A 2012 color trademark court desicion. Pay attention.

[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]

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

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

[big_teee]

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

[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?

[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.

[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.

---

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]

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]

Timeline Part 3

On to Timeline Part 3

REGARDING IBANEZ: YOU MUST BE JOKING!!!!

In 1974, with the exception of the few models in the Artist series, everything Ibanez sold was a copy/knockoff. Back then, Japanese guitar companies were kings of the overnight knockoff. I don’t know about the west coast, but in the mid-70s the NYC music district was swarming with Japanese businessmen armed with cameras.

---

SIDETRACK
To get an idea of the “scene”, here’s a fluff piece about NYC’s “Music Row” in the 70’s.
Big Apple Guitar Shops: Then and Now

---

Just for entertainment value, let’s take a look at those Ibanez catalogs.

But before we begin, let’s review a phrase from the affidavit:

nor original guitars sold with pickups exposing their bobbins.

Let’s agree on definitions, shall we?
Would you call a Japanese copy of a custom or hot-rodded American guitar an original guitar?
Neither would I.

1971: http://s93105080.onlinehome.us/Ibane...og/1971/17.jpg
Hey look! There’s a Dan Armstrong plexiglass…. Never mind.

1972: http://s93105080.onlinehome.us/Ibane...og/1972/04.jpg
Some LP copies, all with bolt-on necks and HBs with covers.

✻✻ ⇒ http://s93105080.onlinehome.us/Ibane...og/1972/22.jpg ⇐ ✻✻
> Rush B&W photo of
right-handed copy of Albert King’s “Lucy” flying-V with exposed zebras,
which was hand-built by Dan Erlewine and delivered to Albert in May of 1972.
Is this a copy of a famous custom guitar? Damn right, it is.
https://www.vintageguitar.com/3813/a...ngs-flying-vs/
I told you these guys were fast!

1973: http://s93105080.onlinehome.us/Ibane.../1973-3/03.jpg
Now we start seeing some LP copies with set necks and exposed zebra pups.
* No. 2386, faded cherry burst (set neck, MOP markers) with 2 zebras.
Bad copy of “Beano” guitar? Maybe. Had to use up those zebras somehow.
* No. 2398, maple with chrome-covered neck, zebra bridge.
Copy of guitar in a NYC shop? Who knows? Who cares?

✻✻ ⇒ http://s93105080.onlinehome.us/Ibane.../1973-3/02.jpg ⇐ ✻✻
HEY, CHECK THIS OUT:
> No. 2351M, brown burst. HOE. LIE. SHEET.
Chrome neck pup, white pickguard. Pinkish pup rings. WTF?
Look very closely at the bridge pickup.
Bobbin tops same pinkish color as the pup rings.
But, hey, wait a minute… doesn’t that slug bobbin look odd?

IT LOOKS LIKE A BLACK BOBBIN WITH A CREAM LAMINATE TOP-
JUST AS DESCRIBED IN DM’S AFFIDAVIT!

Original pickups of the present application included a cream color laminate on the exposed surface.

DOES ANYONE STILL BELIEVE IBANEZ IS A GOOD REFERENCE FOR “PRIOR ART”?

---

SIDEBAR (Busy readers may skip this section.)

Also note these DiMarzio ads: http://www.wolfetone.com/trademark/CREAM.pdf
p32
DiMarzio pickups are available on many fine instruments built by these companies:
Aria (Japan)
Greco (Japan)
Hondo (Japan)

And

p36
DiMarzio pickups are distributed world wide...
For information in Japan, call Hank Hoshino…

No, Ibanez is not listed in those ads- so what’s my point?
My point is that DiMarzio had an early foothold in the Japanese market- and that you can’t tell these Japanese companies apart, even with a scorecard. All of them are some blend of manufacturer and trading company. All of them, for instance, have had parts or entire instruments supplied by the Matsumoto factory. All of them have had pickups supplied by DiMarzio. It is a fact that DiMarzio has long supplied pickups to Ibanez. I doubt it can be easily ascertained how long this has been a fact.

---

CONCLUSION

A preponderance of evidence does not indicate that applicant lied,
or that trademark RN 1169205 / SN 73150505 was obtained fraudulently.

