A 2012 color trademark court desicion. Pay attention.

[rjb]

The Double Cream Mark - It Could've Been Better

THE “DOUBLE CREAM MARK”
IT COULD'VE BEEN BETTER, BUT IT COULD'VE BEEN WORSE

If you peruse the correspondence between DiMarzio and the USPTO, you’ll see that DMZ initially applied for a narrowly defined trademark that would have been restricted to the look of the company’s flagship products- the Super Distortion and Dual Sound. So, what happened? The USPTO examiner would not allow it.
CREAM.pdf

• DiMarzio’s original application was for a mark for the combination of the dual cream-colored, round-ended bobbin configuration and the twelve Allen head pole screws.
• USPTO said no feature of a product having utilitarian functionality may be trademarked; hex heads are functional, therefore cannot be part of the trademark.
• DMZ’s counsel unsuccessfully tried to convince the examiner that the combination was not functional.
• Because the hex heads were rejected for functionality, DMZ now has a mark which includes round poles of any type (allen head screws, philips head screws, slotted screws, plain slugs).

To state the obvious:
Even though DMZ didn’t ask for such a mark, the mark now includes P.A.F. style humbuckers.

But, hey, it could have been worse. We should be thankful the examiner bought the assertion that the rounded bobbin ends and six round polepieces were non-functional. If he hadn’t, DMZ would have an even broader trademark that included all bobbin shapes and polepiece configurations- including blades.

Larry’s Affidavit, p62 of CREAM.pdf
These round pole pieces with their openings, represent a functional aspect of the pickup in that the openings are insets for Allen wrenches which allow the adjustment of the pole pieces. The functional aspect of the adjustable pole pieces is not a trademark identification element of the present application, except in combination with the cream-colored double bobbin configuration. The round inset pole pieces distinguish the pickup of the present application in the cream-colored bobbin configuration from all other pickups. For instance, the Les Paul pickup has six screwheads and six flat-ended round pole pieces.

Examiner’s letter, p67 of CREAM.pdf
Conversely, if any element within the drawing is within the public domain as such, i.e., then the particular element should appear in "dotted lines" per TMEP Section 807.03, which of course would clearly indicate no exclusive rights of appropriation as to that particular element rests with applicant. In this regard, see pp. 3 of L. P. Di MARZIO'S affidavit, i.e., "these round pole pieces with their openings represent a functional aspect of the pickup in that the openings are inserts for Allen wrenches which allow the adjustment of the pole pieces.

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THE PERIL OF BEING AHEAD OF YOUR TIME

Ironically, it appears that if the patent application had been interpreted ten years later, DiMarzio probably could have trademarked the combination of two cream bobbins with six hex head poles per bobbin.

McCarthy on Trademarks and Unfair Competition

Look to Functionality of the Overall Combination.
Under the general rule of trade dress, if the plaintiff defines its trade dress as a combination of elements, the combination can be nonfunctional even though some individual elements may be functional. Thus, the Seventh Circuit said that while the colors of individual parts of a folding table might be functional, it is error to focus on the individual elements rather than the overall trade dress combination, which is protectable.
[U.S. Court of Appeals, 7th Ckt. Feb 25, 1987]

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DO YOU HAVE TO ENFORCE AN OVERLY-BROAD TRADEMARK?

The USPTO says if you don’t enforce your trademark, you lose it.
Protecting Your Trademark
...Throughout the life of the registration, you must police and enforce your rights.

I can’t say why DMZ still “needs” to enforce the double-cream trademark.
But, if I’m not mistaken, even if DMZ only cares about Super Distortion knockoffs, the rules say DMZ has to police and enforce infringements of the broad registered trademark- including P.A.F. style pickups.

This is analogous to my silly example of Louboutin having to police for red-soled gum boots.
Could a bona-fide trademark attorney offer an opinion on this?

[rjb]

The basic test of trademark infringement

Sometimes, we tend to get so bogged down in various arguments that we forget (or may not know) the basic test for determining trademark infringement.

McCarthy on Trademark and Unfair Competition
The test of infringement is: would the reasonably prudent customer be likely to be confused as to the source of the goods?

Let’s take a look at some examples:

Q- Would a reasonably prudent customer be likely to confuse a DiMarzio Super Distortion Humbucker for a "rare as hen’s teeth" original Gibson P.A.F. with cover removed?
A- No.
Q- Why not?
A- You’re kidding, right? OK, OK…
The SDHB has 2 rows of allen head poles, while the P.A.F. has a row of slotted screws and a row of plain slugs.

