A 2012 color trademark court desicion. Pay attention.

[big_teee]

It looks like the only resolution is for someone with a sizable pickup sales, needs to make them in cream of their own color pigmentation!
Then when, or if they get a cease and desist order, be prepared to take DeMarzz to court.
Get prepared, and have all you ducks in a row, and have a good lawyer on retainer.
Anything else, is just gossip, and idle speculation!
T

[rjb]

so you can sell double whites which in a short time become cream.

It seems to me that the trademark laws are being perverted.

If this statement is true:

A trademark is an identifier of quality to indicate to consumers the origin of the product, thus enabling them to rely on the marks in their purchase decisions.

Then you should be able to make pickups any color you want- as long as you clearly identify them with your logo.

-rb

[John Kolbeck]

That product already exists. IIRC, they're called bobbin toppers.

Is it safe to assume that you still see the unwanted original color around the sides of the "topper"?

[rjb]

Is it safe to assume that you still see the unwanted original color around the sides of the "topper"?

Don't know nor care. Here, check them out for yourself:
Bobbin Toppers

[John Kolbeck]

Don't know nor care. Here, check them out for yourself:
Bobbin Toppers

Not surprisingly, they camera angles they choose to use don't show the sides of the bobbins in clear detail. If they look cheesy in person, then they are not suitable stand ins for a solid colored bobbin top. I would also imagine that as a superficial layer, they won't show the same wear pattern as an actual plastic bobbin.

[Lollar Jason]

"Then when, or if they get a cease and desist order, be prepared to take DeMarzz to court.
Get prepared, and have all you ducks in a row, and have a good lawyer on retainer.
Anything else, is just gossip, and idle speculation!"
Yeah takes deep pockets and thousands of hours preparing formal paperwork that has to be submitted in a particular format that changes depending on what location the federal court is in. There is no absolute standard so if you prepare it wrong it will all get rejected. Meanwhile you have deadlines you have to meet for each bit of the filing- its very difficult even with a couple of free helpers working alongside your official attourney. Having gone through this finalized about 2 years ago but starting in 2004 I had formerly the wrong idea how the federal court system really works. They dont want court cases- they want you to go through endless mediation and they want you to make a settlement, at no time does a judge actually go through and look at the case unless it eventually goes to trial which is not the usual. There is an instance where the judge might make a ruling- I dont recall what thats called but it doesnt happen often and everything has to be formatted and filed just so. The amount of money and time you spend would likely be not worth what you would get, maybe it might be worth it for someone like Duncan but I have doubts about that, they would likely be better off making a settlement and getting an exclusive license which may not cost them anything but a dollar plus all the attourney fees and time spent which could go into the millions. Even Dimarzio probably doesnt want to lay out that much cash over that so settlementmaybe likely whatever that might be- all speculation on my part. IMO its an outdated 80's aesthetic, sure people ask for it occasionally but its small time- well maybe if you have alot of hair metal fans, could be a different story May no one here have to go through that- crossing fingers. My experience- doesnt matter if you are in the right or not; its all about money and how much you want to spend on it regardless of the facts and even then if it goes to jury trial there is no telling how they may vote even if the evidence seems irrefutable.

[WolfeMacleod]

JUST PLAYING DEVIL'S ADVOCATE

What about them? Did they make cream pickups before DiMarzio?
(I really don't know- totally ignorant about this topic.)

Old magazine ads are in the process of being dug up....

Which were produced before DiMarzio filed the cream trademark?
Or which were produced by DiMarzio to match their pickups?

Who or when the cream hardware was produce by makes no difference. I'd figure the vast majority of guitars to include cream....if I had to take a guess. Certainly the vast majority of LP's and PRS guitars.

"Accepted" colors? What does that mean?
If you manufacture your own parts, you can make them gold or mint green or tortoise shell or confetti sparkle or....
But I guess that illustrates the difference between a pickup "builder" and a pickup "winder".

