DImarzio tries a NEW trademark - Cream w/ blade poles

[WolfeMacleod]

Y'all might want to be aware of this. I just ran across it while looking for an update to the regular cream cancellation petition.

Yes, they're at it again. This time, trying to trademark cream with blade poles.

You should definitely look up the trademark at read the Docs that have been submitted and filed.

Shut up and do it.

[CheopisIV]

Oct 24, 2016... has this been approved? Whatever the status it'll offer some interesting results.

If it fails this could be used as ammo for the DC bobbin TM discussion assuming the color addition is the reason. If it passes, it'll somewhat cement the DC TM as unchangeable for the time being.

It looks like it's passed by the indication of 'Live'?

[LtKojak]

looks like it's passed by the indication of 'Live'?

No, that means that's still being considered for either approval or dismissal.

HTH,

[rjb]

Since this trademark does not affect me, I have no motivation to look up the docs that have been submitted and filed.
If the trademark did affect me, I would be preparing an opposition.
Strike that- my IP lawyer would be preparing an opposition.
How to Contest a Trademark Filing | Chron.com

BTW, why is DM applying for a TM on BL's L-500?

-rb

[Justin Thomas]

I'm not a maker, but, if I may opine... I see two dates on the form Wolfe posted - 1979, & 2016. I would hope that any TM attorney would deny this, because if you've genuinely been making something for nearly 40 years, I'd be like, "what the hell did you wait so long for?" Look, if you genuinely care about your trademark, you do it right out of the gate - you cover your ass BEFORE the competition heats up. When Coke or Pepsi update their logo, they TM it BEFORE bringing it to market, not waiting five years to do it...

Note to self: support the Little Guys or Seymour, cosmetic limitations be damned...

Justin

[rjb]

USPTO color trademark rules are weird.

You cannot register a mark consisting solely of color BEFORE bringing your product to market- because no color is inherently "distinctive".
A color mark can only be registered AFTER it has gained "secondary meaning"- through extensive market exposure.
Also, a color trademark can be deemed invalid if the color is "functional".

In trademark geek speak, the terms "distinctive", "secondary meaning" and "functional" all have legal definitions that no normal person would use in conversation.

-rb

[WolfeMacleod]

Since this trademark does not affect me, I have no motivation to look up the docs that have been submitted and filed.
If the trademark did affect me, I would be preparing an opposition.
Strike that- my IP lawyer would be preparing an opposition.
How to Contest a Trademark Filing | Chron.com

BTW, why is DM applying for a TM on BL's L-500?

-rb

Eventually, they'll do something that will affect you. When they do, I bet you'll want someone to make a stand with you. How will you feel when everyone says "pttht. doesn't affect me, so who cares?"

I'm not a maker, but, if I may opine... I see two dates on the form Wolfe posted - 1979, & 2016. I would hope that any TM attorney would deny this, because if you've genuinely been making something for nearly 40 years, I'd be like, "what the hell did you wait so long for?" Look, if you genuinely care about your trademark, you do it right out of the gate - you cover your ass BEFORE the competition heats up. When Coke or Pepsi update their logo, they TM it BEFORE bringing it to market, not waiting five years to do it...

Note to self: support the Little Guys or Seymour, cosmetic limitations be damned...

Justin

They are stating that 1979 was the year of their first use. Pretty sure that Lawrence did blade cream poles before that.
They have faced an initial refusal by the USPTO.
Has anyone bothered to read the Office Outgoign Action paper dated Feb 8th, where the PTO states that product designs/configurations are not distinctive?

Registration is refused because the applied-for mark consists of a nondistinctive product design or nondistinctive features of a product design that is not registrable on the Principal Register without sufficient proof of acquired distinctiveness. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210, 213-14, 54 USPQ2d 1065, 1068-69 (2000); In re Slokevage, 441 F.3d 957, 961, 78 USPQ2d 1395, 1398 (Fed. Cir. 2006); see TMEP §1202.02(b)(i).



A product design can never be inherently distinctive as a matter of law; consumers are aware that such designs are intended to render the goods more useful or appealing rather than identify their source. See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. at 212-13, 54 USPQ2d at 1068-69; In re Slokevage, 441 F.3d at 962, 78 USPQ2d at 1399. Thus, consumer predisposition to equate a product design with its source does not exist. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. at 213, 54 USPQ2d at 1069.



In this case, applicant's mark is the configuration of the goods, namely, an electronic sound pickup for guitars. As noted above, product design can never be inherently distinctive. Please see the attached evidence of electronic sound guitar pickups with a similar overall appearance as the proposed mark. These attached pickups feature applicant's double design, color, pole pieces, and coils.

[CheopisIV]

Yeah man, I read through the docs and had a chuckle, but the section on color has me scratching my head. Seems they're still willing to consider color as TM-able and they want it generalized rather than specific. That little bit makes me think they're not going to overturn the original 12 pole double cream TM they granted long time back.