• Even Stevie Wonder can tell the difference between a white Gibson bobbin and a cream DiMarzio bobbin. (Ahem. Just checking to see if anyone is still awake.)
• DiMarzio pickups clearly preceded both Might Mite and Duncan.
• Further, since Zacuto & Duncan would have seen DiMarzio pickups sold at Wayne Charvel’s shop, it is reasonable to infer they copied the cream color from DiMarzio.
• No credible evidence supports the notion Bill Lawrence built or sold exposed-coil humbuckers in 1965, or prior to the LSR-100.
• Mid-70s Ibanez guitars were blatant copies, including copies of custom guitars.
• The Ibanez 1973 catalog may even show a knockoff (or original?) laminate-topped DMSD.

---

REALITY CHECK

If it could be proved that DiMarzio lied about the existence of exposed-coil cream-colored humbucking pickups in 1974, wouldn’t Duncan have employed that strategy during DiMarzio v Duncan in 1982- when the events in question were in recent memory?

---

PLAYTIME

Man, this fact-checking is tedious, exhausting work.
I think I’ll relax the old brain with some MUFs (Made Up Facts).

• By the time Larry DiMarzio’s pickups were being distributed world-wide, Seymour Duncan was still winding on bobbins pulled from Leo Fender’s dumpster.

Now let’s flip to the other side.

Madlib version:

• SD agreed to stop (publicly) selling double-cream pickups after LDM’s NYC Cosa Nostra buddies left a bloody [noun] in his bed.

Literary version:

• Bill Lawrence is the true Dauphin of Cream.

OK, that’s enough whacky for me. I’m done.

- rb

[rjb]

Timeline Part 2

On to Timeline Part 2.

MORE ABOUT BILL & LARRY

Note: Busy readers may want to skip this section. There’s no significant evidence here.
I got kinda carried away with the biographical research. Maybe skip to “THE WIZARD’S APPRENTICES”.

Bill Lawrence Website

In 1970 while Bill was living in New York City, the time was right to introduce replacement pickups. By 1972, Gibson hired him as their designer. In 1975, Don Redmon and Bill Lawrence started Lawrence Sound Research, Inc ( LSR) in Nashville, Tennessee and in 1978, Bill bought Redmon's shares and became the sole stockholder of LSR.

Note the wording here. In 1970, the time was right to introduce replacement pickups. Although BL may have been first to sell replacement pickups,* it doesn’t appear that he started with a high-volume operation:


* It is generally acknowledged that DiMarzio was the first to mass produce replacement pickups.

More history from Bill:
Bill Lawrence Website

In the mid-'60s, Bill, with two partners, started a company in Germany, Lawrence Electro Sounds, offering his designs "Lawrence True-Sound Pickups" to the German guitar manufacturers. Bill came to America in the late '60s, quickly becoming established in the thriving music scene of New York's Greenwich Village. ...he teamed up with fellow electric guitar wizard
Dan Armstrong on several projects, eventually taking over Dan's custom shop when Dan moved to England -- a true mecca for New York's most demanding players. It was there that Bill continued his work of rebuilding pickups to eliminate their internal flaws, flaws he'd discovered over many years as a player striving to improve his own guitars. He also developed new pickups for retrofitting into existing guitars, thus essentially inventing the aftermarket replacement guitar pickup. Among Bill's apprentices in those days were Dan Armstrong's teenaged son, Kent, and a local kid named Larry DiMarzio.

Bill's exceptional reputation in New York soon caught the attention of Gibson, who lured him away with a contract as a guitar and pickup designer,...

While maintaining his consulting relationship with Gibson, by the mid-'70s Bill had moved to the Nashville area at the suggestion of his friend Chet Atkins. There, he introduced the very successful FT-145 soundhole pickup for acoustic guitars, the first noisefree pickup in Fender single-coil size -- the single-blade L-220, his legendary L-90 twin-blade humbucker, and later the L-500 series.

Unofficial Bill Lawrence Timeline
Still no proof Bill Lawrence sold exposed-coil humbuckers before forming LSR.

Let’s ask Kent if he knows anything.
Kent Armstrong Pickups

In late 1970 I took over the repair department. A few months later Dan called to tell me that I had a new partner in the repair shop - Bill Lawrence. Bill taught me just about all he knew about pickups and rewinds."

Nothing here, either.

Here’s a blog with some more (somewhat questionable) history:
The Rise of the Retrofit Pickup | Planet Botch

Larry DiMarzio began developing his landmark Super Distortion high output humbucker in 1971. That wouldn’t have been long after he first learned the finer points of pickup winding under Bill Lawrence. According to David Lawrenson, author of 1982's The Complete Guitar Guide, Larry was given a huge box of pickups to take home and dismantle, play around with, etc. The time he spent tinkering with and assessing the properties of the various different units gave Larry a wealth of practical experience, and put him in a position to begin winding his own pickups with specific results in mind.