By "accepted" I mean this. Guitarists are very aesthetically-minded people. Guitars typically come with white, cream, or black binding. Guitars with green, red, blue, or any other funky colors are not all that common.... yes, Ibanez, and some others.. but black, cream, and white are the most typical. The pickup buyers universally request (discounting covered humbuckers) either black, zebra, or cream. I don't make a white bobbin because there are no high quality whites to be had (soon to change, for me - and thanks for the disparaging remark, by the way...with the availability of perfectly good parts, I never had the need to waste tons of money to replicate those parts..until recently) I have never been asked for any other color other than black, cream, or zebra, or white. Therefore, four "commonly accepted" colors. You don't put mint green on a gold-top or sunburst LP... black, zebra, or cream.

So, has DM ever gone after someone for using unpigmented plastic?

Don't know.

Those sound like real functionality differences (or whatever the legal term is).

Another solution would be to make the tops of the coils modular; the coil would be wound around a thin plastic retainer, and the colored plastic you see would be secured over the top of that. Different colored covers would either be included or sold separately. From there, the customer could fit any combination of colors they wanted.

There are several ways it could be done, it seems that it's a bigger issue to us than it is to pickup manufacturers. Maybe Seymour Duncan didn't renew the double cream license with DiMarzio in the 80's because demand for double cream was not all that high anyway.

Forcing a modular design would greatly increase the cost and ease of manufacture. If anyone has actually bothered to read the stuff I've posted here, that goes squarely against trademark law. For people who say "just put a cover on it..." same damn thing, it affects the cost of manufacture.

Let's recap And please read this time... don't let your eyes gloss over, or go all ADD. This sh!t is important for you people to know. Half of the entire industry doesn't even know the difference between patents and trademarks are for. "What do you mean, Dimarzio has a patent on cream?" ugh... It may mean the difference between you becoming Dimarzio's next cannon fodder or not. Again, they are suing someone in the small pickup community...



1202.02(a)(ii) Purpose of Functionality Doctrine

The functionality doctrine, which prohibits registration of functional product features, is intended to encourage legitimate competition by maintaining a proper balance between trademark law and patent law. As the Supreme Court explained, in Qualitex Co. v. Jacobson Prods Co., 514 U.S. 159, 164-165, 34 USPQ2d 1161, 1163 (1995):

The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. Sections 154, 173, after which competitors are free to use the innovation. If a product’s functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).

In other words, the functionality doctrine ensures that protection for utilitarian product features be properly sought through a limited-duration utility patent, and not through the potentially unlimited protection of a trademark registration. Upon expiration of a utility patent, the invention covered by the patent enters the public domain, and the functional features disclosed in the patent may then be copied by others – thus encouraging advances in product design and manufacture. In TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 34-35, 58 USPQ2d 1001, 1007 (2001), the Supreme Court reiterated this rationale, also noting that the functionality doctrine is not affected by evidence of acquired distinctiveness.

Thus, even when the evidence establishes that consumers have come to associate a functional product feature with a single source, trademark protection will not be granted in light of the public policy reasons stated. Id.

1202.02(a)(v)(D) Ease or Economy of Manufacture in Functionality Determinations

A product feature is functional if it is essential to the use or purpose of the product or if it affects the cost or quality of the product. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n.10, 214 USPQ 1, 4 n.10 (1982) (emphasis added). Therefore, a showing that a product design or product packaging results from a comparatively simple or inexpensive method of manufacture will support a finding that the claimed trade dress is functional.

In many cases, there is little or no evidence pertaining to this factor. However, the examining attorney should still ask the applicant for information, under 37 C.F.R. §2.61(b), as to whether the subject design makes the product simpler or less costly to manufacture, since evidence on this issue weighs strongly in favor of a finding of functionality. See, e.g., TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001); In re Virshup, 42 USPQ2d 1403, 1407 (TTAB 1997). Statements pertaining to the cost or ease of manufacture may sometimes also be found in informational or advertising materials. See M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1097 (TTAB 2001) (statements in promotional material that applicant’s design results in reduced installation costs found to be evidence of the functionality of applicant’s configurations of metal ventilating ducts and vents for tile or concrete roofs).

