DiMarzio's Double-Cream Trademark?

[Tonestack]

Guys, please bear with me. I am a long-time amp builder (I go back to the old alt.guitar.amps days); however, I have only recently gotten serious about winding pickups.

With the above said, I cannot believe that Gibson has not been able to mount a serious legal challenge to DiMarzio's double-cream trademark. DiMarzio trademarked prior art that was created by Gibson and made famous by Eric Clapton. After all, anyone who has been in this game for one than microsecond knows about the iconic photographs of Eric Clapton and his 1960 Les Paul with the double-cream neck humbucker that were taken during his stint with the Blues Breakers.

Here is the Dimarzio double-cream trademark registration on the United States Patent and Trademark Office's website:




If one examines the trademark registration, one discovers the following claims:

FIRST USE: 19740200.
FIRST USE IN COMMERCE: 19740200

We all know that double-cream humbuckers existed before 1974; therefore, the claim that this trademark covers all double-cream humbuckers is weak at best. I am willing to bet that a legal challenge could be mounted that the trademark only covers Super Distortion-style double-cream pickups that employ two rows of grub screws. However, then again, I am not an intellectual property (IP) attorney.

[big_teee]

Guys, please bear with me. I am a long-time amp builder (I go back to the old alt.guitar.amps days); however, I have only recently gotten serious about winding pickups.

With the above said, I cannot believe that Gibson has not been able to mount a serious legal challenge to DiMarzio's double-cream trademark. DiMarzio trademarked prior art that was created by Gibson and made famous by Eric Clapton. After all, anyone who has been in this game for one than microsecond knows about the iconic photographs of Eric Clapton and his 1960 Les Paul with the double-cream neck humbucker that were taken during his stint with the Blues Breakers.

Here is the Dimarzio double-cream trademark registration on the United States Patent and Trademark Office's website:

[ATTACH=CONFIG]18052[/ATTACH]
[ATTACH=CONFIG]18053[/ATTACH]

If one examines the trademark registration, one discovers the following claims:

FIRST USE: 19740200.
FIRST USE IN COMMERCE: 19740200

We all know that double-cream humbuckers existed before 1974; therefore, the claim that this trademark covers all double-cream humbuckers is weak at best. I am willing to bet that a legal challenge could be mounted that the trademark only covers Super Distortion-style double-cream pickups that employ two rows of grub screws. However, then again, I am not an intellectual property (IP) attorney.

So do you have the money to Fight such a Battle?
Me Either!
All kinds of guitars are being imported to the US with double creme.
Here's a small example.
Douglas Shadow Black at RondoMusic.com
That may also be part of the lack of Popularity, of the Company in Question on this Forum.
T

[JGundry]

Actually when you think of it Clapton has the valid claim on double cream. He probably has the cash too. Let me find his phone number.......

The key phrase in that Trademark is "resembles a distinctive shade of cream". A lawyer would say define that in real terms like CMYK or RGB percentages, PMS..... Logo colors for corporations are trademarked giving specific, definable color terms, CMYK percentages....., all the time.

[David Schwab]

Gibson didn't trademark that, and in fact it never intended you to see the bobbins in the pickups. Also, they were considered "white" bobbins, not cream. So it wasn't any kind of trade dress. Gibson doesn't and never owned it, so they can't fight it. And if you think about it, most humbuckers on the market are copies of Gibson's design. If they had a foot to stand on, they would fight that too, just like Rickenbacker does with the toaster pickups. Rickenbacker was smart, while Gibson and Fender were not.

So it was not "created" by Gibson, and was an accident since their molder ran out of black plastic for bobbins. The people assembling the pickups would grab what ever color at random. Maybe they fancied two white bobbins, but it was never a Gibson design.

Most people object to DiMarzio's trademark because they want to make double cream bobbin pickups. But if the trademark belonged to Gibson, you would still be out of luck.

DiMarzio on the other hand made that their trademark. When the Super Distortion pickup came out in 1972 it was the only double cream pickup you saw in people's guitars. So when you watched a concert on TV (or in person) and you saw a double cream pickup, you knew it was a DiMarzio. Same thing when you saw cream P bass pickups in basses. This was the same as them putting a big logo on the pickups. They also sold cream trim kits for guitars, including binding for Les Pauls.

