A 2012 color trademark court desicion. Pay attention.

[WolfeMacleod]

Note: One doesn’t have to show “overnight success” or massive initial sales volume to claim First Use in Commerce. Mailing some pickups from NY to Hoboken would suffice. And remember, Wayne Charvel has established that EVH had a DiMarzio pickup before Wayne moved his shop to San Dimas.

Actually, you're wrong. Sporadic, minor use, test market sales, or other "token" use is not enough to be considered "Use in commerce." Neither would "selling to friends." And remember "use in commerce" in that which "may be lawfully regulated by US congress"
By the way, I've already gone up against someone in a TM case who tried to claim "use in commerce" before he was a legitmate business.

This argument is based on the assertion that 1979 ad copy touting a USA-made pickup as a reissue of a phantom 1965 German-made pickup proves that the newer pickup is an exact reproduction of the older (phantom) pickup. I’ll say it again: phantom. Third time’s a charm.

Reissue ≠ Reproduction

Did DiMarzio apprentice under Bill Lawrence? Yes.
Did Bill Lawrence show DiMarzio exposed-coil humbuckers? Not likely.
Why not? Because it is unlikely BL made exposed-coil humbuckers any earlier than the founding LSR in 1975.

Bill and Becky Lawrence, myself, and Kent Armstrong are good friends. I spoke with Bill regularly up till he died, since 2001, sometimes for hours at a time. Kent knew about the pickups that Bill had made prior to Dimarzio, and he's positive that Larry did as well.

Hmm. So, you have communicated with Kent- yes?
Did he mention exposed coils- or is that something you projected or assumed?
Were there witnesses?
Did you record the conversation (with Kent’s permission, of course)?
Would Kent be willing to file an affidavit?

Kent has already sent me a statement that he's willing to swear to. In that statement, he also describes repairing a PAF for Jimmy Page in.. 1970 I think. The PAF was cream. Not white, not unpigmented. Kent replaced it with coil on black bobbins... and he still has those cream bobbins.

By the way, early Ibanez pickups were made by MAXON.

As for the statement or "original" guitars being sold, it doesn't matter if a guitar was a knock-off or not. "original from the factory" as in "the way the company made it"

Why doe that slug coil look odd? Because the none-adjustable polepieces were square on those particular pickups.

[rjb]

You'll not that everything Dimarzio offered was dated 1978. They offered nothing except the affidavits of people who may have been financially motivated (IE: Dealers and/or friends of Dimarzio products) to support exclusive use, or any use at all, before 1977. They did not reveal the fact that Ibanes, Mighty Might, and others had wide use of the color. Three affidavits does not meet the so-called difficult burden of proof to prove distinctiveness.

The fact that, forty years ago, The USPTO did determine that DiMarzio's submissions were “adequate proofs of distinctiveness and secondary meaning” is, for all intents and purposes, the end of the story. If you could take a time machine back to June 23, 1981, you might be able to file an opposition to the mark- in which case, the hearing would probably still be raging today. Me, I would rather take the opportunity to go back and kill baby Hitler....

But, just for fun, let's argue.

I don't see what you're getting at with "everything was dated 1978."
The stated date of first use in commerce was Feb 1974.
Going by the traditional 5-year rule, you wouldn't even be eligible to apply until Feb 1979.
In the meantime, it is assumed there may be some "copy cats"; that is why the wording is "proof of substantially exclusive and continuous use."

And Mighty Mite & Seymour Duncan were, indeed, copy cats.
Wayne Charvel's autobiography clearly states that he was selling DiMarzio pickups well before Mighty Mite or Seymour Duncan began production. Since Randy Zacuta and Seymour Duncan both frequented Wayne's shop, it is not hard to infer where they got the idea for overwound pickups with exposed cream-colored bobbins.
History - Wayne Guitars

(Note: Just as it is hard to imagine that the Strat body shape was ever "radical", it seems unfathomable that the color cream was once "striking". But, in the mid 1970's, it was.)

In the mid-70's, Ibanez was the Knockoff King of the World. If they made it, it was a copy.

DiMarzio did not submit "only 3 affidavits" (from, incidentally, three of the largest music retailers on the east coast). He stated a three hundred thousand dollar yearly advertising budget, and approximately three million dollars in sales in under four years for the "pickup of the present configuration". He listed thirty countries in which DMZ were sold, and contact information for DMZ's Japanese distribution rep. Al DiMeola album cover, full page ads with endorsing superstars. And so on.

Are you seriously doubting that DMZ had "any use at all" before 1977? Pickup geek historians pretty much agree that DiMarzio was the first mass distributor of replacement pickups.