While evidence showing that a product feature results from a comparatively simple or inexpensive method of manufacture supports a finding that the design is functional, the opposite is not necessarily the case. That is, assertions by the applicant that its design is more expensive or more difficult to make, or that the design does not affect the cost, will not establish that the configuration is not functional. In re Dietrich, 91 USPQ2d 1622, 1637 (TTAB 2009) ("Even at a higher manufacturing cost, applicant would have a competitive advantage for what is essentially, as claimed in the patents, a superior quality wheel."); In re N.V. Organon, 79 USPQ2d 1639, 1646 (TTAB 2006). Designs that work better or serve a more useful purpose may, indeed, be more expensive and difficult to produce.

[WolfeMacleod]

1202.02(a)(vi) Aesthetic Functionality

"Aesthetic functionality" refers to situations where the feature may not provide a truly utilitarian advantage in terms of product performance, but provides other competitive advantages. For example, in Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1531, 1533, 32 USPQ2d 1120, 1122, 1124 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995), the Federal Circuit affirmed the Board’s determination that the color black for outboard motors was functional because, while it had no utilitarian effect on the mechanical working of the engines, it nevertheless provided other identifiable competitive advantages, i.e., ease of coordination with a variety of boat colors and reduction in the apparent size of the engines.

The concept of "aesthetic functionality" (as opposed to "utilitarian functionality") has for many years been the subject of much confusion. While the Court of Customs and Patent Appeals (the predecessor to the Court of Appeals for the Federal Circuit) appeared to reject the doctrine of aesthetic functionality in In re DC Comics, Inc., 689 F.2d 1042, 1047-1050, 215 USPQ 394, 399-401 (C.C.P.A. 1982), the Supreme Court later referred to aesthetic functionality as a valid legal concept in TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001). The confusion regarding aesthetic functionality stems in part from widespread misuse of the term "aesthetic functionality" in cases involving ornamentation issues, with some courts having mistakenly expanded the category of "functional" marks to include matter that is solely ornamental, essentially on the theory that such matter serves an "aesthetic function" or "ornamentation function." It is this incorrect use of the term "aesthetic functionality" in connection with ornamentation cases that was rejected by the Court of Customs and Patent Appeals. See In re DC Comics, Inc., 689 F.2d 1042, 1047-1050, 215 USPQ 394, 397, 399-401 (C.C.P.A. 1982) (majority opinion and Rich, J., concurring) (holding, in a case involving features of toy dolls, that the Board had improperly "intermingled the concepts of utilitarian functionality and what has been termed ‘aesthetic functionality;’" and rejecting the concept of aesthetic functionality where it is used as a substitute for "the more traditional source identification principles of trademark law," such as the ornamentation and functionality doctrines).

Where the issue presented is whether the proposed mark is ornamental in nature, it is improper to refer to "aesthetic functionality," because the doctrine of "functionality" is inapplicable to such cases. The proper refusal is that the matter is ornamental and, thus, does not function as a mark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127. See TMEP §§1202.03-1202.03(g) regarding ornamentation.

The Supreme Court’s use of the term "aesthetic functionality" in the TrafFix case appears limited to cases where the issue is one of actual functionality, but where the nature of the proposed mark makes it difficult to evaluate the functionality issue from a purely utilitarian standpoint. This is the case with color marks and product features that enhance the attractiveness of the product. The color or feature does not normally give the product a truly utilitarian advantage (in terms of making the product actually perform better), but may still be found to be functional because it provides other real and significant competitive advantages and, thus, should remain in the public domain. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-1164 (1995) (stating that a product color might be considered functional if its exclusive use "would put competitors at a significant non-reputation-related disadvantage," even where the color was not functional in the utilitarian sense).

In M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1096 (TTAB 2001), the Board considered the proper use of the aesthetic functionality doctrine in connection with product designs for metal ventilating ducts and vents for tile or concrete roofs:

This case seems to involve elements of both utilitarian and aesthetic functionality. Here, for example, there is evidence of utility in applicant’s patent application, as well as statements touting the superiority of applicant’s design in applicant’s promotional literature, and statements that applicant’s design results in reduced costs of installation. On the other hand, there is no question that applicant’s roof designs which match the appearance of surrounding roof tiles are more pleasing in appearance because the venting tiles in each case are unobtrusive.

