Joe Driskill, Jr.

Trademark Trial and Appeal Board

Jan 23, 2002

No. 75580063 (T.T.A.B. Jan. 23, 2002)

1/23/02

Hearing: Paper No. 13
October 10, 2001 Bottorff

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Joe Driskill, Jr.
________

Serial No. 75/580,063
_______

Thomas F. Harkins, Jr. of Whitaker, Chalk, Swindle &
Sawyer, L.L.P. for Joe Driskill, Jr.

William Breckenfield, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
_______

Before Wendel, Bottorff and Drost, Administrative Trademark
Judges.

Opinion by Bottorff, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the product configuration mark depicted below

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/580,063
2
for goods identified in the application as “musical
instruments, namely guitars.”1
The Trademark Examining Attorney has issued final
refusals of registration on two grounds. First, he has
refused registration under Trademark Act Section 2(d), 15
U.S.C. §1052(d), on the ground that applicant’s mark is
confusingly similar to the mark depicted below,

previously registered2 for goods identified as “musical
instruments, namely guitars and basses, and parts

1 Serial No. 75/580,063, filed October 30, 1998. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a), with October 1997 being alleged as the date of
first use anywhere and the date of first use in commerce. The
following “description of mark” statement appears in the record:
“The mark consists of the design of a body shape of guitars and
basses as illustrated in solid lines in the drawing. The dotted
lines are for illustrative purposes only and form no part of the
claimed mark.” (October 24, 2000 Request for Reconsideration,
Exhibit O.)

2 Registration No. 1,509,200, issued October 18, 1988.
Affidavits under Sections 8 and 15 accepted and acknowledged.
The registration includes a claim of acquired distinctiveness
under Trademark Act Section 2(f), and the following “description
of mark” statement: “The mark consists of the body shape of
guitars and basses in all three dimensions as illustrated in
solid lines.”
Ser. No. 75/580,063
3
therefor.” Second, he has refused registration on the
ground that the matter applicant seeks to register fails to
function as a mark because it consists merely of the non-
distinctive configuration of applicant’s goods, see
Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052
and 1127, which has not acquired distinctiveness as a mark
and thus is not registrable under Trademark Act Section
2(f), 15 U.S.C. §1052(f).
Applicant has appealed both of the Trademark Examining
Attorney’s final refusals. The appeal has been fully
briefed, and an oral hearing was held at which applicant,
appearing pro se, and the Trademark Examining Attorney
presented arguments. After careful consideration of all of
the evidence and arguments, we affirm both refusals.
We turn first to the non-distinctiveness refusal.
Initially, and as a matter of law, we find that applicant’s
guitar configuration, like any product configuration, is
not inherently distinctive and that it thus is
unregistrable on the Principal Register absent a showing of
acquired distinctiveness. See Wal-Mart Stores, Inc. v.
Samara Brothers, Inc., 529 U.S. 205 (2000) [54 USPQ2d
1065]; In re Ennco Display Systems, Inc., 56 USPQ2d 1279,
1282-83 (TTAB 2000). Applicant’s counsel’s arguments to
the contrary are not persuasive. Thus, the issue to be
Ser. No. 75/580,063
4
determined is whether the product configuration applicant
seeks to register has acquired distinctiveness and thus is
registrable on the Principal Register pursuant to Section
2(f).

To establish acquired distinctiveness,
applicant must show that the primary
significance of the product configuration in
the minds of consumers is not the product but
the producer. Acquired distinctiveness may be
shown by direct and/or circumstantial evidence.
Direct evidence includes actual testimony,
declarations or surveys of consumers as to
their state of mind. Circumstantial evidence,
on the other hand, is evidence from which
consumer association might be inferred, such as
years of use, extensive amount of sales and
advertising, and any similar evidence showing
wide exposure of the mark to consumers.