They also indicate part of the issue was the drawing was done inaccurately which is an easy fix but I think LD is going to get stuck in proving any kind of distinctiveness. They have GFS rails, Duncan and Lawrence's in there already and no indication of date or cost of marketing for the specific design.

I'm afraid I also don't have a horse in this race being a Canadian and not under the thumb of LD, but it'd be nice to see this stuff swept away. In my mind it's akin to suppression of Freedom of Expression but the money driven entities who rule the world may disagree to that opinion. I'm starting to sound like a hippy!

[rjb]

Eventually, they'll do something that will affect you. When they do, I bet you'll want someone to make a stand with you. How will you feel when everyone says "pttht. doesn't affect me, so who cares?"

No, DM will never do anything that will affect me. In my life, nothing DM does is relevant.
But I didn't say "pttht, who cares". I said "get ready to file an opposition."

Having now sussed the situation a little more thoroughly, I would say "don't worry about it".
The examiner appears to be on the ball, and Bienstock appears to be senile.

But, in the spirit of cooperation, I'll gladly write an affidavit stating that I associate blade humbuckers with Bill Lawrence (or even Peavey) rather than with DiMarzio- if you'll help me renovate a brick rowhouse. How are you with plaster work? Not that wimpy drywall stuff. Real, honest-to-goodness plaster?

Has anyone bothered to read the Office Outgoign Action paper dated Feb 8th....

Nope, not 'till just now.
Ya know, not everyone is as familiar with the TESS (Trademark Electronic Search System) and TSDR (Trademark Search & Document Retrieval) as you.
I don't even know if this link to case number 87213400 is going to remain live.
Trademark Status & Document Retrieval

I'd say the doc you cite makes it apparent that the application is a mess.
DM submitted a 1970's style black & white drawing for a color claim, in a format that hasn't been accepted for eons.
The drawing depicts functional elements in solid lines rather than broken or dotted lines.
The examiner recognizes that bobbins and polepieces are functional - and that they have a limited number of possible shapes & configurations.
Therefore, the "look" of two lozenge-shaped bobbins with blade poles cannot be part of the trademark.
That just leaves the bobbin faces as a place to apply the cream "trademark".
But it can easily be shown that competitors have been making pickups with cream-colored bobbins for decades.

BTW, I didn't have the time or patience to view the 59 attachments to the doc.
The ones I randomly checked are pics of competitors' pickups. Are these images that the examiner Googled?
Is there, say, a pic of a cream Bill Lawrence L-500 in that collection?

-rb

EDIT:
I was a bit sleepy when I wrote the above last night. The examiner's position is succinctly stated in the last paragraph of your post.
I have no idea if this will help in your long-standing battle. Good luck.

In this case, applicant's mark is the configuration of the goods, namely, an electronic sound pickup for guitars. As noted above, product design can never be inherently distinctive. Please see the attached evidence of electronic sound guitar pickups with a similar overall appearance as the proposed mark. These attached pickups feature applicant's double design, color, pole pieces, and coils.

[big_teee]

I agree with RJB.
This will not effect me either.
This only effects small pickup making businesses like Wolfe.
Perhaps, Wolfe needs to form a small pickup biz activist group.
They could be the PTA, or AA of the pickup making world, and fight with D?
IMO this thread will turn into yet another one, where nothing gets done.
My 2 cents worth!
T

[rjb]

Answering my own question

BTW, I didn't have the time or patience to view the 59 attachments to the doc.
The ones I randomly checked are pics of competitors' pickups....
Is there, say, a pic of a cream Bill Lawrence L-500 in that collection?

See attachments 42 & 48.
USPTO TSDR Case Viewer

[rjb]

Useful Link

https://tmog.uspto.gov/#searchBy=Dim...w&subview=tile

[WolfeMacleod]

I agree with RJB.
This will not effect me either.
This only effects small pickup making businesses like Wolfe.
Perhaps, Wolfe needs to form a small pickup biz activist group.
They could be the PTA, or AA of the pickup making world, and fight with D?
IMO this thread will turn into yet another one, where nothing gets done.
My 2 cents worth!
T

Pretty sure I've been trying to do something like that for 18 years now. And a trademark like this would seriously hurt Becky Lawrence. Just got off the phone with her and Lindy Fralin.

https://tmog.uspto.gov/#searchBy=Dim...w&subview=tile

It appears to not be listed because it hasn't been published for opposition yet.

[rjb]

It appears to not be listed because it hasn't been published for opposition yet.

Right. It wouldn't be listed in the Gazette until it passed muster with the examiner. Which doesn't look likely to happen.
I just meant that its useful to have a link to the Gazette. (Better to know before things get that far, of course.)

[WolfeMacleod]

Right. It wouldn't be listed in the Gazette until it passed muster with the examiner. Which doesn't look likely to happen.
I just meant that its useful to have a link to the Gazette. (Better to know before things get that far, of course.)

Yea, I'll be keeping a close eye on it. If they fail to respond and abandon it liek they did the 2005 attempt at a chrome-plated bobbin, it should give additional ammo to the cancellation proceedings, since that'll be twice they've been shot down.