Q- Would a reasonably prudent customer be likely to confuse a DiMarzio PAF™ Humbucker for a "rare as hen’s teeth" original Gibson P.A.F. with cover removed?
A- No.
Q- Why not?
A- Fit and finish- DiMarzio bobbins are smooth-faced; Gibson bobbins with tooling marks were never meant to be seen. (Also, DiMarzio bobbins have a saturated pinkish orange hue unknown to nature.)

Q- Would a reasonably prudent customer be likely to confuse a Mighty Mite Model 1300 Distortion Humbucker for a DiMarzio Super Distortion Humbucker?
A- Yes.
Q- Why?
A- Because the Mighty Mite pickup is a cosmetic copy of the DiMarzio pickup.

[rjb]

U.S. Trademark law is based on common law

U.S. TRADEMARK LAW IS BASED ON COMMON LAW
(ON PRINCIPLES FOUNDED DURING THE MIDDLE AGES)

I first read about common law tenets in a USPTO brochure, but they didn’t really "sink in" until I came across this webpage for foreign applicants seeking U.S. trademark registration.
Avoiding Trademark Pitfalls in the Land of the Unlimited Possibilities

INTRODUCTION
U.S. trademark law is fundamentally based on common law and thus differs considerably from the trademark laws in other countries….

Misunderstanding the Principle of Priority in the United States
Under U.S. trademark law, being the first to file an application to register a trademark does not guaranty priority to the applicant. In general, under U.S. common law it is the date on which a mark was first used by its owner in the United States that decides the right of priority, irrespective of whether the mark is ever registered in the U.S. Trademark Office. Unlike other jurisdictions, mere use of an unregistered common law mark in the United States gives the user territorial priority trademark rights even without requiring a certain level of notoriety. Such earlier use establishes a right of priority even over a later-filed U.S. application to register a similar mark if the first use of the mark of the application was commenced after the prior first use of the unregistered common law mark

Comment:
One may question the validity of Dimarzio’s “First Use in Commerce” date until the cows come home, but it cannot be denied that DMZ has common law territorial priority rights over Mighty Mite and Seymour Duncan.

The History of Wayne Charvel

• I opened Charvel’s Guitar Repair in 1974 in Azusa, CA.
• In the early 1970′s a young man came into my guitar shop in Azusa, CA, and introduced himself to me as Eddie Van Halen. He asked me if I could stop his Dimarzio pickup from squealing.
• About eight or nine months later, I moved my shop to San Dimas, CA.
• Shortly after that I purchased two overhead pin routers and made my own bodies and necks. We sold everything, including Dimarzio pickups.
• Randy Zacuto, from JB Player also purchased parts from me. He hired a friend of mine named Seymour Duncan who had been making tele three piece bridge saddles and rewinding pickups to make Mighty Mite pickups for him. A short time later, Seymour came out with his own line of pickups. We also sold those.

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ON KNOWLEDGE, TRUTH, AND WHAT IS RIGHT



Beware of false knowledge; it is more dangerous than ignorance.
- George Bernard Shaw

Then you will know the truth, and the truth will set you free.
- John 8:32

What is right is not always popular and what is popular is not always right.
- Albert Einstein

I ain’t saying what is right; I’m just saying what is.
- The Lone Whizzer

[WolfeMacleod]

THE “DOUBLE CREAM MARK”
IT COULD'VE BEEN BETTER, BUT IT COULD'VE BEEN WORSE

If you peruse the correspondence between DiMarzio and the USPTO, you’ll see that DMZ initially applied for a narrowly defined trademark that would have been restricted to the look of the company’s flagship products- the Super Distortion and Dual Sound. So, what happened? The USPTO examiner would not allow it.

That may if fact be the case. And if it were, then Larry should allow for non-allen head styles to be made, but he doesn't. And I'm pretty sure I read a claim in there that said the "rounded pins" were non-functional somewhere.
If the original trademark was meant to include allen-heads, I'm sure the entire industry would be perfectly happy if the mark were limited to that, similar to how the Louboutin mark was limited.

[rjb]

That may if fact be the case. And if it were, then Larry should allow for non-allen head styles to be made, but he doesn't. And I'm pretty sure I read a claim in there that said the "rounded pins" were non-functional somewhere.
If the original trademark was meant to include allen-heads, I'm sure the entire industry would be perfectly happy if the mark were limited to that, similar to how the Louboutin mark was limited.

Having ridden over the horizon, I can't hear you.
If you feel you have a case, bring it up with Federal Marshal Tonto.

[mr fab]

i wonder if the trademark also extends to the double cream pbass pickups they used to make in the 70's?

[rjb]

i wonder if the trademark also extends to the double cream pbass pickups they used to make in the 70's?

Sigh. I dunno. Here, skim through this. Then tell us what you think.
http://www.wolfetone.com/trademark/CREAM.pdf