DiMarzio Inc. cite the Super Distortion as being introduced in 1972, but I’m not really sure what kind of introduction this would have been. Initially, Larry DiMarzio was selling only to friends, and this progressed to a mail order operation before any sort of major distribution system was set up. No timeframe is given for the progression, even in printed matter from three decades ago, and DiMarzio themselves provide virtually no published info on the company's early life. However, even as late as 1974, DiMarzio’s pickup production was evidently very limited, and if you actually try tracing any DiMarzio pickups made prior to ’74, there’s a distinct absence of any credible claims of ownership.

Just more support for the veracity of DM’s “First use in Commerce”: Feb 1974.

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.

---

THE WIZARD’S APPRENTICES

I forgot to mention above in the Dimarzio statement/Bill Lawrence post that Larry would have absolutely known of the existence of a cream exposed-coil humbucker before his use. HE APPRENTICED UNDER BILL LAWRENCE IN EARLY 1970's, shortly after Kent Armstrong did.

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.

According to Kent, there's no way Larry would not have known that Bill had done exposed coils, and cream for that matter.

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?

If it ain't documented, it didn't happen.

-rb

On to Timeline Part 3

[rjb]

Got someone looking into how to get the FTC involved, since the FTC doesn't seem to know…

Time out. This is getting too weird.

Dear readers, my apologies for this excruciatingly long post- so long that I broke it into three sections to accomodate the forum’s 14,000 character per post limit.
But sometimes you just have to fight whacky with whacky.

Just a guess- but I bet that the FTC, being pretty darn busy, just might give higher priority to cases of deadly products, credit scams, identity theft, medicare fraud, etc., etc. than to defending the “rights” of a few whiny guitar players’ to buy double-cream pickups.
https://www.ftc.gov/about-ftc/what-we-do
https://www.ftc.gov/about-ftc/what-w...ment-authority

Before running to the FTC claiming that DiM’s trademark was obtained fraudulently, I strongly suggest a thorough evaluation of the dates, the facts, and the strength of the evidence.

Readers, I implore you to peruse this document and draw your own conclusions.
It is a PDF file of all written communications between DiMarzio and the USPTO.
The affidavit in question is on pp 62-66, and the registered trademark on p 104.
http://www.wolfetone.com/trademark/CREAM.pdf

For convenience, I’ve OCR’d the affidavit into a Google Doc.
Here are some pertinent excerpts. Again, I urge you to read the original (and confirm I'm not cherry-picking or altering quotes).

... prior to the introduction of the cream-colored double bobbin configuration of the present application, no guitar pickups were identified by the cream-colored double bobbin configuration, nor were replacement pickups sold, nor original guitars sold with pickups exposing their bobbins.

To my knowledge, the pickup bobbins under the covers in the Les Paul guitars were always either black or a black-like navy blue, with the exception of a very short period in 1959, when some bobbins may have been white.

This short run of bobbins in the Les Paul guitar would appear to be involved with an accident of a shortage of pigment, since such bobbins only had that color for a short time and for a short time some of the white bobbins in double bobbin Les Paul pickups were even combined with black bobbins.

The cream color of the configuration of the present application is a distinctive cream color, as distinguished from an ordinary white or colorless bobbin, which would be referred to as ivory.

✻✻ ⇒ The cream color is specially compounded for the applicant. ⇐ ✻✻

Original pickups of the present application included a cream color laminate on the exposed surface.

Aside: It appears that the earliest Super Distortions had cream “bobbin toppers.”

---

OK, EVERYONE PUT ON YOUR DEERSTALKERS
Now let’s examine the timeline.

Huh. Imagine that. I think I might have just caught Larry in a blatant lie in one of his statements to the USPTO, date Sept 1, 1977.

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.

But none of that really matters- because the pertinent dates are:
First Use:Feb 1974
First Use in Commerce:Feb 1974
Note: In USPTO parlance, “First Use” means first time sold anywhere; “First Use in Commerce” means first time sold in interstate commerce.

Note: DiMarzio’s website lists 1972 as the Super Distortion’s year of introduction. This isn’t necessarily a contradiction, as 1974 could be the year that laminate-topped bobbins were replaced with solid-colored bobbins.
Super Distortion® | DiMarzio

So, let’s see… now that we’ve established the correct date, can we show that anyone else sold pickups with exposed-coil cream-colored bobbins before February 1974?

Let’s see what a disinterested party- like Wayne Charvel- has to say:
History - Wayne Guitars

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. I told him I could.

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.

