A 2012 color trademark court desicion. Pay attention.

[rjb]

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

In case you missed them, here are three "tracts" I posted over yonder.

Not as Easy as You Think http://music-electronics-forum.com/t42506/#post431635

Consolation Prize- A Smoking Cap Gun? http://music-electronics-forum.com/t42506/#post431637

Law is Not Science http://music-electronics-forum.com/t42506/#post431643

[rjb]

Flood Warning

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

Why?

• Not because I love writing.
  I hate writing. I even hate having written. (Apologies to Dorothy Parker)
• Not because I’m a know-it-all expert.
  I’m not. I’ve only been “studying” this topic for a few weeks.
• Not because I’m an agent of the “Prince of Darkness”.
  I have no horse in this race.
• Not to encourage fellow members to learn more about trademark law.
  (Although seeing the level of discussion in this thread approach that of the technical threads would be a noble pipe dream.)

Here’s what happened:

Sensing that some of the statements made in this and similar threads didn’t “ring true”, I decided to Google some information on the DiMarzio trademark. On the very first search page, I found a 104 page pdf file containing all the correspondence between DiMarzio and the USPTO- in a directory on Wofe’s website. I PM’d Wolfe to ask if he had meant the file to be private, and if it would be OK to share it with the MEF forum. He said OK, and encouraged me to read “the McCarthy” and other texts and articles he had collected in the same directory.

Well sir, I started in a-reading... and somewhere along the line, OCD took over my brain and wouldn’t let go... and when I “came to” a few weeks later, I found a legal pad full of notes, essays, fact-checks, counter-arguments, and such. I really have no use for it… but it seems a shame to throw it out. I figured somebody here might be able to do something with it, so I reckon I’ll post it.

That’s my story, and I’m sticking to it.

[John Kolbeck]

I've been talking to lawyers and law professors for 18 years.
Got someone looking in to how to get the FTC involved, since the FTC doesn't seem to know. The USPTO wouldn't let me speak with one of their interlocular attorneys for a definitive answer. But I'm pretty sure that a whole lotta consumer complaints with the FTC that reference that trademark ## and it's bullshit would get their attention.

As a guitarist, I'd be willing to send a complaint, however that is done, but I'm only out a set of pickups. I'd think every commercial winder should be doing this, as it potentially costs them thousands in sales.

[WolfeMacleod]

Are you in contact with lawyers?

I've been talking to lawyers and law professors for 18 years.
Got someone looking in to how to get the FTC involved, since the FTC doesn't seem to know. The USPTO wouldn't let me speak with one of their interlocular attorneys for a definitive answer. But I'm pretty sure that a whole lotta consumer complaints with the FTC that reference that trademark ## and it's bullshit would get their attention.

[John Kolbeck]

I'll bet that nobody here knew that Section 14 of the Lanham Trademark act allows the Federal Trade Commission to apply to the USPTO for trademark cancellation.

Are you in contact with lawyers?

[WolfeMacleod]

I'll bet that nobody here knew that Section 14 of the Lanham Trademark act allows the Federal Trade Commission to apply to the USPTO for trademark cancellation.

Booyah.

Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this chapter, and the prescribed fee shall not be required

Let's tale a look at those paragraphs, shall we?

(3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.

[Jim Shine]

Duncan sold them "on the sly" until recent years. Now you cannot get them from Seymour Duncan. Dimarzio cracked down and they are abiding. A fair number of the early Seth Lovers were almost exclusively double cream under the cover. No longer. Done.

[Possum]

Here ya go, WHICH of these is DeeMarzeeo cream?

And what about this Duncan from approx 1978....

[John Kolbeck]

What bothers me about DiMarzio's humbuckers is that they have a strange matte finish, and their "cream" is a darker shade that doesn't match the typical mounting rings or binding of Gibson and Epiphone guitars.

