A 2012 color trademark court desicion. Pay attention.

[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

[mr fab]

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

[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.

[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]

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.

---

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

[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]

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.

=======

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]

=======

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]

My Work Here is Done

In the words of The Lone Ranger, "My work here is done".

To be honest, I joined this forum discussion because I had gotten tired of seeing the same misinformation repeated year after year. I have learned a lot about trademark law (and the “double cream” mark in particular) in the past two months, and I hope my "tutorials" might provide information and links to resources to help others who care to learn how the process really works. Those who want to stay uninformed will stay uninformed. That's life.

Also, I was concerned about seeing a certain party potentially causing financial harm to himself and others. It is not healthy to live in an echo chamber where everyone agrees with you- and I felt it was time for a reality check. I think I've said enough to make my point- or not, as the case may be. That's life.

I may still drop an occasional line to this thread- but no more 3-part missives!
For now, I reckon it’s time to ride off into the sunset.

Heigh-Ho SilverTop™, Away!
- The Lone Whizzer



PS-
As a memento of the good times, I leave three brief addenda to the Tedious Trademark Tutorial™ series for your enjoyment.

[ken]

Interesting thread. Nothing at all like Wolfe intended... but I do think he has many points.

Look at how many hundreds of pickup winders have come and gone since the mid 90's- some of them took the money and ran- most just dissapeared because they didnt have anything unique to offer IMO. Now the situation appears that there are so many and many of those are trying to compete by undercutting the price -which makes it hard or impossible to invest in tooling- that everyone is tripping over each other so its difficult to distinguish yourself as different. Tough time to get established particularly when "we use the best materials available" just really means you are at par with most everyone else.

Now you're preaching to the choir here. Ebay is full of winders and parts nowadays, all originally bought by people who were convinced that pickup winding was easier than picking gold coins off a beach, but found out they were better at 'blue sky' marketing than actually making something. Cutting prices is a bad idea, because how do you raise them back up when you need to? Instead, I offer free CONUS shipping and a lifetime warranty, with reasonable limits of course. Not only that, I answer the phone myself no matter what time it is. I find that my customers value a quality pickup and a great buying experience much more than a low price, and I'm going to do whatever I can to give them that. And yes, I have sold sets of pickups at 3 AM, many times.

The small guys are the opposite of all this. They're the saviors of the industry. Working with them gives me a feeling of being current, they make playing the electric guitar feel special. You see it on guitar forums, a new winder shows up, and various forum members talk about what a great guy they are, and how they wind killer pickups. I think the pickup is secondary to the customer service experience. And I've noticed that the smaller companies have started throwing in sets of guitars string and guitar picks in with their pickups. The hand written wording on the back of Lollar pickups is very nice. It just shows that someone else out there is as passionate is as the customer. So very different than how you feel when you get something from the big names. Having these numerous pickup startups stay small allows them to maintain that one to one business relationship with customers, though I think it very possible to scale and still maintain that relationship with customers.

Mr. Kolbeck, you get it. However, in this economy with the massive amount of actual makers out there today, (as well as those who buy theirs from Korea... but I digress) you have to be at the top of your game to survive. If your product isn't spot on tonally and of highest quality no amount of swag or fancy plastic boxes are going to save you. I survive because I give my customers the best quality pickup I can with the best customer service possible. In fact, I obsess about it. Some obsess about photos on websites or how cool their packaging is, but the dancers up front don't hear any of that and couldn't care less. If the player's tones not happening the dancers ain't moving, and if they ain't moving the players don't get paid... think about it.

Rant over

Ken
Angeltone Electronics LLC
findyourtone@angeltone.com

[Beef Coon]

I could see how a big fish competetitor in the pond might actually see a benefit from Dimarzio's trademark and strategically decide to not do a darn thing. The fish might not be able to do double cream, but they get the benefit of the policing by Dimarzio, keeping competition at bay - which may be worth enough to not "fight" over it. I'd bet a bread-loaf pot metal keeper bar that this type of cost-benefit analysis has been done by some.

-BT

[John Kolbeck]

Look at how many hundreds of pickup winders have come and gone since the mid 90's- some of them took the money and ran- most just dissapeared because they didnt have anything unique to offer IMO. Now the situation appears that there are so many and many of those are trying to compete by undercutting the price -which makes it hard or impossible to invest in tooling- that everyone is tripping over each other so its difficult to distinguish yourself as different. Tough time to get established particularly when "we use the best materials available" just really means you are at par with most everyone else.