According to Wayne Charvel, the timeline is:
DiMarzio ---------------> Mighty Mite --> Seymour Duncan

---

AD WRITER VS. BILL LAWRENCE

Now, let’s take a look at that ad for the Bill Lawrence L-100 pickup.
According to this site, the ad appeared in Guitar Player magazine, July 1979… or possibly 1977- both years are listed.
If someone can provide a more definite verifiable date, please share.
L-100 | Bill Lawrence Review
Note: Oops- It looks like the links to the ad pics have recently broken.

Anyhow, the ad copy says “Reissue of the 1965 Bill Lawrence two sound pickup- the first hot replacement pickup ever made.” Does the word “reissue” mean the original “two sound pickup” had exposed cream-colored bobbins? No, it does not.

re·is·sue
ˌrēˈiSH(y)o͞o/
verb

1. [*=2]make a new supply or different form of (a product, especially a book or record) available for sale.
   [*=2]"the book was reissued with a new epilogue"

noun.

1. [*=2]a new issue of a product.

Keep in mind, the statement we are examining is just ad copy- not sworn testimony.
No reasonable person expects ad copy to have more than a passing resemblance to truth.

For instance, compare BL’s ad to DM’s ad for the PAF™
p26 http://www.wolfetone.com/trademark/CREAM.pdf

DM’s ad indirectly touts their PAF™ as a reproduction of a Gibson P.A.F. “The PAF reproduces this sound, as well as the original appearance and hardware”. Yet, unlike an original Gibson, DM’s pickup has no covers, and cream-colored ABS bobbins with a higher level of fit and finish than the black or unpigmented butyrate Gibson bobbins that were never meant to be seen.

See the possible parallel to LSR’s ad copy: “Reissue of the 1965 two sound pickup"?

As another example, consider the Fender Wide Range Humbucker reissue- which differs from the original in both construction and sound.

A “reissue” may reproduce the cosmetic appearance of an original, while changing the interior design (e.g. Fender WRHB). A “reissue” may also reproduce the original electrical/mechanical design, while changing the cosmetic appearance (possibly, the L-100).

Enough with speculation about ad copy.
Let’s see what Bill Lawrence has to say about it:

Bill Lawrence Website
In 1965, Bill Lawrence, Nathan Grossman and Jzchak Wajcman started Lawrence Electrosounds in Munich Germany. The company made pickups for different guitar manufacturers. Bill had all these designs completed before '65. Lawrence Electrosounds NEVER made replacement pickups.Click here to view the pictures from the '65 German catalog which includes all the pickups Lawrence Electrosounds made.

Please click the catalog link and note that all of the True Sound (not Two Sound) models are single-coil pickups with metal guard rings. Having searched high and low, I have found no evidence that Lawrence Electrosound ever sold a humbucking pickup- much less one with exposed-coil bobbins.

LSR’s copywriter says “Reissue of the 1965 Bill Lawrence two sound pickup- the first hot replacement pickup ever made.”
Bill Lawrence says “Lawrence Electrosounds NEVER made replacement pickups.”

Bill Lawrence, while living in Germany in 1965, may have designed a “hot” humbucking pickup (and who knows what the copywriter meant by “hot”?). Perhaps he rewound an existing humbucker- maybe for his own use. But no verifiable evidence that he sold an exposed-coil humbucker- either in Germany or the U.S.A.- has been presented.

---

SUMMARY OF THIS SECTION

• [*=1]Wayne Charvel’s auto-biography states that he was selling DiMarzio pickups before either Mighty Mite or Seymour Duncan began producing & selling pickups.
  [*=1]Both Randy Zacuto and Seymour Duncan would have seen the DiMarzio pickups in Wayne Charvel’s shop- and would have opportunity to copy said pickups.
  [*=1]So far, no credible evidence indicates that Bill Lawrence sold uncovered humbuckers before DiMarzio.
  [*=1]BL stated that Lawrence Electrosound did not sell replacement pickups in 1965.
  [*=1]No Electrosound humbuckers have been found to exist (exposed coil or not).
  [*=1]Extrapolation of 1977(1979?) ad copy to conclude that an alleged “reissue” is a “reproduction” is not credible evidence.

On to Timeline Part 2.

[rjb]

Pantone Panacea?

IMO the best way out of this is to take a new SD pickup and get a Pantone color reading printout of the bobbin, as well as that of various other pickup bobbin suppliers.

I’ve been reading a lot about this topic lately.
It would be nice if you could do that, but that ain’t the way USPTO rules work.