Gibson was not selling double cream pickups with exposed coils back then, and in fact never did. It was by chance that people found double off white bobbins in Gibson pickups when they removed the covers. Gibson wasn't even selling pickups with no covers until fairly recently. So in that regard they are copying everyone else, including DiMarzio. Sure, you could have pulled the covers off of your T-tops, and most people did, but look at those bobbins; they were not made to be seen. They are internal parts and lack the fit and finish of pickups made for exposed bobbins.

I'm just stating this as fact and am not taking a side either with way. Personally I dislike cream bobbins, and that cream color in general.

It's common practice for companies to trademark colors they use in their logos and trade dress. H&R Bloc trademarked that green square for instance.

An interesting fact however is that in the DiMarzio FAQ:

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 they are maintaining the trademark, even though it's not their standard color. For that reason alone, they should just let the trademark expire. But I doubt they ever will.

Pickups with different pole arrangement go untouched. This includes Carvin M-22s and Lawrence L-500s.

[Tonestack]

I understand why DiMarzio applied for the trademark. Larry DiMarzio could not patent the Super Distortion, so he used trademark law to ward off copy cats. However, there has to be more to this trademark than meets the eye. Seymour Duncan and Gibson both have deep enough pockets to take on DiMarzio.

[EFK]

But SD and Gibson are apparently making more than enough money without worrying about it. So why spend money on something that isn't really impacting your business? Most folks seem to get around it by selling double white or double cream pickups under a loose cover just stuck on top. The only people who REALLY seem to care about it are the small winders who are terrified of getting that 'cease and desist' letter and subsequent huge legal bill! So make what you want and stick a loose cover on top. I don't really see the issue.

[Tonestack]

I seriously doubt that DiMarzio cares about small winders selling the occasional double-cream pickup any more than major recording artists worry about weekend warrior-type bands making money off of playing covers without paying royalties. Like the average weekend warrior band, the average small winder is running a poorly-capitalized hobby business. Sure, DiMarzio can win a judgment against a small winder, but they have to be able collect that judgment (which is why anyone who is thinking about running a small business should look into forming an S-corp or an LLC). Taking a hobby business-level winder to court is hardly worth the cost of litigation. Now, any small hobby business winder who manages to obtain a pickup-related patent should think twice about offering double-cream pickups (or any pickup that infringes on IP that is owned by one of the big boys). A pickup-related patent turns an undercapitalized pickup winding hobby business into a valuable target.

[jason lollar]

if you advertise it then Dimarzio is obligated to send you a cease and desist order if they want to keep their trademark. Anyone here really believe not being able to advertise double cream is crippling their business?
You dont have to be first to get a trademark- all you have to do is show your company identity is linked to the trademark- its pretty weak anymore- how many people these days see a double cream and immediately think "Dimarzio"- I would guess not many but back in the 70's and 80's they did.
I dont think this is like fender coming around 60 years after the body shapes have become generic and there are a thousand companies making these shapes or the other company that conveniently forgot to tell the trademark board they once held a patent on a part that was a functional piece of the design that they now claim is only cosmetic in order to get the trademark.

[SonnyW]

I let my customers pick their bobbin colors but I insist that if they order both bobbins in cream that I will have to supply the humbucker with a plastic cover to respect Dimarzio's trademark and that I have replacement covers available if they "accidentally lose or forget to install" their original one. It does make me a little mad that some makers like to get those design trademarks and process patents on stuff that has been out there for years, like Ernie Ball MM getting a trademark on 4x2 tuner headstock design, and so on. But it has been going on for years. I think I remember that Leo Fender even got a patent on wax potting once a long time ago.

[David Schwab]

I seriously doubt that DiMarzio cares about small winders selling the occasional double-cream pickup any more than major recording artists worry about weekend warrior-type bands making money off of playing covers without paying royalties. Like the average weekend warrior band, the average small winder is running a poorly-capitalized hobby business. Sure, DiMarzio can win a judgment against a small winder, but they have to be able collect that judgment (which is why anyone who is thinking about running a small business should look into forming an S-corp or an LLC). Taking a hobby business-level winder to court is hardly worth the cost of litigation. Now, any small hobby business winder who manages to obtain a pickup-related patent should think twice about offering double-cream pickups (or any pickup that infringes on IP that is owned by one of the big boys). A pickup-related patent turns an undercapitalized pickup winding hobby business into a valuable target.