Id., 56 USPQ2d at 1283.
Applicant bears the burden of establishing, prima
facie, that the matter it seeks to register has acquired
distinctiveness as a mark. Yamaha Int’l Corp. v. Hoshino
Gakki Co. Ltd., 840 F.2d 1572, 1576, 6 USPQ2d 1001, 1004
(Fed. Cir. 1988). That burden is a relatively high one in
cases involving product configurations, see In re Ennco
Display Systems, Inc., supra, 56 USPQ2d at 1284, and we
find that applicant has failed to carry the burden in this
case.
Ser. No. 75/580,063
5
Looking first at the circumstantial evidence
pertaining to acquired distinctiveness, we note that
applicant has marketed guitars having the configuration
applicant claims is his trademark for less than five years.
Thus, the provision in Section 2(f) that “[t]he Director
may accept as prima facie evidence that the mark has become
distinctive, as used on or in connection with applicant’s
goods in commerce, proof of substantially exclusive and
continuous use thereof as a mark by the applicant in
commerce for the five years before the date on which the
claim of distinctiveness is made” is not applicable here.
Additionally, we note that applicant’s guitars all bear the
mark DRISKILL prominently on their headstocks.
There is no evidence in the record as to the extent of
applicant’s sales of goods under the alleged mark, either
in terms of dollars or units. There likewise is no
evidence as to the amounts applicant has expended in
advertising and promoting his goods under the alleged mark.
Moreover, for the reasons discussed below, we are not
persuaded that applicant’s advertising and promotional
materials and activities, as they have been described in
applicant’s request for reconsideration and the exhibits
thereto, have resulted in consumer recognition of the
configuration of applicant’s guitar body, per se, as a
Ser. No. 75/580,063
6
source-indicating trademark. See, e.g., In re Kwik Lok
Corp., 217 USPQ 1245 (TTAB 1983); TMEP §1212.06(b).
Applicant, in support of his acquired distinctiveness
claim, relies on the photograph of his guitar which
appears, directly beneath the wording “Driskill Guitars,”
on the Internet home page of the popular singer Shania
Twain. (Applicant’s Request for Reconsideration, Exhibit
D.) Even assuming, as applicant contends in his request
for reconsideration, that millions of Shania Twain fans see
this advertisement for applicant’s guitars when they visit
her web page, we see nothing in the advertisement itself
which would support a finding that consumers would view the
configuration of the body of applicant’s guitar as
applicant’s trademark. Rather, the photograph of the
guitar would likely be perceived merely as that, i.e., a
photograph of applicant’s goods. The same goes for the
photographs of applicant’s guitars which appear in the
other exhibits to the request for reconsideration, i.e., in
the 2000-2001 Guitar World Buyer’s Guide (Exhibit F), the
December 2000 Guitar World product review (Exhibit G), the
August 2000 article in Fort Worth magazine (Exhibit I), and
Ser. No. 75/580,063
7
the August 9, 1999 article from The Dallas Morning News
(Exhibit K).3
In this regard, the present case is distinguishable on
its facts from Yamaha International Corp. v. Hoshino Gakki
Co. Ltd., supra, in which the applicant therein was
attempting to prove that the shape of the peg head of its
guitar, per se, had acquired distinctiveness. The record
in that case included evidence (from the testimony of
experts and from treatises on guitars) sufficient to prove
that guitarists were accustomed to looking to the shape of
a guitar’s peg head, per se, as a source-indicating
“signature.” Based on such evidence of the “folkways” of
guitarists, the Board found that the applicant’s
advertisements which included photographs of the peg head
served, “albeit modestly,” as probative evidence of

3 This article from The Dallas Morning News was not about
applicant or his guitars, but rather was based on an interview
with a local businessman on the subject of retirement planning.
In a photograph accompanying the article, depicting the
businessman (who is one of applicant’s guitar customers) in his
office, one of applicant’s guitars is hanging on the office wall.
In his request for reconsideration, applicant asserts as follows:
“The exciting news for me is the numerous amounts of telephone
calls that I received advising that the caller had immediately
recognized the guitar shape hanging on the wall as a Driskill. I
found this to be particularly satisfying, as there was no mention
of the guitar in the news article.” Given the hearsay nature of
this assertion, and the absence in any event of details as to the
number of such callers and the nature of their relationship to
applicant, this article and applicant’s assertions with respect
thereto are entitled to very little probative value as evidence
on the issue of acquired distinctiveness.

