Dimarzio has REVIVED the blade trademark application

[WolfeMacleod]

WARNING

Last year, it was rejected for functionality.

They have revived it as on November 7th.

Trademark Status & Document Retrieval

[rjb]

Man, I haven't got the time to slog through all those attachments.
But, going by what I've seen, this new application is pretty strong evidence that Bienstock has gone completely meshugenah.
His argument that DM has "acquired distinctiveness" for the color cream is basically that, in the 1970s, DiM pioneered the mass marketing of replacement pickups- and that some rock stars still use them.

The original examiner's search has already found that DM provides pickups in a multitude of colors, that DM's "default" color for many models is black, that other manufacturers sell pickups with blade pole pieces, and that other manufacturers sell pickups with cream covers. If the color cream did have acquired distinctiveness in 1979, then DM has lost that distinctiveness by dilution of its own brand.

Beanie might have a valid argument if DiM sold only pickups with cream covers, or if he could show ads with text and/or images that linked the color to the brand (e.g. "for that creamy tone, blah, blah, blah" or maybe a pic of a Super Distortion stuck in a dish of creme brûlée....)

Instead, he submits a pile of photos, most of which weaken his argument. Some show that, depending on the guitar's finish, it can be difficult to distinguish "DiMarzio cream" from aged white. In some, the lighting contrast between the guitar and the pickups make the DiMs appear to be bright white. Then the ads that show DMs in a variety of colors. And the GP cover with an old Gretsch Chet Atkins model sporting a pair of H-covered Filtertrons... WTF?

IMHO, I wouldn't lose any sleep over this.

-rb

ps- On the monitor I'm using, the "distinctive shade of cream" in the drawing has a yucky green undertone. Can that be right?

[WolfeMacleod]

Man, I haven't got the time to slog through all those attachments.
But, going by what I've seen, this new application is pretty strong evidence that Bienstock has gone completely meshugenah.
His argument that DM has "acquired distinctiveness" for the color cream is basically that, in the 1970s, DiM pioneered the mass marketing of replacement pickups- and that some rock stars still use them.

The original examiner's search has already found that DM provides pickups in a multitude of colors, that DM's "default" color for many models is black, that other manufacturers sell pickups with blade pole pieces, and that other manufacturers sell pickups with cream covers. If the color cream did have acquired distinctiveness in 1979, then DM has lost that distinctiveness by dilution of its own brand.

Beanie might have a valid argument if DiM sold only pickups with cream covers, or if he could show ads with text and/or images that linked the color to the brand (e.g. "for that creamy tone, blah, blah, blah" or maybe a pic of a Super Distortion stuck in a dish of creme brûlée....)

Instead, he submits a pile of photos, most of which weaken his argument. Some show that, depending on the guitar's finish, it can be difficult to distinguish "DiMarzio cream" from aged white. In some, the lighting contrast between the guitar and the pickups make the DiMs appear to be bright white. Then the ads that show DMs in a variety of colors. And the GP cover with an old Gretsch Chet Atkins model sporting a pair of H-covered Filtertrons... WTF?

IMHO, I wouldn't lose any sleep over this.

-rb

ps- On the monitor I'm using, the "distinctive shade of cream" in the drawing has a yucky green undertone. Can that be right?

Are you talking about the long list of attachments in the Office Action Outgoing dated 2-8-17?
Those are the examining attorney's arguments AGAINST registration.


My own website is used as attachment 1 and 2 =)



USPTO TSDR Case Viewer

[rjb]

Are you talking about the long list of attachments in the Office Action Outgoing dated 2-8-17?
Those are the examining attorney's arguments AGAINST registration.

No, I'm referring to the long list of attachments in "Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action" dated Nov. 06 2017.
The attachments include the Petition itself, plus "Exhibit A" and "Exhibit B".
I'm on a borrowed computer, and don't know how to provide direct links.
I didn't bother to peruse any documents beyond the petition, as it is a total joke.
IMHO.

EDIT:
Under the Petition's "Exhibit A" I see several ads with Ace Frehley and his SD-equipped guitars, Nita Strauss and Steve Vai with guitars equipped with pickups that appear to be white, Lesley West in a photo so blurry that you can't tell what the pickup looks like.... I haven't yet seen a dual-blade pickup, and I don't have the time or patience to scan all 144 documents.

-rb

[ken]

The mark consists of a three-dimensional configuration of an electronic sound pickup for guitars featuring a double coil design in a distinctive shade of cream. The broken lines depicting the two blades indicate placement of the mark on the goods and are not part of the mark.

Is DiM trying to claim a trademark on the look of a blade equipped pickup? Or are they saying that they seek trademark protection for only doublecream blade equipped pickups?

This almost reads to me as an attempt to not only redo their 'doublecream' trademark but also try to claim trademark on doublebladed humbucking pickups at the same time by trademarking both features at once... the doublecream coil scheme they already have and blade polepieces too on top. Then, if they claimed trademark on twocoil pickups with one blade per coil, what would stop them from claiming a trademark on singlecoil pickups with blade polepieces? Or black doublebladed humbuckers?