I feel like the contrast between the small guys and the big names like DMz and SD is the personal touch. Their customer service seems cold or nonexistent. Music is something we're passionate about, playing music is a special experience, in contrast to just listening to it passively, but when you deal with the big names, you feel the opposite of special. DiMarzio's packaging doesn't appear to have changed since the 80's. There's a metaphorical (sometimes real) layer of dust on them, so I come across their products and I even feel guilty, like perhaps I'm stuck in the past, and I should really get a hair cut. I think Seymour Duncan posted once or twice on their companies forum well over a decade ago now. Larry DiMarzio only gets out of bed in the morning to file lawsuits. It's like they've all moved on, maybe I should as well.

The small guys are the opposite of all this. They're the saviors of the industry. Working with them gives me a feeling of being current, they make playing the electric guitar feel special. You see it on guitar forums, a new winder shows up, and various forum members talk about what a great guy they are, and how they wind killer pickups. I think the pickup is secondary to the customer service experience. And I've noticed that the smaller companies have started throwing in sets of guitars string and guitar picks in with their pickups. The hand written wording on the back of Lollar pickups is very nice. It just shows that someone else out there is as passionate is as the customer. So very different than how you feel when you get something from the big names. Having these numerous pickup startups stay small allows them to maintain that one to one business relationship with customers, though I think it very possible to scale and still maintain that relationship with customers.

[Lollar Jason]

this has become pretty amusing The ghost jury- never heard of that but the whole point of it keeping it real- there is SO much to that. Everyone thinks they are right except sometimes the other guy is more right and sometimes even if they are wrong they are deemed right or visa versa. :{

" Jason has been the only other person other than Dimarzio and Duncan to have any meaningful growth? EMG discounted, because they product something different. Lace, Lawrence, TV Jones, Fralin, Van Zandt, WCR, Throbak, myself... all small, employing just a few people. " What is meaningful growth???
Thats quite a claim- I know how many people Lindy has had working for him a different times and at one time he had only a few less than I have now and he may still. Lindy doesnt go to shows- lindy doesnt take credit cards so how serious is he about growing? Maybe he is growing I dont know but if hes maintaining his level- I think he is totally happy being right where he is and thats why he does what he does. WCR is happy at the size he is now- hes got plenty of work and wants to keep it the size it is now- as I understand it. T Vs main client has been fender and he has only recently been going for a wider clientel which he could do.
There are alot of people with many different reasons as to why they maintain a smaller crew- Mine is a tiny portion of Duncans size. Both wolf and I got serious about having a pickup business at the same time- I didnt take any loans out or have a cash pile to invest and neither did he, I made different decisions about what I was going to make and how I was going to go about it- I had the ability to make my own parts and still do, I had a good 15 years of experience making all sorts of widgets from custom one offs to limited production and I gigged for a solid 20 years by the mid 90s.
Im not buying Im the only one thats had growth but I can say alot of the small guys are small because they dont deliver, thier work is shoddy- just look at photos they post, product is not consistant, maybe they are not that serious, maybe they dont talk guitar language, maybe they only make one kind of pickup- mabey they are cantankerous.
Look at how many hundreds of pickup winders have come and gone since the mid 90's- some of them took the money and ran- most just dissapeared because they didnt have anything unique to offer IMO. Now the situation appears that there are so many and many of those are trying to compete by undercutting the price -which makes it hard or impossible to invest in tooling- that everyone is tripping over each other so its difficult to distinguish yourself as different. Tough time to get established particularly when "we use the best materials available" just really means you are at par with most everyone else.

[rjb]

Wolfe,

I'm going to refrain from replying to the bulk of your arguments, because replying would only lead to more futile back-and-forth.
I've been posting some silly stuff lately, and so have you.
IMHO, the difference between us is that I realize I've been posting silly stuff.

You've obviously never seen a PAF who's covers have never been removed, have you?

Sure I have. On a lap steel.
But wait, is this a koan?
Like "What is the sound of one hand clapping?"
"What is the color of a bobbin in a PAF whose covers have never been removed?"

Everyone's cream is different. Even Gibson's own cream is different.

I'm not arguing.
But may I point out that this fact could be used to argue that cream is not a functional color?

In Brunswick v. Whomever, black outboard motors were deemed functional because (as they say in fashion) black goes with everything.
In John Deere v. Also-Ran, the loaders in question were painted the exact same shade of green as JD tractors.

Cream could be deemed not functional because it is difficult to get a color match between parts from different manufacturers- or even parts from the same manufacturer.

It could be said there are many colors other than cream that are aesthetically attractive when combined with a wide variety of other colors.
It could even be said that a multi-shade treatment (such as translucent bastard amber) would be more "functional" than cream.

And you obviously haven't spoken to... old-timers who've been around long enough to remember...