Ser. No. 75/580,063
8
acquired distinctiveness. 231 USPQ at 934. In contrast,
no evidence is of record in this case from which we could
conclude that guitarists typically or generally look to the
shape of a guitar body, per se, as a source-indicator. In
view thereof, we accord little probative value to the fact
that applicant’s advertising and promotional materials
include photographs of applicant’s guitars. These
photographs are likely to be perceived by purchasers merely
as informational depictions of the ornamental and/or
functional features of applicant’s guitars.
Applicant also relies on the fact that his
advertisement on Shania Twain’s website serves as a link to
applicant’s own website, which features more photographs
of, and information about, applicant’s guitars. Similarly,
applicant relies on the fact that persons using various web
search engines who enter “Driskill” or “Driskill Guitars”
are able to link to applicant’s website. However, even
assuming the truth of applicant’s assertion that he has had
40,000 hits on his website, we find, based on the printouts
from the actual website which applicant has made of record,
that there is nothing in the content of applicant’s website
which would lead customers to recognize the shape of
applicant’s guitar body, per se, as applicant’s trademark.
Ser. No. 75/580,063
9
Specifically, the mere photographs of applicant’s
guitars depicted on the website do not suffice as evidence
of acquired distinctiveness, for the reasons discussed
above. Further, nothing in the text appearing on the
website informs or even suggests to purchasers that the
shape of applicant’s guitar body, per se, is intended to
function as a trademark, and there is no basis in the
record for inferring that purchasers viewing the website
would perceive or assume such trademark significance on
their own. There is no text in applicant’s website
advertisements (nor in any of the articles, product reviews
or other materials applicant relies on) which stresses, or
even mentions, the trademark significance of the guitar
body shape. In this regard, this case is readily
distinguishable from In re Ovation Instruments, Inc., 201
USPQ 116 (TTAB 1978), upon which applicant relies.4 See
also In re Ennco Display Systems Inc., supra, 56 USPQ2d at
1285, and cases cited therein.

4 We acknowledge that the Board deemed the applicant in Yamaha
International Corp. v. Hoshino Gakki Co. Ltd., supra, to have
established the acquired distinctiveness of its guitar peg head
shape despite the absence of “look for” advertising of the type
found in Ovation. Again, however, that result was premised on
the existence in the record of evidence which established that
guitarists already were accustomed to look to the shape of the
peg head as a source-indicator, as well as evidence of the
applicant’s substantial sales and advertising expenditures.
Equivalent evidence is lacking in this case.

Ser. No. 75/580,063
10
Indeed, the only mention of the shape of the guitar
body in the text of applicant’s website (or in any of the
printed materials applicant has made of record) is a
reference to the functional and ornamental features and
advantages of the guitar body’s shape: “The body shape is
not only killer looking but also causes the guitar to be
perfectly balanced. Sit it on your lap, take your hands
off and it stays right there! This balance also makes it
very comfortable to play while standing for long periods of
time.” (See applicant’s specimen brochures, and the
printout from applicant’s website at Exhibit D to the
request for reconsideration.) In this context, that single
reference to the guitar body shape as being “killer
looking” would be perceived by purchasers merely as a
laudatory reference to a feature of the guitar itself,
i.e., the ornamental or aesthetic desirability of the
design. These explicit references by applicant to the
functional and ornamental advantages of the guitar body’s
shape do not support a finding that purchasers would view
the shape, per se, as a source-indicator; rather, they
weigh against such a finding.5 See, e.g., In re Ennco

5 In his first office action, the Trademark Examining Attorney
refused registration on the ground that applicant’s configuration
mark is de jure functional. That refusal was subsequently
withdrawn, and the functionality of applicant’s configuration is
not at issue here.
Ser. No. 75/580,063
11
Display Systems, Inc., supra, 56 USPQ2d at 1285; Thomas &
Betts Corp. v. Panduit Corp., 65 F.3d 654, 662, 36 USPQ2d
1065, 1070-71 (7th Cir. 1995).
Applicant also asserts, in his request for
reconsideration, that T-shirts imprinted with the Driskill
name and the guitar body shape design are “now available,”
and that his business stationery “has been revised” to
include depictions of the guitar body shape. (See Exhibit
J to applicant’s request for reconsideration.) However,
this evidence is entitled to little probative value on the
issue of acquired distinctiveness, inasmuch as applicant’s
distribution of these items appears to be of relatively
recent origin, and because we cannot determine from the
record the scope and effect of such distribution.
Applicant contends that the T-shirts “are being sent to
guitarists all over the world” and that he has “received
numerous comments from customers on satisfaction with the
new [business] forms.” In our view, these statements fail
to establish that the T-shirts and stationery have had any
appreciable effect on purchasers’ perception and
recognition of the guitar body shape as a source-indicating
trademark.
Applicant’s remaining proffered circumstantial
evidence likewise fails to persuade us that applicant’s
Ser. No. 75/580,063
12
guitar body shape has acquired distinctiveness.
Applicant’s listing in the 5th Edition of the Blue Book of
Electric Guitars (Exhibit H to request for reconsideration)
includes neither a depiction nor a discussion of the shape
of applicant’s guitar body, and it thus is of no probative
value on the question of acquired distinctiveness. The
fact that both Shania Twain’s lead guitarist and Billy
Gibbons of the band ZZ Top have test-played and been
satisfied with applicant’s guitars (Request for
Reconsideration at 8) is not probative evidence of the
acquired distinctiveness of the guitar body shape, per se.
The pleadings and other papers from applicant’s Texas state
court civil action against a third-party competitor do not
establish that the guitar body shape has acquired
distinctiveness. In re Ennco Display Systems, Inc., supra,
56 USPQ2d at 1286; In re The Original Red Plate Co., 223
USPQ 836, 839 (TTAB 1984). Finally, the incident recounted
in the Fort Worth magazine article, about a theft of one of
applicant’s guitars and its recovery from a pawn shop, is
not probative on the issue of acquired distinctiveness, and
it is hearsay in any event.6