Citing extensively from the TrafFix, Qualitex, and Brunswick cases, the Board concluded that the product designs were functional for a combination of utilitarian and aesthetic reasons. Id. at 1097.

Note that this type of functionality determination – while employed in connection with a normally "aesthetic" feature such as color – is a proper use of the functionality doctrine, necessitating a §2(e)(5) refusal where the evidence establishes that a color or other matter at issue provides identifiable competitive advantages and, thus, should remain in the public domain. In In re Florists’ Transworld Delivery Inc., __ USPQ2d ____, Serial No. 77590475 (TTAB March 28, 2013), for example, the record included evidence reflecting that, in the floral industry, color has significance and communicates particular messages (e.g., elegance, bereavement, Halloween), which extend to floral packaging. The Board found, therefore, that the examining attorney had demonstrated a competitive need for others in the industry to use black in connection with floral arrangements and packaging therefor and concluded that the proposed mark was functional under §2(e)(5). This is the opposite of an ornamentation refusal, where the matter at issue serves no identifiable purpose other than that of pure decoration.

Generally speaking, examining attorneys should exercise caution in the use of the term "aesthetic functionality," in light of the confusion that historically has surrounded this issue. In most situations, reference to aesthetic functionality will be unnecessary, since a determination that the matter sought to be registered is purely ornamental in nature will result in an ornamentation refusal under §§1, 2, and 45 of the Trademark Act, and a determination that the matter sought to be registered is functional will result in a functionality refusal under §2(e)(5). Use of the term "aesthetic functionality" may be appropriate in limited circumstances where the proposed mark presents issues similar to those involved in the Florists’ Transworld Delivery, M-5 Steel, and Brunswick cases discussed above – i.e., where the issue is one of true functionality under §2(e)(5), but where the nature of the mark makes the functionality determination turn on evidence of particular competitive advantages that are not necessarily categorized as "utilitarian" in nature. Any such use of the term "aesthetic functionality" should be closely tied to a discussion of specific competitive advantages resulting from use of the proposed mark at issue, so that it is clear that the refusal is properly based on the functionality doctrine and not on an incorrect use of "aesthetic functionality" to mean ornamentation.

See TMEP §§1202.05 and 1202.05(b) for additional discussion and case references regarding the functionality issue in connection with color marks.

[John Kolbeck]

Forcing a modular design would greatly increase the cost and ease of manufacture. If anyone has actually bothered to read the stuff I've posted here, that goes squarely against trademark law. For people who say "just put a cover on it..." same damn thing, it affects the cost of manufacture.

Let's recap And please read this time... don't let your eyes gloss over, or go all ADD. This sh!t is important for you people to know. Half of the entire industry doesn't even know the difference between patents and trademarks are for. "What do you mean, Dimarzio has a patent on cream?" ugh...

There's no need for the hostility. I've already acknowledged that I accidentally used the term "patent", but understand the distinction.

I don't agree that the double cream is an outdated aesthetic. If it's associated with 80's metal, it's only because of DiMarzio's association with said 80's metal. I have many cream bound guitars that would look great with double cream pickups. If anything, I'd say "zebra" is the more dated look, since it's aesthetically arbitrary, as in, there are very few guitars that feature as mix of black parts and cream parts for which you could say "zebra" is a logical match.

I had replied to you in post #11, but you didn't respond. I don't believe dry-cleaning pads could be likened to fabric or guitar pickups, because a dry-cleaning pad is a stand alone product, not a component is included in a larger finished product, as is fabric or a guitar pickup. A company was allowed trademark status on red soled high heels, but a high heal is a finished product, where as a guitar pickup is not functional all by itself.

the Federal Circuit affirmed the Board’s determination that the color black for outboard motors was functional because, while it had no utilitarian effect on the mechanical working of the engines, it nevertheless provided other identifiable competitive advantages, i.e., ease of coordination with a variety of boat colors and reduction in the apparent size of the engines.

IMO, this describes the situation relating to the double cream trademark perfectly.

[WolfeMacleod]

There's no need for the hostility. I've already acknowledged that I accidentally used the term "patent", but understand the distinction.