Under current rules, you may reference a pantone color, but you must describe the color with a generic name.
TMEP 807.07(a)

The color claim must include the generic name of the color(s) claimed. It is usually not necessary to indicate shades of a color, but the examining attorney has the discretion to require that the applicant do so, if necessary to accurately describe the mark. The color claim may also include a reference to a commercial color identification system. The USPTO does not endorse or recommend any one commercial color identification system.

TMEP 1202.05(e)

If the applicant is claiming a shade of color, the shade must be described in ordinary language, for example, "maroon," "turquoise," "navy blue," "reddish orange." This is required even if the applicant also describes the color using a commercial coloring system.

In 1977, drawings were submitted in black & white, with lining/stippling to indicate the twelve officially-sanctioned colors.


USPTO Design Search Code Manual - General Guidelines (Bottom of page.)

Note: This is the reason for the convoluted language “lined for the color yellow which resembles the distinctive shade of cream.”

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Here’s more info and commentary from one of the fine texts in Wolfe’s “legal library”: McCarthy on Trademarks and Unfair Competition

Drawing Color Conventions
Every trademark registration, including one which comprises color as an essential element, must include a "clear drawing" of the mark.[FN1] Over the years, there have been changes in the method of creating a drawing for a registration of a mark that is limited to one or more colors. Prior to 1999, color was indicated in a black and white drawing by various symbolic "linings" or types of cross-hatchings that indicated certain colors. After a 1999 rule change, the previous symbolic linings for color were no longer to be used. After the 1999 changes, where color was a feature of the mark, the applicant was required to submit a written statement explaining where the color or colors appear and the nature of the colors. In 2003, the rules were changed again. The USPTO began accepting drawings in color on November 2, 2003. Starting on that date, the Office would no longer accept black and white drawings with a color claim, or drawings that show color by use of lining patterns.[FN2] After the 2003 rule change, color drawings had to be accompanied by the following: (1) a color claim naming the colors that are a feature of the mark; and (2) a separate statement describing where the color or colors appear on the mark. For example, a properly worded color claim would read as follows: "The color orange is claimed as a distinctive feature of the mark."[FN3] A properly worded description would read as follows: "The color orange appears in ." Author's Comment: The basic rule of thumb is that an applicant should not submit a drawing in color unless that color is an essential and distinguishing element of the mark.

Defining Shades Scientifically.
There do exist scientifically accurate methods for objectively defining color shades, whether or not the human eye can distinguish them. For example, the Pantone Matching System (PMS) is an ink matching technique widely used by graphic designers in which PMS numbers designate colors. The Pantone formula guide, a three-guide set consisting of 1,114 solid Pantone colors on coated, uncoated and matte stock, shows corresponding printing ink formulas for each color that can be used for color identification, matching, and quality control.[FN6] Some courts have used the Pantone system as a method of defining the limits of trademark protection of a color and giving the defendant an objective benchmark for complying with an injunction.[FN7] Under this approach, a court could define the scope of a trademark in a color as, for example, ten numbered shades on each side of Pantone color number 165. Litigants have used the Pantone system in settlement agreements to define the scope of rights in color marks.[FN8]

Author's Opinion:
The legal scope of a trademark in color is not defined in scientifically objective terms, like the claims of a utility patent. The test of infringement is not how many Pantone shades the defendant is distant from the senior user's mark, but whether the reasonably prudent customer would be likely to be confused as to source, sponsorship, affiliation or approval. Some courts blithely assume that because there are hundreds of scientifically identifiable shades, consumers can distinguish between them to identify hundreds of different commercial sources by fine variations in shade and that therefore colors will never be "depleted" and no one will be confused.[FN9] In the author's opinion, this is an unrealistic view which erroneously assumes that the first competitor in a market to establish a primary color such as "red" as its distinguishing color will stand by and not sue (and likely win) when a competitor enters with a different shade of red, the junior user arguing in defense that its "yellowish red" is not confusingly similar to the senior user's "bluish red." Anyone who has gone shopping in a paint store and been unable to distinguish between fine variations of shades will appreciate the attitude of a judge or juror asked to find that "yellowish red" does not infringe "bluish red." To complicate matters further, scientific studies have revealed that men perceive colors differently than women, creating a significant gender divide in color recognition.[FN10] If the decision maker thinks that the ordinary purchaser or user will see the color as a source indicator, and see them as close enough as to be likely to confuse source or affiliation, then infringement will be found, even though the color shades are not identical.