6 The article states: “Joe’s excited today because one of his
guitars, stolen some time ago from a collector by a thief who
took only the Driskill from the group, has been spotted at an
area pawn shop.” Applicant argues in his brief (at 12) that this
incident is evidence of acquired distinctiveness because “(a) the
Ser. No. 75/580,063
13
We look finally at applicant’s direct evidence of
acquired distinctiveness. This evidence consists of
identical form statements which have been signed, according
to applicant, by “professional and individual guitar
players, national guitar parts businesses and suppliers,
entertainers, and other professionals, as well as non-music
individuals.” (Request for Reconsideration at 5.) The
first form statement includes a line drawing of applicant’s
guitar body shape as depicted in the application drawing,
and it reads as follows:

I recognize this unique shape as a Driskill
Guitar. This body shape is very unique and is
instantly recognizable as a Driskill guitar.
It is very distinctive and nothing else looks
like it. It is a very original design and it
is very novel and striking. This shape, being
so unique, does NOT look like a Paul Reed Smith7
or any other existing guitar. When I see it, I
think of Driskill Guitars.

This statement, when signed by persons identified as music
store personnel, includes the following additional

thief recognized the Driskill in making the steal, and (b) the
pawn shop owner recognized the Driskill to make the save.”
However, we see no basis for concluding that it was the
configuration of applicant’s guitar, per se, that enabled either
the thief or the pawn shop owner to recognize the guitar as a
“Driskill.”

7 The “Paul Reed Smith” is the guitar cited by the Trademark
Examining Attorney as a Section 2(d) bar to registration of
applicant’s configuration. See supra at page 2.