[Jim Shine]

I think the whole situation really brings about another fact. The problem is not aftermarket winders trying to undercut Dimarzio. Dimarzios are plentiful and cheap. Dimarzio is just not an appealing pickup even on a general level. There are enough people are willing to source out double cream pickups made by just about anyone but Dimarzio, that it is now a real problem they feel they must tackle in the courtroom.

[Justin Thomas]

Personally, I think The Gear Page's logo looks an awful lot like DM's Sun logo, so TGP should quit using their logo right now!
J/K. It just kinda hit me a little funny when I had both open at the same time, the little avatars pictures that show up at the left of the tab...

Justin

[WolfeMacleod]

When I am asked to make a humbucker, 95% of the time they ask for double cream. To be brutally honest, what motivated me to go from rewinding to experimenting with assembling pickups from aftermarket parts was a need for double creams for vintage Charvel restorations that originally had double cream Duncan's I could no longer get.

I suspect this small time winder getting sued is being made an example of. I support an attempt to challenge the TM.

Thank you, vintage restorations gives yet another possible working angle.

[Jim Shine]

I find it mind-boggling that 50% of the inquiries to a winder who makes Strat, Tele, and P90 style pickups, plus several flavors of screw/slug HBs (one of which ships by default with an aged cover) are for double-cream HBs.

When I am asked to make a humbucker, 95% of the time they ask for double cream. To be brutally honest, what motivated me to go from rewinding to experimenting with assembling pickups from aftermarket parts was a need for double creams for vintage Charvel restorations that originally had double cream Duncan's I could no longer get.

I suspect this small time winder getting sued is being made an example of. I support an attempt to challenge the TM.

[Steve A.]

Start on page 3 where it gets good.* Forum member "Quickdraw2" is an intellectual property attorney I've spoke with on several occasions about this.

OMG...* it's up to 5 pages now.* Argghh!* I did enjoy reading your posts starting at #57.

I remember us griping about this at AMPAGE 15+ years ago and I boycotted DiMarzio for many years because of it.* I guess that their owners and upper management are real assholes. But over the past few years I've liked some of their patented designs like the Virtual P90 and the 36th Anniversary PAF.

Not to mention some of the parts they sell like a full-sized 4PDT On-On-On toggle switch to allow us to do Series-Split-Parallel switching for a pair of humbuckers. $30 but if you really need it I believe that it is the only show in town. (I actually ordered such a switch for a 1,000,000 BTU forced air furnace used in an auto body shop for baking their paint jobs about 20 years ago. I doubt if any of the other HVAC service techs in the area even knew about the existence of On-On-On toggle switches and probably would have put in a regular 4PDT Center Off toggle switch.)

Steve Ahola

P.S. Here is a thread you started in November 2002 concerning the DiM double creme trademark:

http://archive.ampage.org/articles/4...umbuckers.html

P.P.S.* I remember buying 60 A2 humbuckers from you back in October 2007 for a great price (it was overstock from a bulk order of 1,000 magnets,* I believe.) I don't wind pickups but I swap out magnets all the time and it was like a killer price for a lifetime supply for me. Thanks again for offering them here at the forum.

Perhaps we could have a sticky thread in this forum like "FS: Builder overstock parts" since the items listed would be too specialized for the Flea Market forum here. I think it could be a big help to some of the winders here who buy large quantities to get decent prices.* Post a price for a minimum quantity and it could benefit all parties. PayPal and prepaid shipping labels make things easy these days. Any thoughts on having such a thread here?

And how about a sticky thread titled "Read this before posting in this forum" to refer most questions about non-boutique pickups to the Guitar Tech forum?* (I think it might be appropriate to discuss technology used in pickups from the big commercial companies here, strictly for the benefit of science.)

[WolfeMacleod]

4 pages of TGP posts in a single day? I think I'll pass...

Steve Ahola

Start on page 3 where it gets good. Forum member "Quickdraw2" is an intellectual property attorney I've spoke with on several occasions about this.