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EDIT:
The above is rebuttal to Wolfe's criticism of Post #85 ("You Keep Using That Word").
Please note that "You Keep Using That Word" simply explains trademark rules and terms, and how DiMarzio obtained the mark.
My goal in that post was to report the facts of the case- not to judge the actions of the applicant or examinator.

[WolfeMacleod]

Hunh? Just what does “date Sept 1, 1977” reference?

The affidavit is dated July 5, 1979 and stamped received July 18,1979.
The application was filed Dec 1, 1977.
The trademark was published in the Official Gazette June 23, 1981
The trademark was issued Sep 15, 1981.

I mis-read the date on the document. I believe I was referring to the July 5th document. For some reason, I took the date of filing at the top to be the date the document was filed.

[WolfeMacleod]

The fact that, forty years ago, The USPTO did determine that DiMarzio's submissions were “adequate proofs of distinctiveness and secondary meaning” is, for all intents and purposes, the end of the story. If you could take a time machine back to June 23, 1981, you might be able to file an opposition to the mark- in which case, the hearing would probably still be raging today. Me, I would rather take the opportunity to go back and kill Hitler as a baby....

But, just for fun, let's argue.

I don't see what you're getting at with "everything was dated 1978."
The stated date of first use in commerce was Feb 1974.
Going by the traditional 5-year rule, you wouldn't even be eligible to apply until Feb 1979.
In the meantime, it is assumed there may be some "copy cats"; that is why the wording is "proof of substantially exclusive and continuous use."

And Mighty Mite & Seymour Duncan were, indeed, copy cats.
Wayne Charvel's autobiography clearly states that he was selling DiMarzio pickups well before Mighty Mite or Seymour Duncan began production. Since Randy Zacuta and Seymour Duncan both frequented Wayne's shop, it is not hard to infer where they got the idea for overwound pickups with exposed cream-colored bobbins.
History - Wayne Guitars

(Note: Just as it is hard to imagine that the Strat body shape was ever "radical", it seems unfathomable that the color cream was once "striking". But, in the mid 1970's, it was.)

In the mid-70's, Ibanez was the Knockoff King of the World. If they made it, it was a copy.

DiMarzio did not submit "only 3 affidavits" (from, incidently, the largest music retailers on the east coast). He stated a three hundred thousand dollar yearly advertising budget, and approximately three million dollars in sales in under four years for the "pickup of the present configuration". He listed thirty countries in which DMZ were sold, and contact information for DMZ's Japanese distribution rep. Al DiMeola album cover, full page ads with endorsing superstars. And so on.

Are you seriously doubting that DMZ had "any use at all" before 1977? Pickup geek historians pretty much agree that DiMarzio was the first mass distributor of replacement pickups.

Sure, by the time that statement rolled around, Dimarzio might have been selling in 30 countries. And it's possible that by that time, 3 million bucks may have been sold (I'll bet we can extrapolate that figure based on the invoices I have here, the number of cream coils purchased, and an approximate dollar amount for each pickup). Still, they provided nothing in the way to back up the claim of the Mark being used prior to the filing date aside from those statements. No ads, no receipts, no nothing. Look at the dates on the catalogue ads. (ok, there is one thing that could be from Sept 1, 1977, maybe) But still, nothing to show that they used it as early at 1974.
When I applied for my trademark, I had to prove use at my claimed date. They did not do that.


They ignored the fact that when the trademark was filed, they were not "substantially exclusive" user of the cream color.

Why would they claim a P-bass and strat style pickups as being a representative of The Mark? (p23) Why all the catalogue pages for stuff that was clearly not The Mark?

[big_teee]

Sorry Guys but, I think it's too late!

[rjb]

Sorry Guys but, I think it's too late!

That's what I said in legalize, first sentence of post 92.

[Lollar Jason]

All this illustrates exactly how it is- I had an entire room cleared so I could sort factual paperwork into corresponding piles on the floor when I did my thing and not only did i have to come up with a thousand pages of info I had to go through thousands of pages of material that was sent to me by the opposition. when you go back and try to prove timelines it becomes really difficult to procure original copy in sequence and even when you do to prove what you obtain is factual and not spun by ad copy. its a cluster #$%^ Top it off with the majority is going to be arguable or regectable or ignored. Different judges will give different results- assuming you even get that far and the closer you get to a jury trial if applicable the less confident your lawyer is going to be about predicting the results because apparantly juries are known to be unpredictable. Good luck with it- hope its worth your time and $. Imagine if everyone spent the time they did on this developing new products and construction methods, tooling etc. you might come up with something that could really put you ahead.