Ser. No. 75/580,063
14
language: “I am also aware that a large number of the
customers here are aware of this body shape and recognize
it as a Driskill Guitar body shape.” The second form
statement submitted by applicant also includes a line
drawing of the guitar body shape, and reads as follows: “I
recognize this shape as a Driskill Guitar. When I see it,
I think of Driskill Guitars.”
We find that these statements do not suffice to prove
that applicant’s guitar body shape, per se, has acquired
distinctiveness as a source-indicating trademark. The
probative value of the statements is limited by the fact
that they are unsworn. See, e.g., In re Flex-O-Glass,
Inc., 194 USPQ 203 (TTAB 1977); Aromatique, Inc. v. Gold
Seal, Inc., 28 F.3d 863, 31 USPQ2d 1481 (8th Cir. 1994).
The circumstances under which the signatures were solicited
and under which the statements were signed are not apparent
from the record, further limiting the statements’ probative
value. The statements themselves are largely conclusory in
nature, and to the extent that they may be read to assert
that applicant’s guitar body shape is inherently
distinctive (e.g., “unique,” “instantly recognizable,”
“distinctive,” “original,” “novel and striking”), they are
unpersuasive as a matter of law under Wal-Mart Stores, Inc.
v. Samara Bros., Inc., supra.
Ser. No. 75/580,063
15
Moreover, in view of the absence of evidence as to the
extent of applicant’s sales and advertising, the absence of
evidence showing that applicant has promoted the guitar
body shape, per se, as a trademark, and the absence of
evidence showing that the relevant purchasers generally
would look to guitar body shapes, per se, as source-
indicators, the underlying factual basis for the conclusory
opinions set forth in the statements is not apparent, and
the probative value of the statements is lessened
accordingly. Unlike the situation in Ovation and Yamaha,
supra, where the customer and dealer affidavits and
declarations were corroborated by, and indeed explained by,
plentiful circumstantial evidence of acquired
distinctiveness, no such corroborative circumstantial
evidence exists in this case.
Thus, we have considered the statements submitted by
applicant, but find that they, like applicant’s various
items of circumstantial evidence, are of limited probative
value on the issue of acquired distinctiveness.
After careful consideration of all of the evidence of
record, we find that applicant has failed to make out a
prima facie case that his guitar body shape, per se, has
acquired distinctiveness as a trademark. Therefore, we
affirm the Trademark Examining Attorney’s refusal to
Ser. No. 75/580,063
16
register on the ground of non-distinctiveness. See
Trademark Act Sections 1, 2, and 45, and Section 2(f).
We turn next to the Trademark Examining Attorney’s
Section 2(d) refusal based on the prior registration of the
Paul Reed Smith guitar configuration mark. Our likelihood
of confusion determination under Section 2(d) is based on
an analysis of all of the probative facts in evidence that
are relevant to the likelihood of confusion factors set
forth in In re E.I. du Pont de Nemours and Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In considering the
evidence of record on these factors, we keep in mind that
“[t]he fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We find that applicant’s and registrant’s goods are
legally identical, i.e., guitars. In view of this legal
identity of the goods, and in view of the absence of any
restrictions in the identifications of goods in applicant’s
application and registrant’s registration, we also find
that the trade channels in which the goods move and the
classes of customers to whom the goods are marketed are
legally identical. See Canadian Imperial Bank of Commerce
Ser. No. 75/580,063
17
v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987); In re Elbaum, 211 USPQ 639 (TTAB 1981).
These du Pont factors weigh in favor of a finding of
likelihood of confusion.
Applicant argues that both his guitars and
registrant’s guitars are very expensive, costing several
thousands of dollars, and that purchasers of these guitars
accordingly constitute a “niche market” of careful,
knowledgeable and sophisticated purchasers. However,
inasmuch as applicant’s goods are identified in the
application merely as “guitars,” we must presume,
regardless of the nature of applicant’s actual goods, that
the goods encompass guitars of all types and in all price
ranges, including relatively non-expensive guitars. See
Canadian Imperial Bank of Commerce v. Wells Fargo Bank,
N.A., supra; In re Opus One Inc., 60 USPQ2d 1812, 1817
(TTAB 2001); In re Bercut-Vandervoort & Co., 229 USPQ 763
(TTAB 1986). We also must presume that potential
purchasers are not necessarily particularly knowledgeable
or sophisticated about guitars or about the trademarks
under which they are marketed, nor are they necessarily
particularly careful in making their purchasing decisions.
In any event, “[t]he fact that purchasers are sophisticated
or knowledgeable in a particular field does not necessarily
Ser. No. 75/580,063
18
mean that they are immune from source confusion when
similar marks are used in connection with related goods
and/or services. In re Decombe, 9 USPQ2d 1812 (TTAB 1998).
Thus, we find that this du Pont factor, i.e., “the
conditions under which and buyers to whom sales are made,
i.e., ‘impulse’ vs. careful sophisticated purchasing,” at
best is neutral in this case, and that it does not weigh in
applicant’s favor.
The next du Pont factor to consider is “the number and
nature of similar marks in use on similar goods.”
Applicant has submitted printouts of four third-party
registrations covering guitar configurations,8 but this
evidence is of little probative value. Third-party
registrations are not evidence that the registered marks
are in use or that purchasers are aware of them. See Olde
Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
1542, 1545 (Fed. Cir. 1992); American Hospital Supply Corp.
v. Air Products and Chemicals, Inc., 194 USPQ 340, 343
(TTAB 1977). Moreover, two of the registrations are on the
Supplemental Register, and another has been cancelled under
Trademark Act Section 7; these registrations are not
evidence that the configurations depicted therein are