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The main issue seems to be DiM's trademark wording concerning the color 'cream' - 'that shade of yellow commonly known as cream'. (sic) This seems very unnecessarily broad, as everybody sees colors in different ways. One person's 'cream' is another's 'sand' is another's 'taupe'.

It is easy to assume that DiM used intentionally vague wording.

But if you wade through this copy of the USTPO correspondence, you’ll see that DMZ’s lawyer did figurative back flips trying to get the USTPO to agree to a clear description that mentioned the color cream.
http://www.wolfetone.com/trademark/CREAM.pdf

See p67, where the examiner suggests that the “color aspect of the description” be eliminated because USTPO drawing specifications did not have lining for cream.

See p69, an attempt to submit a description in something close to standard English.

See p81, DiM’s lawyer’s final attempt, accompanied by five bobbins and a copy of a page from Webster’s dictionary defining cream as a pale shade of yellow.

See p85, the hand-written examiner’s amendment, written by a USPTO Attorney, which became the final trademark wording.

1977 rules did not recognize pantone colors.
1977 rules “weren’t built” for colors outside USPTO’s 12-color palette.

Now, we all know what color DiM's 'cream' is. It's the color of a brand new Super Distortion (SD) pickup bobbin.

That is exactly right. See p. 82
Five samples of the bobbins are submitted herewith as specimens of the color actually appearing in the mark, so as to be illustrative of the shade of cream in which the mark actually appears.

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SIDEBAR

After the Louboutin vs YSL circus, lawyers had a field day quarreling trademark “non-specificity” often forced by PTO rules.

Louboutin had specifically wanted a trademark for “China Red” lacquered soles on high-heeled shoes. But USPTO doesn’t recognize “China Red” as “ordinary language”. So the trademark description just says “red”. Since color marks do not address sheen, it is not clear whether matte soles would be held as infringing. The application’s classification is “women’s footwear”, not “high heels”. So, depending on interpretation, even red-soled gum boots might be held in infringement of the mark.

For Louboutin, this poses a dilemma. USPTO registers marks; it does not police or enforce them. That responsibility falls solely (pun not intended) on the trademark holder. Further, the rules say that failure to police the mark leads to its invalidation.

To prevent its invalidation, the trademark holder has the burden of policing his mark. But, as written, the mark has broader scope than the holder intended. So, does that mean that, in order to protect his intended limited mark, the holder must prosecute infringers of the broader registered mark?

To protect this





Do you have to police this?




There is a parallel here to the DiMarzio “double cream” trademark.
(Followup later, maybe.)

Gee, isn’t trademark law fun?
-rb

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PS-

IMHO, this might be a more prudent strategy than trying to invalidate DMZ's trademark:

• Acknowledge that DMZ's trademark is enforceable, and highly unlikely to be cancelled.
• Educate customers that the exposed bobbins on EC's and JP's guitars were unpigmented butyrate- not cream ABS.
• Pick one of the many shades of brown that better complement most wood tones than cream.
• Or how about "speed knob gold"? Goes with everything...
• Pre-emptively contact DMZ to assure they agree your color does not infringe their TM.
• Obtain bobbins in your custom color (BTW, how is that bobbin mold co-op deal going?)
• Be an innovator, not a copier.

[WolfeMacleod]

[/B]After the original application was rejected, amended, and rejected again, DiM re-submitted under Section 2(f) of the Lanham Act. As proof of acquired distinctiveness, DiM submitted the four affidavits shown on pp 54, 57, 59, and 62 of this pdf file http://www.wolfetone.”/trademark/CREAM.pdf , plus other supporting documents- such as statements of sales figures and advertising budget, a full-page magazine ad featuring Al DiMeola (p43) and pages from DiM’s 1978 catalog (p18-37) which list and depict superstar endorsers and highlight DiM’s worldwide sales distribution.

Per the persnickety rules of the day (p67), DiMarzio submitted a supplemental declaration (p79) containing the precise wording “I state that the mark as used on goods in commerce has become distinctive by reason of separate evidentiary showing of record” and The USPTO determined that the submissions were “adequate proofs of distinctiveness and secondary meaning”.

AND THAT, BOYS AND GIRLS, IS HOW CREAM BECAME A DISTINCTIVE COLOR.

I said I’ve been reading a lot about this stuff lately.
-rb

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.

I got your PM and skimmed through it. I'll read more when I have time. If it weren't for the "J" in RJB, I'd almost suspect that you were Ronald Bienstock himself.

[rjb]

You Keep Using That Word

I don't think it's the case with cream but if it was an unusual color like the orange Lamborghini uses I could see getting a trademark. Cream is not a distinctive color (or a color at all according to some art teachers).