[rjb]

Actually, you're wrong. Sporadic, minor use, test market sales, or other "token" use is not enough to be considered "Use in commerce." Neither would "selling to friends." And remember "use in commerce" in that which "may be lawfully regulated by US congress"

OK, you caught me. I was being facetious. My real point was that if he was only manufacturing pickups in New York and selling them in New Jersey, that would be enough to establish interstate commerce. If he had a legitimate mail-order business, that would be enough to establish use in commerce. And before you mention it, please note that you do not need to be incorporated to be a legitimate business.

If you are trying to prove DMZ did not have first use in commerce in 1974, you are truly grasping at straws.
All three "statements from the trade" (including one from Washington DC suburb Wheaton MD) establish the date as 1974. Wayne Charvel says he potted EVH's DiMarzio pickup shortly after he opened his shop in 1974. Even the Brit "dweeb with a blog" says it is hard to find a DiMarzio pickup made "before 1974".
If DMZ did not have first use by 1974, that would indicate even faster meteoric growth by the time of publication of the 1978 catalog.

Bill and Becky Lawrence, myself, and Kent Armstrong are good friends. I spoke with Bill regularly up till he died, since 2001, sometimes for hours at a time. Kent knew about the pickups that Bill had made prior to Dimarzio, and he's positive that Larry did as well.

OK, got it.
Now show proof that BL was building and selling humbuckers with uncovered cream-colored bobbins before 1974.
Because that L-100 ad doesn't cut it.

Kent has already sent me a statement that he's willing to swear to. In that statement, he also describes repairing a PAF for Jimmy Page in.. 1970 I think. The PAF was cream. Not white, not unpigmented. Kent replaced it with coil on black bobbins... and he still has those cream bobbins.

I'm happy for you. So, wait, Kent stole Jimmy Page's PAF bobbins, eh?

By the way, early Ibanez pickups were made by MAXON.

Yes, I've read that. Some, if not most, undoubtedly were. But, as I've said, Japanese guitar companies were amorphous animals. During the same time period, Maxon also made pickups for Greco. By no later than 1978, some if not all Greco guitars were equipped with DiMarzio pickups.

As for the statement or "original" guitars being sold, it doesn't matter if a guitar was a knock-off or not. "original from the factory" as in "the way the company made it"

OK, if you say so.
So, you are saying LD committed intentional fraud, even if he was unaware that Ibanez was selling crappy copies of Freddie King's flying V and EC's faded burst LP?
And by exposing this heinous lie, you and the FTC are going to cancel a 40-year old trademark?

Why doe that slug coil look odd? Because the none-adjustable polepieces were square on those particular pickups.

One of those "staple" jobs? Maybe, hard to tell without greater resolution.
But I still like the "See! They even knocked off a DiMarzio prototype!" story better.

Later,
-rb

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BTW folks, we're only sparring.
IMHO, mounting a legal action with easily rebutted arguments is not a fruitful strategy.

---

EDIT
On closer examination, I concede that the pickup with "weird slug coil" is a Maxon "staple job" with clear bobbins.
However, I still like the story that Ibanez made and sold a knockoff of a DiMarzio prototype pickup.

[rjb]

Still, they provided nothing in the way to back up the claim of the Mark being used prior to the filing date aside from those statements. No ads, no receipts, no nothing.

So, you're looking for invoices, receipts, packing lists, etc. from 1974? Maybe a tax return?
What can I say- statute of limitations for keeping those records is long past.
Besides, those are not the types of documents called for in the TMEP.

You say "no ads". Have you checked all the periodicals listed in the affidavit?
What about commercial displays and/or posters in music stores?
What about Kiss's appearance on the Mike Douglass Show?
Have I won this round of the whacky arguments contest yet?

When I applied for my trademark, I had to prove use at my claimed date. They did not do that.

That was then, this is now.
The examiner accepted DiM's documentation in accordance with standard practice of that era.
End of story.

They ignored the fact that when the trademark was filed, they were not "substantially exclusive" user of the cream color.

If you're doing close to a million $ in sales per year, and I can barely recoup the cost of an ad in GP, you have "substantially exclusive use" of the color.

Why would they claim a P-bass and strat style pickups as being a representative of The Mark? (p23) Why all the catalogue pages for stuff that was clearly not The Mark?

I don't know why they included every page of the catalog. It does cause some confusion, but apparently the examiner figured it out.