I don't agree that the double cream is an outdated aesthetic. If it's associated with 80's metal, it's only because of DiMarzio's association with said 80's metal. I have many cream bound guitars that would look great with double cream pickups. If anything, I'd say "zebra" is the more dated look, since it's aesthetically arbitrary, as in, there are very few guitars that feature as mix of black parts and cream parts for which you could say "zebra" is a logical match.

I had replied to you in post #11, but you didn't respond. I don't believe dry-cleaning pads could be likened to fabric or guitar pickups, because a dry-cleaning pad is a stand alone product, not a component is included in a larger finished product, as is fabric or a guitar pickup. A company was allowed trademark status on red soled high heels, but a high heal is a finished product, where as a guitar pickup is not functional all by itself.



IMO, this describes the situation relating to the double cream trademark perfectly.

Sorry, that hostility wasn't directed towards you really. It's true that half the industry thinks it's some sort of patent. My hostility (irritation, really) comes from those who don't or don't want to understand how aesthetics can be of any importance... the "function" of aesthetics.
.. and the whole "bobbin toppers" thing drives me up the wall. An ugly, POS solution to an issue that shouldn't exist.

You're right about the dry cleaning pads.. theyr'e stand-alone products. and you're dead on when it comes to the Mercury case.... and the John Deere case, which was all about color-coordination.

[David Schwab]

Companies do trademark colors associated with their brand.

This color green is trademarked by H&R Block. But only when it's a square like this.



This website has a good article, they state:

"Years later, in another case, the U.S. Supreme Court reiterated that a single color can indeed be a brand, so long as the public strongly associates the color and the specific product and that the color is in no way functional."

And

"For example, when you see chocolate candy in a purple wrapper, you know it's Cadbury: when you see a turquoise box for jewelry, you know it's from Tiffany & Co."

Color & Trademarks

Now the thing with DiMarzio is that that cream color is no longer strongly associated with their brand. Not like it was in the 70s when they only came in cream. And they now state the standard color of their pickups is black.

"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."

Frequently Asked Questions | DiMarzio

That makes it sound like they abandoned their trademark.

[David Schwab]

Half of the entire industry doesn't even know the difference between patents and trademarks are for.

There's also design patents, which only protect the decorative, but not functional aspect of a product. And that leads us afoul with the Rickenbacker design patent for the horseshoe pickup, since the functional patent ran out a long time ago.

[Leo_Gnardo]

Companies do trademark colors associated with their brand.

This color green is trademarked by H&R Block. - - - - - -

What can brown do for you? UPS owns brown, as long as it's a truck & a uniform, maybe some other items besides. Black & Decker owns orange & white for their packaging, or is it orange & black... ? Funny trend this "ownership" of a color or combination. In any case I never thought much of DiMarzio's glom on cream humbuckers, sounds to me like "who's afraid of the big bad lawyers" more than anything.

[David Schwab]

What can brown do for you? UPS owns brown, as long as it's a truck & a uniform, maybe some other items besides. Black & Decker owns orange & white for their packaging, or is it orange & black... ? Funny trend this "ownership" of a color or combination. In any case I never thought much of DiMarzio's glom on cream humbuckers, sounds to me like "who's afraid of the big bad lawyers" more than anything.

Yeah, but back in the 70s when they were only cream, you knew right away when you saw a guitar or bass with them what brand it was. But as soon as they started making mostly black pickups they lost that brand recognition.

Like what if UPS started painting their trucks orange... That's what DiMarzio has done to their trademark.

[Leo_Gnardo]

Yeah, but back in the 70s when they were only cream, you knew right away when you saw a guitar or bass with them what brand it was. But as soon as they started making mostly black pickups they lost that brand recognition.

Like what if UPS started painting their trucks orange... That's what DiMarzio has done to their trademark.

Hm, back in the 70's I just wasn't hip to double creams being exclusively DiMarzio. What the heck did I know? Far as I care, DiMarzio could make their pickups purple with pink polka dots. Yes I'm aware some people consider their guitars to be fashion accompaniments, hell I worked for a guy who definitely did. In any case I hope double cream ceases being a DiMarzio "service mark" or whatever, and goes back to Oreos where it belongs.