In trademark law, the word "distinctive does not mean what you think it means.
In trademark law, the word “distinctive” has a specific legal meaning.
https://en.wikipedia.org/wiki/Trademark_distinctiveness

I bet you didn’t know there are five levels of distinctiveness!
The “spectrum of distinctiveness”, from “strongest” to weakest”, is:
Fanciful, Arbitrary, Suggestive, Descriptive, Generic.
This USPTO brochure briefly explains levels of distinctiveness in trademark context.
See the heading “Strong v. Weak Marks” on p.6 (PDF p.10/38)
http://www.uspto.gov/sites/default/files/BasicFacts.pdf

A mark consisting of a single color is considered to be a “descriptive” mark, and no color (not even Lamborghini orange) is “inherently distinctive”.
Descriptive marks are not usually registrable on the Principal Register.

But if you aren’t distinctive today, you can acquire distinctiveness through hard work, perseverance, and knowing the right people.
Strike that. I’m just being silly.

By USPTO rules, a descriptive mark can “acquire” distinctiveness through market exposure.
https://en.wikipedia.org/wiki/Trademark_distinctiveness

If the USPTO determines that a mark is “merely descriptive,” then it is not registrable or protectable on the Principal Register unless it acquires distinctiveness-- generally through extensive use in commerce over a five-year period or longer. Descriptive marks are considered “weak” until they have acquired distinctiveness.

Descriptive marks (including color marks) that have acquired distinctiveness are registrable on the Principal Register.

Another term you’ll see tossed around is “secondary meaning”. A mark is said to have secondary meaning if consumers have “come to recognize the mark as a source indicator”.

So, if you hear someone say “Descriptive marks must acquire distinctiveness through secondary meaning to be protectable”, that person is probably a trademark lawyer and should be strangled.

But wait, there’s more!
There are multiple ways of acquiring “acquired distinctiveness”!

One way is through the Five-Year rule.
https://mpep.uspto.gov/RDMS/TMEP/cur...0d1e11078.html

Section 2(f) of the Trademark Act, provides that "proof of substantially exclusive and continuous use" of a designation "as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made" may be accepted as prima facie evidence that the mark has acquired distinctiveness as used in commerce with the applicant’s goods or services.

But note the “may be accepted” part.

Section 2(f) of the Act and state that reliance on a claim of five years’ use to establish acquired distinctiveness "may" be acceptable in "appropriate cases." The USPTO may, at its option, require additional evidence of distinctiveness.

Another way is through submission of evidence.
https://mpep.uspto.gov/RDMS/TMEP/cur...0d1e11238.html

Under Trademark Rule 2.41(a)(3), an applicant may submit affidavits, declarations under 37 C.F.R. §2.20, depositions, or other appropriate evidence showing the duration, extent, and nature of the applicant’s use of a mark in commerce that may lawfully be regulated by the U.S. Congress, advertising expenditures in connection with such use, letters, or statements from the trade and/or public, or other appropriate evidence tending to show that the mark distinguishes the goods or services.

This is the route that DiMarzio took.
After the original application was rejected, amended, and rejected again, DiM re-submitted under Section 2(f) of the Lanham Act. As proof of acquired distinctiveness, DiM submitted the four affidavits shown on pp 54, 57, 59, and 62 of this pdf file http://www.wolfetone.”/trademark/CREAM.pdf , plus other supporting documents- such as statements of sales figures and advertising budget, a full-page magazine ad featuring Al DiMeola (p43) and pages from DiM’s 1978 catalog (p18-37) which list and depict superstar endorsers and highlight DiM’s worldwide sales distribution.

Per the persnickety rules of the day (p67), DiMarzio submitted a supplemental declaration (p79) containing the precise wording “I state that the mark as used on goods in commerce has become distinctive by reason of separate evidentiary showing of record” and The USPTO determined that the submissions were “adequate proofs of distinctiveness and secondary meaning”.

AND THAT, BOYS AND GIRLS, IS HOW CREAM BECAME A DISTINCTIVE COLOR.