You know that they did not claim P-Bass and Strat style pickups as being representative of the mark. On the bottom of page 48, the lawyer meticulously identifies which "specimens" are and which are not representative of the mark. Why do you insist on making specious claims that can be disproved in an instant?

---

EDIT:
Still just sparring, folks.
Don't worry, it'll be over soon.
I'm hanging up the gloves.
For now.

[rjb]

Calling Mr. Tone

Hey Wolfe,

I tried to reply to your last PM:
WolfeMacleod has exceeded their stored private messages quota and cannot accept further messages until they clear some space.

[WolfeMacleod]

So, you're looking for invoices, receipts, packing lists, etc. from 1974? Maybe a tax return?
What can I say- statute of limitations for keeping those records is long past.
Besides, those are not the types of documents called for in the TMEP.

There's a large box of tooling invoices from the 70's being put together for me.

You say "no ads". Have you checked all the periodicals listed in the affidavit?
What about commercial displays and/or posters in music stores?
What about Kiss's appearance on the Mike Douglass Show?
Have I won this round of the whacky arguments contest yet?

We're workign on other periodicals. For example, I spoke with the editor of Crawdaddy from that time period. He will be searching his vault for evidence of Dimarzio ads between Feb 1974 and Sept 1075 (the earliest found ad so far)

You know that they did not claim P-Bass and Strat style pickups as being representative of the mark. On the bottom of page 48, the lawyer meticulously identifies which "specimens" are and which are not representative of the mark. Why do you insist on making specious claims that can be disproved in an instant?

Good catch. Somehow, I did not put that together.

[rjb]

Different judges will give different results- assuming you even get that far and the closer you get to a jury trial if applicable the less confident your lawyer is going to be about predicting the results because apparantly juries are known to be unpredictable.

This might be a good time to share my courtroom anecdote.
I originally told it in a PM to Wolfe, but I've edited out most "private conversation" parts.

---

I am not an attorney. But I have had the unenviable experience of witnessing a high-stakes Intellectual Property (patent) trial at the United States District Court, District of Maryland, Baltimore Division.

The defense team estimated the trial would take two days- three at most. The plaintiff was a notorious patent troll. His legal team managed to drag the trial out for four full weeks.

As you should know, mention of the plaintiff’s previous suits or predilection for suing was not allowed during the trial. I thought the defendant was a goner when, during mock deliberation, two nice old lady “ghost jurors” (I’ll explain later) admitted they didn’t understand a word of the testimony, and that they would find in favor of the plaintiff “because he seems like an honest man.”

But “justice prevailed”. The real jury found that the defendant did not infringe the patent- but also that the patent was not invalid. You could say “the defendant won the case”- in the sense that the company was not obliged to pay exorbitant damages to the plaintiff- but only for about five minutes. In that time, an agent for the plaintiff had filed an appeal at the United States Court of Appeals for the 4th Circuit, Richmond VA.

Jason Lollar and “Possum” have both related how legal actions typically drag on for years. You have stated that Seymour Duncan “won” the DiMarzio infringement suit- but DiMarzio appealed until Duncan ran out of time and money. These are standard legal strategies. Why on earth do you think you or your fellows would be immune to them?

So now, <cough> just what are ghost juries ?

There is a common psychological phenomenon (which I don’t know the name of) whereby people involved in legal actions become so convinced of the righteousness of their position that they become blinded to weaknesses in their own arguments, and cannot imagine anyone having an opposing viewpoint. This can happen to anyone- even lawyers. Or maybe (because of their competitive nature) especially lawyers.

In high-stakes cases, law firms, recognizing this phenomenon, hire consulting firms, typically headed by a shrink, to help them “keep it real”. I don’t know the details, but the consultant’s job is to evaluate the legal team’s courtroom performance and provide feedback to adjust strategies to….

Any “good” trial lawyer is so confident of his presentation that he believes he is “knocking them out”- as in wowing the jury to his position. Part of the consultant’s job is to let the lawyer know if he is “knocking them out”- as in lulling the jurists to sleep or confusing them into catatonia.

To that end, the consultant assembles a “ghost jury”. He finds people with similar demographics to the people in the real jury, hires them to attend the trial, and quizzes them daily to find their opinion on “which side is winning”. At the end of the trial, they go to a room and deliberate like a real jury. Incidentally, ghost jurors are never told “which side” they are working for.

So, that’s how I got to spend a full month in a federal courthouse. Don’t ask how, but I got a gig as a ghost juror. Seriously, don’t ask how. NDAs and all that. I will neither confirm nor deny that when it became apparent I had a knack for detecting and ferreting out discrepancies and contradictions in testimony and evidence- “slips” that went unnoticed by most people (including lawyers)- I was promoted to “Courtroom B.S. Detector”. But no need to mention that. Seriously. Really. I mean it.

