A 2012 color trademark court desicion. Pay attention.

[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.

Backing up a bit; how would providing the customer with a slightly disassembled humbucker with several color bobbins, and then allowing the customer to place the creams bobbin beside each other go squarely against the trademark law? It seems to me that if you provide a variety of colored materials, and leave the color coordination to the customer, then you are not even as risk of provoking a lawsuit.

Suppose you buy a green hat and it comers with several colored patches, one happens to be yellow. Is that in violation of John Deere's trademark simply because the customer might choose to apply the yellow patch to the green hat by itself?

I'm often swapping pickups anyway, I wouldn't mind having the ability to change the color scheme without having to buy an entirely new pickup.

[rjb]

I'm not a lawyer, and even I can see that the case law is not in DiMarzio's favor. It's obviously a lack of collective will power that keeps the status quo what it is.

Yea, will power, as well as this:

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....

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.

[rjb]

looking back at the history of the humbucker, paf's existed in 3 colour combinations, double black, black and cream (zebra) and double cream. these were as we all know quite random as they were not intended to be exposed, but rather hidden under a cover.

How is aged white or unpigmented butyrate the same as new cream pigmented ABS?
PAF bobbins were never "cream".
http://www.guitarhq.com/paf.html

[John Kolbeck]

I'm not a lawyer, and even I can see that the case law is not in DiMarzio's favor. It's obviously a lack of collective will power that keeps the status quo what it is.

[big_teee]

IMO none of this means anything, if no one is going to do anything!

[rjb]

Mean boy pokes stick in the cage

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.

Speaking for myself, I could no more not "go all ADD" than you could not "go all OCD".
I don't have a horse in this race, but just happen to find this sh!t fairly interesting.
Nonetheless, I think that, for a casual observer, I have a firm enough grasp of the concept of "aesthetic functionality".

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

What I meant to say (but was too tired to look up) was:
If black plastic is softer and shows scratches more easily than white or cream plastic, those are issues of utilitarian functionality.

By "accepted" I mean this. Guitarists are very aesthetically-minded people. Guitars typically come with white, cream, or black binding. ... I have never been asked for any other color other than black, cream, or zebra, or white.

In other words, you are saying guitarists have no imagination and like to see what they've already seen.
(If they had any taste, some one would be making a fortune selling "speed knob gold" trim kits.)

Companies do trademark colors associated with their brand...

This website has a good article, they state...
"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."

Yes, but Cadbury and Tiffany still put their name or logo on their packaging.
The whacky thing about DiMarzio's color trademark is that it has always been an "insider's in-the-know secret handshake" trade dress.

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....

That makes it sound like they abandoned their trademark.

Something I find (mildly) interesting is that the more I look into it, the more it seems that DiMarzio pioneered not only the idea of making pickup bobbins to be seen, but the aesthetic of color-coordinating trim and binding to to match bobbins and plastic pickup covers.

In days of old, electric guitars came with binding in one of 3 styles: black, white, or some form of laminated black & white striping. (Sure, old maple-necked Vega banjos had "ivoroid" binding, and certain Martin dreadnaughts had "herring bone" binding, and so on- but now I'm going all ADD.) Around 1977-78 (I remember because it was around the time of the Ibanez LP lawsuit), the owner of my local music store showed me two black LPs- one used & one brand new. He was gushing over the look of the aged binding against the patina-ed black finish. I concurred it looked neat, as long as you spent your time gazing at the edge of your guitar neck....

Where was I? Oh yea, the point is that in the old days, you didn't buy a LP with cream binding; you bought a LP with white binding and waited for it to turn yellow.

I have searched Gruhn's Guide to Vintage Guitars, and have found no reference to a Les Paul with cream binding earlier than the 1978 Pro-Deluxe (a goldtop with two soapbar P-90s). The earliest with exposed coil HBs (and black pickup rings): Les Paul Standard, shipped in 1979.
https://books.google.com/books?id=M-...ing%22&f=false

As you've noted here, http://music-electronics-forum.com/t29076-2/#post256032 , DiMarzio began selling Super Distortion pickups in 1972, and used to sell matching cream trim kits, including binding, for Les Pauls. It appears they probably could have trademarked those trim kits- but did not.

So now, it seems that after years of guitar manufacturers copying a color scheme originated by DiMarzio, we have a bizarre and ironic situation: DiMarzio is suing pickup makers for violating a "secret" trademark that they have effectively abandoned, while said pickup makers are claiming aesthetic functionality because guitar players want pickups to match a trim color scheme that DiMarzio originated but never trademarked.
Or something like that.

Getting to the point, hey look! There goes a white squirrel! OK, I'm back.
Do you (not you, David, I mean the universal you) want to make pickups, or do you want to spend all your time and money fighting legal battles?
Referring to this info from DM's trademark https://trademarks.justia.com/731/50/n-a-73150505.html
I see this:

Image Trademark with Serial Number 73150505
Status: 800 - Registered And Renewed

Mark Drawing 2S15 - Illustration: Drawing or design without any word(s)/letter(s)/ number(s)

Description of Mark: The mark comprises the double design representation of an electronic sound pickup for guitars, which is disclaimed apart from the mark as shown.

Does that mean you could avoid infringing DM's trademark simply by putting some word(s)/letter(s)/number(s) on the front of the pickup? Like, say, your logo? Yes, I realize this might increase production costs by some trivial amount. But if you are proud of your product, why wouldn't you want it to be easily identified? Unless, of course, your actual intent is to infringe on DM's trademark....

Hm, back in the 70's I just wasn't hip to double creams being exclusively DiMarzio. What the heck did I know?

Me neither. I have a '70s P-Bass, bought at a swap meet because the price was right. I figured the brass nut and Badass II bridge might not be original (not to mention the toggle switch on the spray-painted aluminum scratch guard), but had no inkling the cream covers meant "hot-rod after-market pickup".

Yes I'm aware some people consider their guitars to be fashion accompaniments, hell I worked for a guy who definitely did.

In a Guitar Player interview with Rick Nelson, he claimed he never turned the control knobs on his checkerboard guitars to a position that would break up the visual pattern.

In any case I hope double cream ceases being a DiMarzio "service mark" or whatever, and goes back to Oreos where it belongs.

Hate to tell you this, but I'm pretty sure the "creme" in Oreos is lard and sugar.

-rb

[mr fab]

looking back at the history of the humbucker, paf's existed in 3 colour combinations, double black, black and cream (zebra) and double cream. these were as we all know quite random as they were not intended to be exposed, but rather hidden under a cover. dimarzio trademarked the double cream, but they potentially also could have copyrighted the other two combinations as well, even though they existed prior.

I wonder what dimarzio would say if Gibson released a double cream burstbucker ? Gibson would rightly have a valid argument that they were making double creams when larry was in diapers.

I do recall that around the same time that dimarzio flooded the market with their super distortion pickup, mighty mite, Lawrence, and many others also offered double cream. as for the mighty mite pickups, I recall reading somewhere that they were made for them by dimarzio at some stage.

[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.

[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]

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]

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.

[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 DiMarzioŽ 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.

[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.

[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]

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.