I wonder what Gibson (Charlie Christian pickups) and Barden among others thinks about this?

ken

[rjb]

Man, we've been through this a bazillion times!

The requested trademark is for the "distinctive shade of cream" of the dual blade bobbins.
The tortured, contorted language in the application is the description suggested by the USPTO examiner.

The the blades cannot be part of the trademark because they are a functional part of the design. That is why the blades are drawn in broken lines, per USPTO rules.
You can trademark high heeled shoes with contrasting China red soles. You cannot trademark shoes with soles.

Sidebar:
Some may recall that DM originally wanted the trademark for their Super Distortion pickups to include the hex head screw polepieces and lozenge-shaped bobbins.
The USPTO disallowed the hex heads and bobbin shape because they are functional- thereby granting DM a trademark on any cream-colored humbucker with any type of round polepiece and any shape of bobbin.
And thereby starting the 100 Year Pickup War.

Back to the current petition:
Bienstock has the burden of proof to show that cream-colored dual blade humbuckers have a "secondary meaning".
He has to show that DiMarzio's cream-colored dual-blade humbuckers are so well-known and ubiquitous that a customer would be likely to assume that any cream-colored dual-blade humbucker offered for sale was made by DiMarzio.
His argument is that DM is a big company that has been around for a long time, makes nearly 200 models of pickups, spends a lot of money on advertising, and has endorsements by big-name rock stars.
He says that over 30,000 "cream" units have been sold, but doesn't mention how many "other color" units have also been sold.
He mentions a large advertising budget, but doesn't mention how much is spent on on linking the "distinctive shade of cream" to DiMarzio products, or to specifically promoting pickups that look like the submitted drawing.
He submits as "Exhibit A" a shitload of ads for DiMarzio pickups that look nothing like the submitted drawing.

IMHO, the man has lost it.
Everyone knows that all cream-colored dual-blade humbuckers are made by Bill Lawrence.
2464214-bill-lawrence-wilde-humbucking-pickups-l500r-l500l-2015-cream-chrome

-rb

[ken]

The requested trademark is for the "distinctive shade of cream" of the dual blade bobbins. The tortured, contorted language in the application is the description suggested by the USPTO examiner.
The blades cannot be part of the trademark because they are a functional part of the design. That is why the blades are drawn in broken lines, per USPTO rules.You can trademark high heeled shoes with contrasting China red soles. You cannot trademark shoes with soles.

You forget... you know this, I know this, everybody who makes pickups knows this by heart. Unfortunately, patent examiners don't normally make, buy or sell guitar pickups. If this was just about the 'distinctive shade of cream for pickup bobbins', DiM already has a patent on that. He doesn't need to bother with that. The question is why bother reopening a dead denied patent application that shows a BLADE pickup but not the originally won patent's drawing showing individual poles? If this goes up to another patent examiner who knows that blade poles are purely functional, then we have no problem and this new patent app dies again. If this goes to an examiner who thinks the blades are actually decorative, like cute chrome bumpers on a car, then we have a major problem.

This is costing a lot of money for attorneys. Follow the money - why is DiM bothering to reopen this at all and what would he get if he wins? He already has the patent for dual cream pickups so what's really in it for him? Is DiM trying to 'back door' a patent application for blade pickups by piggybacking it on the dual cream patent he already has?

Think about it

[rjb]

...and I don't have the time or patience to scan all 144 documents.

I just did that and I still think the Petition is a joke.
Most of the attached Exhibits have absolutely nothing to do with the pickup he's obviously trying to trademark (the X2N, introduced in 1979 2116), and only serve to weaken the case.
The fact that the X2N is available in double black and double white doesn't help.
The "sign on the line" dealer and customer affadavits are laughable.

Random Musing:
It might be "nice" for everyone involved if DM could trademark the overall look of the X2N, with the fat black anodized blade contrasting with the cream bobbins, and the rounded blade ends echoing the rounded bobbin ends.
But, since the blades are a functional element of the design, the USPTO will not allow that.
So, in order to get a trademark on the double cream bobbins, DM has to hope no one notices that customers have been buying Bill Lawrence L500s since forever.
I kinda doubt they're going to get away with it.

-rb

PS: Ken posted while I was writing this.

[rjb]

If this goes up to another patent examiner...

Trademark examiner.

...who knows that blade poles are purely functional, then we have no problem and this new patent app dies again. If this goes to an examiner who thinks the blades are actually decorative, like cute chrome bumpers on a car, then we have a major problem.

All the documents associated with the denied application go with the petition to reopen.
The original examiner knows that blade poles are functional, and attached links to "how a pickup works" sites.
The denial states that the poles are functional. That is why DM had to submit a revised drawing.

Think about it.

Read the documents.

This is costing a lot of money for attorneys. Follow the money - why is DiM bothering to reopen this at all and what would he get if he wins?

I have no good answer for that.
I really don't know if Larry DiMarzio was ever personally involved with the trademark applications filed on behalf of his company.*
Follow the money - whether DiM wins or loses, all the attorneys involved in the case will make a pile of it.