There have been reports here of small time winders getting cease and desist letters from DiMarzio. They probably figure that at that point the small time winder will acquiesce. If they took you to court, and you lost, which you would, you have to pay court costs. There would be no litigation. You would be found infringing on their copyright. DiMarzio already has attorneys retained, so it won't cost them much at all.

[big_teee]

There have been reports here of small time winders getting cease and desist letters from DiMarzio. They probably figure that at that point the small time winder will acquiesce. If they took you to court, and you lost, which you would, you have to pay court costs. There would be no litigation. You would be found infringing on their copyright. DiMarzio already has attorneys retained, so it won't cost them much at all.

Plus, when you get the letter to appear in Court?
I think It's in NYC, Not exactly a handy place for most of us to appear!
T

[jason lollar]

the mechanics go like this- could be you get a friendly phone call telling you they have a trademark on something you are using and you work it out right there- often you get a letter from a lawyer representing the company informing you that they have a registered trademark along with documentation of it with a notification of your infringement- specifics- and a demand to cease and desist, sometimes they will ask for proof you have stopped using the trademark. If you dont cease and desist they can take you to court but that doesnt happen untill after you get a cease and desist and willfully continue infringement- at least thats all I have ever heard of- however if you have a valid claim showing the trademark is fraudulent or has been incorrectly awarded you can have your lawyer write back a letter and they might back down or 6 months later they might send you another letter and so you send the same one back saying "we still believe the previous statements are valid as to why your trademark is invalid" BLA BLA BLA etc.
if you manage to get sued and you dont show up in court in- DC or where ever it is youll get a judgement against you.
Several of us have recieved cease and desists here- it does happen. i have had one aggressive company send me false documentation showing registered trademarks on official looking paperwork that they didnt actually have and i have had two companies overstate about trademarks- claiming a trademark but not actually having it registered so watch out

[Tonestack]

There have been reports here of small time winders getting cease and desist letters from DiMarzio. They probably figure that at that point the small time winder will acquiesce. If they took you to court, and you lost, which you would, you have to pay court costs. There would be no litigation. You would be found infringing on their copyright. DiMarzio already has attorneys retained, so it won't cost them much at all.

DiMarzio would undoubtedly win, but they would have to collect the judgement. As one who has been the plaintiff in a civil case, I can tell you from first-hand experience that collecting a judgement can be next to impossible if the defendant refuses to pay.

With that said, I do not recommend infringing upon a trademark or a patent. However, the US patent system is broken. Far too many junk patents are being awarded. For example, LSI Logic Corporation received a patent for a data structure in 2002 that most computer science students have used before the end of their sophomore year in college for at least the last thirty years. Their patent for the multiply linked list could bring down the entire Internet if enforced. Multiply linked lists are so commonly used in software that no self-respecting computer scientist would award that patent.

Patent US7028023 - Linked list - Google Patents

[Tonestack]

Cease and desist letters have become a major problem in the software community. The US PTO has awarded so many junk patents since the nineties that commercial software product development has become a minefield. The "Linked List" patent that I mentioned in another posting is just the tip of the iceberg. Large software companies now own huge patent portfolios that are chock full of junk patents. These patent portfolios are mostly being amassed to assure mutual destruction if another large software company dares to start a patent war. However, they are also being used to takeover innovative small companies that unknowingly infringe upon one or more patents.

We have truly entered the "first-to-file" versus "first-to-invent" stage of patentability; therefore, anyone with an invention that he/she believes is unique should file ASAP. The United States officially switches over from using a "first-to-invent" to a "first-to-file" patent system on 3/16/2013. IP-related issues are going to get much more complex after that date. Trademark law will be the least of our worries.

[WolfeMacleod]

I would be the person to talk to about the Cream trademark.
I've been researching it for 13 years, and have come to find out that Dimrzio is violating several trademark laws.

note that, in 2005 or so, Dimarzio attempted to file a trademark for yet another color, which was refused on grounds of aesthetic functionality.

You cannot trademark something that is functional, even if it is aesthetics.
You also cannot trademark something that affects the cost or ease of manufacture.

Which Dimarzio did... I know for a fact that cream bobbins cost less for them when the trademark was filed. This affected their cost of manufacture.


If people would get off their collective asses and band together, I do believe I have the necessary information to get the trademark canceled.


Do a Google search for TMEP Chapter 1200. read it, read it again, and then one more time until is sinks in. Especially the parts about Color Depletion.

Also, note that Dimarzio's own literature states (or used to..) that the Standard Color for Humbuckers is BLACK