so it's not a design element unique to DiMarzio unlike the coke bottle is unique to Coke.

{Edit}...

BTW just to be clear Jason, I'm not "encouraging" anyone to risk financial ruin testing opinions/theories put forth in this thread, my singular point was to highlite a better approach that could be more successful at marketing parallel off-white bobbin humbucking pickups than to openly challenge LarryD's "double cream" trademark's validity. I'm not arguing with you, just posting another opinion, peace-out.

[Ronsonic]

some companies are crazier than others thats for sure!

There is a company that sells monster masks online. At the bottom of their splash page is a note that they are not affiliated with the cable company that owns the "Monster" name.

Yeah, that's how crazy it gets. I'm inclined to think that it isn't the company so much as that their outside counsel bills by the threatening letter. Or their in-house counsel is a bit desperate to justify his position.

[DoctorX]

Time to dig out the invoices again......(heh heh)

DrX

[big_teee]

Been seeing a lot of guitars on FleeBay with double Creams.
Is this in Violation?
If so how are they able to keep selling this stuff?
RAVEN WEST ELECTRIC GUITAR STUNNING BLEMISH | eBay
B_T

[David Schwab]

Been seeing a lot of guitars on FleeBay with double Creams.
Is this in Violation?
If so how are they able to keep selling this stuff?
RAVEN WEST ELECTRIC GUITAR STUNNING BLEMISH | eBay
B_T

THose are G&B pickups. Either they have a license or they get away with it because they are in Korea.

They also make EMG Select pickups.

[LtKojak]

they get away with it because they are in Korea.

The Di Marzio Trademark is only valid in US territory.

HTH,

[big_teee]

THose are G&B pickups. Either they have a license or they get away with it because they are in Korea.

They also make EMG Select pickups.

I looked on the G&B site, and It doesn't say where he is, Just to email to get a hold of them.
If they sell here in the U.S. Are they not in violation.
You Hardly see a Dimarzio anymore with the Creams, seems like such a waste of a good color.
Oh the Injustices of the World!
T

[David Schwab]

I looked on the G&B site, and It doesn't say where he is, Just to email to get a hold of them.

Sure it does, right at the bottom:



I've bought pickup covers from them. They are in Incheon, Korea, and also have a plant in China.

If they sell here in the U.S. Are they not in violation.

That's a good question. They were at the last NAMM show.

You Hardly see a Dimarzio anymore with the Creams, seems like such a waste of a good color.
Oh the Injustices of the World!
T

Frequently Asked Questions | DiMarzio

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. The standard color for all Strat replacement pickups is white. The standard finish on pickups with metal covers is polished nickel.

So cream is no longer their trade dress.