-rb

*I did notice that Larry personally took the photos for some of the ads. The guy needs to learn about color balance.

[rjb]

Editorial

[ken]

I don't have a dog in this fight, as I don't make bladed humbuckers.

Rjb, why don't you explain to us why this trademark reopening is important and what happens if DiM wins?

[rjb]

I don't have a dog in this fight, as I only build stuff for my own use.

I'm also not a lawyer.
But when the discussion here has turned to patents and trademarks, I got so tired of seeing the same bogus information and silly speculation repeated year after year that I decided to hunker down and study how the system works.
Would you enjoy being in a forum where circuit theory is passionately argued by people who don't know a resistor from a capacitor? Well, quite often, that's what this feels like. Sigh.

Ken, why don't you read the trademark application and pertinent USPTO rules and explain to us why DiM's petition has a Snowball's Chance in Hell?
Hint: In USPTO parlance, define the terms "inherently distinct", "acquired distinctiveness", and "secondary meaning".
Then tell us if DiM has provided adequate and convincing proof of secondary meaning for this product.

And what if the unimaginable happens and the USPTO actually approves DiM's application?
Well, the trademark registration gets listed in the Official Gazette (published every Tuesday) and you have 30 days to challenge it before the trademark is granted.
Is anyone here monitoring the OG? Not me, but I betcha someone is.
Could he/she demonstrate lack of secondary meaning for DiM's product? You betcha. (Hint: See Bill Lawrence L500.)

I sincerely apologize for the obnoxious, arrogant, and/or condenscending tone.
I'm really just trying to offer some assurance that the Big Bad Larry isn't going to blow your house down.

-rb

[WolfeMacleod]

No, I'm referring to the long list of attachments in "Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action" dated Nov. 06 2017.
T......and I don't have the time or patience to scan all 144 documents.

-rb

Ahha, somehow I missed that document, thanks. I'll look over everything...

[WolfeMacleod]

You forget... you know this, I know this, everybody who makes pickups knows this by heart. Unfortunately, patent examiners don't normally make, buy or sell guitar pickups. If this was just about the 'distinctive shade of cream for pickup bobbins', DiM already has a patent on that. He doesn't need to bother with that. The question is why bother reopening a dead denied patent application that shows a BLADE pickup but not the originally won patent's drawing showing individual poles? If this goes up to another patent examiner who knows that blade poles are purely functional, then we have no problem and this new patent app dies again. If this goes to an examiner who thinks the blades are actually decorative, like cute chrome bumpers on a car, then we have a major problem.

This is costing a lot of money for attorneys. Follow the money - why is DiM bothering to reopen this at all and what would he get if he wins? He already has the patent for dual cream pickups so what's really in it for him? Is DiM trying to 'back door' a patent application for blade pickups by piggybacking it on the dual cream patent he already has?

Think about it

Can we please get the terminology right, here? It's a Trademark, not a patent.

If you're not aware of what the difference is, please learn it. The differences are HUGE.

How a Patents Differ from Copyrights and Trademarks - FindLaw

https://www.nolo.com/legal-encyclope...marks-faq.html

[ken]

I know the difference between patents and trademarks... I just spent some time straightening out a couple of my own trademarks I'm working on. I wanted to see if people actually were paying attention to the post, so I switched the terms. At least I got a nice rise out of the local grammar police anyway.

The devil is in the details here. Why is this application being renewed, and for a very specific set of pickups - double cream humbuckers with blade poles? Seems kind of silly to me, as double cream humbuckers would usually be wanted by vintage snobs and adding big ole blades to them would be antithetical... sort of pickle relish on chocolate ice cream IMO.

That being said, whats the point? Why is there a lot of money being spent on that project again? There must be some benefit seen by somebody to merit the effort involved for something that I have never even seen being sold myself.

I'm applying Occam's Razor here. If you pare away everything that doesn't fit, whatever remains no matter how weird must be the truth. This is what I see...

1) DiM owns the trademark on double cream humbuckers, even if this color scheme hasn't been used by him in some time. He does not need to trademark this again, so putting this in a trademark application gives him a legal leg to stand on. Since DiM already owns the trademark on double cream bobbins *as a color*, he doesn't need a new trademark to make double creams with blades, he can just make them. He could go after others making double creams because his color trademark would be infringed.

2) The trademark app we're arguing about was originally denied because its examiner found *blade poles* were purely functional not decorative.

3) Retrying this application (with certain changes made) could be an attempt to get an examiner that doesn't understand how pickups work to pass the blade poles as purely decorative, like the chrome side strips and bumpers on a 1950s car.

Sooo...

4) If this new attempt works, DiM would get the right to make double cream pickups with blades. What's to stop him from next trying to trademark zebra humbuckers with blades, then black ones?

One more thing... forums work to disseminate information. The information may or may not have anything to do with the reader's situation or interests. If you see something you personally dislike for some reason, don't comment on it. Somebody else may need the information even if you don't. In other words, sometimes it's not all about you.
Ken