---

From there, I segued into some private conversation... where I told Wolfe he was "pathologically pig-headed".
Ooops.

---

Good luck with it- hope its worth your time and $. Imagine if everyone spent the time they did on this developing new products and construction methods, tooling etc. you might come up with something that could really put you ahead.

Ah-yup.

-rb

[rjb]

We're workign on other periodicals. For example, I spoke with the editor of Crawdaddy from that time period. He will be searching his vault for evidence of Dimarzio ads between Feb 1974 and Sept 1075 (the earliest found ad so far)

Have you called Larry?
He may have a framed copy of the first print ad on his office wall- next to the dollar bill.

Is it just me, or does anyone else think this endeavor is silly?
Note: That wasn't rebuttal. Just plain snark.

Later,
-rb

[WolfeMacleod]

OK, you caught me. I was being facetious. My real point was that if he was only manufacturing pickups in New York and selling them in New Jersey, that would be enough to establish interstate commerce. If he had a legitimate mail-order business, that would be enough to establish use in commerce. And before you mention it, please note that you do not need to be incorporated to be a legitimate business.

Incorporated, maybe not. New York Secretary of States office shows no Dead sole proprietor business listed either, before that time. First address was 88 Brewster St in 1975.

By January 1978 they were here... and still in June '78...From my research, it looks like they moved between June and July to the Richmond Terrace location.


Now, IMO, 6 million bucks worth of pickups "in the present configuration" is an awful lot of pickups. Especially when you consider 1974-1978 dollars. A current Super Distortion retails for about $79. Surely, they weren't that much back then...but lets assume $79 anyways. That would be 75,949 cream pickups alone. In four years time... or 18,978 pickups per year. Given the size of those two locations, and the one year in Richmond Terrace, and the production capabilities of myself and others I know, I find that a tough pill to swallow. Especially when you consider 1970's dollars.

If you are trying to prove DMZ did not have first use in commerce in 1974, you are truly grasping at straws.
All three "statements from the trade" (including one from Washington DC suburb Wheaton MD) establish the date as 1974. Wayne Charvel says he potted EVH's DiMarzio pickup shortly after he opened his shop in 1974. Even the Brit "dweeb with a blog" says it is hard to find a DiMarzio pickup made "before 1974".
If DMZ did not have first use by 1974, that would indicate even faster meteoric growth by the time of publication of the 1978 catalog.

The most important thing here is functionality. Not first use, that's secondary. We can certainly show without a doubt that his use was not substantially exclusive, and that it is harmful to competition.

OK, got it.
Now show proof that BL was building and selling humbuckers with uncovered cream-colored bobbins before 1974.
Because that L-100 ad doesn't cut it.

Currently difficult, but beign worked on. In a previous statement, you mentioned that LSR never made replacement pickups. I've found several ads for LSR replacement pickups, by the way.

I'm happy for you. So, wait, Kent stole Jimmy Page's PAF bobbins, eh?

Jimmy didn't want them back.

Yes, I've read that. Some, if not most, undoubtedly were. But, as I've said, Japanese guitar companies were amorphous animals. During the same time period, Maxon also made pickups for Greco. By no later than 1978, some if not all Greco guitars were equipped with DiMarzio pickups.

I'm not looking for it right now, but I think Ibanez started with Dimarzio in about 1980 or so, if I'm remembering the catalogues I've seen correctly. According to an Ibanez historian I spoke to, it didn't happen until they hooked up with Steve Vai. Not sure when that was.

OK, if you say so.
So, you are saying LD committed intentional fraud, even if he was unaware that Ibanez was selling crappy copies of Freddie King's flying V and EC's faded burst LP?
And by exposing this heinous lie, you and the FTC are going to cancel a 40-year old trademark?

I mentioned earlier that that is not the main focus, it's functionality. However, Dimarzio must have been aware of concurrent use, exposed coils, and was certainly aware that '59 PAF bobbins were not white.


My inbox has been cleared.

[big_teee]

So is this all just wishful thinking?
Or, is someone really going to to Take DiMarZZ to court?
Or, is this thread, just a way to take out their frustrations in futility, by the means of type print?
I don't see this ever changing without a real court battle.
Don't see how you are ever going to overturn a 40 year standing ruling?
Like Lollar mentioned below, spend you time and efforts, trying to come up with something new and viable, and live and let die!
T