I said I’ve been reading a lot about this stuff lately.
-rb

[rjb]

Reader's Digest Guide to Color Trademark Decisions

Deere & Co. v. Farmhand, Inc. [So. Dist of Iowa, June 30, 1982]

• Deere sued Farmhand for selling front end loaders painted “the exact same shade of green as John Deere” tractors. (Deere did not hold a mark on “John Deere green”, but held that it had acquired secondary meaning as the predominant color on its entire line of equipment.)
• Court concluded “that the doctrine of aesthetic functionality should apply to the dispute” and “that protection of John Deere green... would hinder Farmhand in competition.”
• Farmhand was allowed to sell “John Deere green” loaders because farmers like to have accessories color coordinated with their John Deere green tractors
• However, the holding as to aesthetic functionality was actually not necessary to the result- as the court, criticizing John Deere’s survey evidence, concluded that it was “unwilling to find that plaintiff has established a secondary meaning for the color John Deere green.”
• Court held Deere had not established secondary meaning for “John Deere green”.
• Farmhand got to sell JD green loaders & escape payment of damages.
• No John Deere trademarks were “cancelled”, “revoked”, “invalidated”, or “rescinded.”

Owens-Corning Fiberglass Corporation (OCF) [Fed Ckt, Oct 8, 1985]

• OCF appealed from the USPTO’s Appeal Board's decision affirming the denial of the color “pink” as a trademark for fibrous glass residential insulation.
• U.S. Court of Appeals for the Federal Circuit reversed the Board’s decision.
• Appellant Owens-Corning was granted trademark for pink insulation.

Brunswick Corp. v. British Seagull Ltd. [Fed. Cir. 1994]

• During opposition (while Brunswick’s pending mark was published in the Trademark Official Gazette), British Seagull blocked Brunswick from obtaining a mark for the color “black” for outboard motors.
• The process took only five years.
• The color black was held to be de jure functional and unprotectable because black outboard motors are compatible with many boats' color schemes, and black makes the motors look smaller.
• Brunswick was decided on its facts. Federal Circuit did not hold that color is always functional.
• Brunswick’s mark was not “cancelled” or “rescinded”. The mark was never registered.

Editor’s Note: As they say in fashion, “Black goes with everything- and makes your booty look smaller.”
“DiMarzio cream” sometimes doesn't look so bad- and makes your brain look smaller.


Qualitex v. Jacobson Products [Supreme Court, March 28, 1995]

• Ninth Circuit had held that color per se is not registrable as a trademark.
• SCOTUS reversed the decision and held that "The Lanham Act permits registration of a trademark that consists, purely and simply, of a color."
• SCOTUS expressly held that "the doctrine of functionality does not create an absolute bar to the use of color alone as a mark."
• Plaintiff/TM holder Qualitex prevailed; single-color mark protected.

Louboutin v. Yves Saint Laurent [2nd Circuit, 2011]

• District court had held that a single color of wearing apparel is inherently aesthetically functional and can never serve a trademark role in the fashion industry.
• The Second Circuit rejected the lower court's statement.
• Court found that Louboutin’s signature red sole contrasting with the shoe upper had achieved secondary meaning, but was not infringed by YSL’s monochromatic red shoes.
• While Louboutin’s registration was not limited to a contrasting red sole of footwear, the court “exercised its power under the Lanham Act to rectify the register by limiting the mark and its registration to a red sole that contrasted with the color of the shoe upper”.
• Note: In other words, the judge re-wrote the trademark so both parties could continue selling their respective shoes.
• The court said it would not address whether the contrasting red sole mark was aesthetically functional.
• YSL got to continue selling monochromatic red shoes.
• Louboutin retained trademark in modified form.
• Circuit Court declined to apply test of aesthetic functionality to the case.

Maker’s Mark Distillery, Inc. v. Diageo North America, Inc. [6th Ckt, May 9, 2012]

• Suit concerned Jose Cuervo’s imitation of Maker Mark’s red dripping wax covering the cap and neck of its bourbon bottles.
• Cuervo held that the mark is aesthetically functional because, although sealing a bottle with wax is no longer an efficient, functional packaging technique, it is still aesthetically attractive.
• Sixth Circuit upheld the trial court’s order enjoining Cuervo from using the mark.
• Circuit rebuffed Cuervo’s aesthetic functionality claim on the grounds “There is more than one way to seal a bottle with wax to make it look appealing,...and red wax is not the only pleasing color of wax... nor does it put competitors at a significant non-reputation related disadvantage to be prevented from using red dripping wax.”
• Plaintiff/TM holder Maker’s Mark prevailed; color mark protected

Editors Note: There is more than one shape of bobbin that looks appealing.
Cream is not the only pleasing color on a gold top.

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BRAIN TEASER:

Name one color trademark that has been rescinded from the Primary Register.
(Hint: The only one I’ve found has not been mentioned on this forum.)

[salvarsan]

Just a heads up that I’ll soon be flooding this thread with some long, pedantic posts.

That's a competitive field around here.