Ahem. Kid, I am that old.
Getting a little off topic, I'm old enough to remember when that cream ABS binding you think is "traditional" came out.

whoopdie-fukkin-doo.

Oh, the arrogance of today's youth!
Why, I never talked like that when...<shuffling off, muttering to no one in particular>.

Look again. As of the July 5th, 79 statement "Approximately six million dollars worth of pickups in the present configuration have been sold"

By golly, you're right! How could I have doubted you? Oh no, I must be going senile.

Let's see... there's the $3M vs. $6M; the Maxon "staple" pickup; and we'll count the Hoboken crack- even though I was half joking. I count 3 verifiable factual errors for me. How many you got so far? Roughly?

Going off information given to me by three attorneys here. But I'll look further into that.

OK, this is serious. Please look into this. Sooner rather than later.

---

Oh. And as for "functionality" having another meaning, why don't you tell us, oh great Wizard? Since you're so learned in functionality doctrine.

The word I bolded was "secondary", not "functionality"- and I was only making a bit of obtuse word play.
Secondary has another meaning because in the legal term "secondary meaning" the word secondary has a meaning other than its common definition.

Wizard? I've said straight out that I've only been reading about this subject for a few weeks.
To be precise, I started on June 16. But I haven't been actively "studying" for the past 3 or 4 weeks.

Wizard! First I'm a Troll, now I'm a Wizard.
At least I'm not Charming (inside joke).

If anyone needs to get in touch with me, I'll be under the bridge.



Hugs & Kisses,
- Ralph "The Wiz" Barthine

[WolfeMacleod]

I provided the link. Look it up. Wayne said EVH had a DiMarzio pickup, that's all I know.

FOudn the link. Nope, he doesn't say what it was. Or when it was, just that it wwas "early" 1970s.. some time after '74. Assuming it was the same shop he opened in '74 (which is implied) it could have been any time after that.

Oh. And as for "functionality" having another meaning, why don't you tell us, oh great Wizard? Since you're so learned in functionality doctrine.

[WolfeMacleod]

Define substantial. What were Mighty Mite's sales figures during the same period?

According to Randy Zacuto, who I've been speaking with a lot lately, he took three million dollars worth of orders during a single NAMM show. They were doing huge numbers of cream pickups

Jason seems to be doing just fine.

You do realize, don't you, that in the 40 years of aftermarket pickup industry, Jason has been the only other person other than Dimarzio and Duncan to have any meaningful growth? EMG discounted, because they product something different. Lace, Lawrence, TV Jones, Fralin, Van Zandt, WCR, Throbak, myself... all small, employing just a few people. I could discount Lace too, because the tech is so different.

There you go again! <Insert Ronald Reagan recording>
I, quoting Bill Lawrence, said that Lawrence Electrosounds (founded 1965 in Germany) never made replacement pickups.

So you did. My mistake



A likely story. Your honor, are we to believe the testimony of an incorrigible bobbin thief?

"Concurrent" as in 1974, or "concurrent" as in blatant copies made before the trademark application?

Concurrent as in it really doesn't fucking matter.

Aged bobbins exposed to light may not have been white, but they weren't "DiMarzio cream" either.

You've obviously never seen a PAF who's covers have never been removed, have you? "Dimarzio" cream or not, it doesn't matter since the trademark is so vague. Everyone's cream is different. Even Gibson's own cream is different. And you obviously haven't spoken to the oldest of the Heritage employees, either. Or George Gruhn. Or Seymour. Or any of the other old-timers who've been around long enough to remember what they looked like without covers.

If nothing else, DiMarzio, through market saturation and print ads, undoubtedly pioneered the use of the name "cream" to describe plastic bobbins.
Can you buy "cream" plastic switch plates at Home Depot? No.
You can get white, ivory, almond, grey, brown, or black- but not cream.
Why no "cream"?
"Real men" just don't use that word- unless they're talking about coffee.
"Real men" certainly didn't use that word to describe plastic in 1970.
"Cream" is an interior decorator word.
Have I won this round of the "silliest arguments" contest?

whoopdie-fukkin-doo.


Message sent.

Later,
-rb

Later. Troll.

Not again!
The quoted figure was 3 million, not 6 million.

Look again. As of the July 5th, 79 statement "Approximately six million dollars worth of pickups in the present configuration have been sold"

That would only apply if the mark were listed in The Supplementary Register.
Since the mark is listed in the Principal Register, the plaintiff would have the burden of proof to show that the mark is aesthetically functional. The only advantage the plaintiff might have is that he could file in a "friendly" district.

I am certain of this. Look it up.

Going off information given to me by three attorneys here. But I'll look further into that.