8 Registration Nos. 2,007,277, 2,215,791, 2,374,386 and
2,100,486.
Ser. No. 75/580,063
19
functioning or perceived as trademarks. See McCormick &
Co. v. Summers, 354 F.2d 668, 148 USPQ 272 (CCPA 1966); In
re Medical Disposables Co., 25 USPQ2d 1801 (TTAB 1992);
Sunnen Products Co. v. Sunex International Inc., 1 USPQ2d
1744 (TTAB 1987); and TBMP §703.02(a). Finally, all of the
guitar configurations depicted in the third-party
registrations applicant has submitted are visually quite
dissimilar to applicant’s and registrant’s guitar
configurations. For all of these reasons, we find that the
third-party registrations are not probative evidence of
“similar marks in use on similar goods” for purposes of our
likelihood of confusion analysis, and that this du Pont
factor does not aid applicant in this case.9
Applicant contends that there have been no instances
of actual confusion between his guitar configuration mark
and registrant’s guitar configuration mark. However,
assuming that is the case10, the applicable test is
likelihood of confusion, not actual confusion. See

9 The Guitar World articles made of record by applicant in
support of his Section 2(f) claim include photographs of various
third-party guitars. However, there is no basis in the record
for concluding that the guitar configurations depicted in those
photographs function as or are perceived as trademarks. The
photographs therefore are not probative evidence of “similar
marks in use on similar goods.”

10 We do not know whether registrant, who is not a party to this
ex parte proceeding, is aware of any actual confusion.
Ser. No. 75/580,063
20
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992); Block Drug Co. v. Den-Mat Inc., 17 USPQ2d
1315, 1318 (TTAB 1989); and Guardian Products Co. Inc. v.
Scott Paper Co., 200 USPQ 738, 742 (TTAB 1978).
Furthermore, the purported absence of actual confusion is
legally insignificant here, because we have no basis for
finding that there has been any substantial opportunity for
actual confusion to have occurred. See Gillette Canada
Inc. v. Ranir Corp., supra. The seventh and eighth du Pont
factors accordingly are neutral in this case.
Applicant asserts that Paul Reed Smith, the owner of
the cited registration, has encouraged applicant to seek
registration of the guitar configuration and has informed
applicant that he has no objection to issuance of such
registration. Applicant argues that this constitutes
evidence that confusion is unlikely. However, applicant’s
assertion as to what registrant told him is hearsay. No
written consent agreement between applicant and registrant,
nor any other documentary evidence pertinent to the tenth
du Pont factor (“market interface”), has been made of
record, and that factor accordingly is neutral in this
case. See In re Opus One Inc., supra, 60 USPQ2d at 1822.
Finally, we turn to the first du Pont factor, which
requires us to determine whether applicant’s mark and
Ser. No. 75/580,063
21
opposer’s mark, when compared in their entireties in terms
of appearance, sound and connotation, are similar or
dissimilar in their overall commercial impressions.
Because the marks involved in this case are product
configurations which, by their nature, have no
pronounceable sound or meaningful connotation, our finding
under the first du Pont factor necessarily rests on a
visual comparison of the respective marks. Cf. In re
Burndy Corporation, 300 F.2d 938, 133 USPQ 196 (CCPA 1962);
Daimler-Benz Aktiengesellschaft v. Chrysler Corporation,
169 USPQ 686 (TTAB 1971).
In making that comparison in this case, as in any
case, the following general principles apply. The test is
not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks
are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of
the goods offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather an a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well-settled that one feature of a mark
Ser. No. 75/580,063
22
may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985). Finally, where, as in the present case,
the marks would appear on virtually identical goods, the
degree of similarity between the marks which is necessary
to support a finding of likely confusion declines. Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ 1698 (Fed. Cir. 1992).
The Trademark Examining Attorney contends that
applicant’s and registrant’s respective guitar
configuration marks are similar in terms of their
appearance and overall commercial impression, in that both
guitar bodies have rounded bottom curves and two curved
horns at the top. Given the identical nature of the goods,
the Trademark Examining Attorney argues, these similarities
between the marks are sufficient to cause a likelihood of
confusion.
For his part, applicant argues that there are
significant visual differences between the two guitar
configurations which outweigh the similarities cited by the
Trademark Examining Attorney and which negate any confusing
similarity between the marks. Specifically, applicant
Ser. No. 75/580,063
23
argues in his brief that: (a) the left horn of his guitar
is much longer and more pronounced than the left horn of
registrant’s guitar; (b) the right, smaller horn of
applicant’s guitar turns up and then flares out, whereas
the right horn of registrant’s guitar merely turns up; (c)
applicant’s guitar features a much greater angle between
the horns where the neck attaches to the guitar body; (d)
applicant’s guitar is physically bigger than registrant’s
guitar, except at the waist; (e) the waist of applicant’s
guitar is more pinched and narrow than the waist of
registrant’s guitar; (f) applicant’s guitar body is
asymmetrical, whereas registrant’s guitar body is
symmetrical; and (g) due to its asymmetrical body, the
bottom curve of applicant’s guitar is angular and
aggressive, rather than the balanced bottom curve of
registrant’s guitar.
Applicant has submitted twelve identical form
statements, unsworn, from persons identified as
professional musicians and/or employees of guitar
retailers. The statements include side-by-side frontal
photographs of the two guitars, and the following text:
“The Driskill Diablo guitar does NOT look similar to a Paul
Reed Smith guitar. The major differences between the
unique Driskill guitar and the PRS guitar being...” There
Ser. No. 75/580,063
24
then follows the same enumeration of purported differences
between the two guitars as is set forth in applicant’s
brief and recounted in the preceding paragraph of this
opinion, supra.
Applicant also has submitted (as part of Exhibit C to
his request for reconsideration) a copy of a “To Whom It
May Concern” e-mail message (unsworn) from Tony Orifici,
one of the persons who signed the above-referenced form
statement. In pertinent part, Mr. Orifici asserts that: he
is, and has been, a full-time professional musician for the
past thirty years; his instrument is the guitar, and his
specialty is Concert/Session work; that his “main guitars
are a custom made ‘Driskill’ and a Paul Reed Smith;” and
that over the years he has owned and played many guitars,
including “Fender Strats, Teles, Gibson Les Paul and Guild
SG’s to name a few.” He states, “So I know guitars and I
know what I like and need for my signature sound.” He
further states:

I wish to clarify that my Driskill Guitar is
a stand alone hybrid model and is not a “copy”
of a Paul Reed Smith. They are two completely
different instruments. As stated, I own one of
each.
Cosmetically, the head stock, cutaways,
fingerboard inlays and body shape of my
Driskill guitar are totally different from my
Paul Reed Smith. One only has to look at the
two guitars side by side to see this.
Ser. No. 75/580,063
25
Controls: My Driskill guitar’s controls were
built to my requirements. The volume and Tone
knobs are lower on the body then my PRS, and I
have a 5 way selector switch, ala stratocaster,
rather than the 5 way rotary knob on my PRS.
Pick-ups: My PRS model is a Custom 24 with a 10
top and stock PRS pick-ups. My Driskill guitar
is equipped with “Seymour Duncan Jeff Beck
model humbuckers.” The guitars sound
completely different from one another. If I
wanted a guitar that had the same sound as my
PRS, I would have bought another PRS!
To say that my Driskill guitar is a “clone”
in any way of my PRS guitar is completely
without merit. They are two excellent
instruments and perform exactly as I expect
them to. Flawlessly. I have owned my PRS for
5 years now, and my Driskill for a little more
than a year. I have no need of any more
guitars.
My PRS is not from a Custom Shop, but the
Driskill was built to my specifications from
scratch. I couldn’t be happier with the
guitar. And I say again... it is not a copy or
clone of my Paul Reed Smith. To say it is
compares apples and oranges in my opinion.

With respect to applicant’s list of visual points of
distinction between the two product configurations, as set
forth in applicant’s brief and in the statements from
musicians and retailers submitted by applicant, the
Trademark Examining Attorney argues that only one of those
distinctions is relevant to our comparison of the marks,
i.e., the fact that the right horn on applicant’s guitar
turns up and then flares out, while the right horn on
registrant’s guitar merely turns up. He argues that the
other points of distinction identified by applicant, while
Ser. No. 75/580,063
26
perhaps apparent from a comparison of the actual guitars or
photographs thereof, are not apparent from the drawings of
the marks in the application and registration, and that
they therefore are irrelevant to our likelihood of
confusion determination.
In his reply brief, applicant responds to this
argument by contending that because the marks involved here
are the actual goods as they exist in three dimensions, our
comparison of the marks for likelihood of confusion
purposes should not necessarily derive solely from the
manner in which the goods are illustrated in the drawings,
but should also take into account the goods as they
actually are configured. He also argues that if any of the
specific points of distinction between the two guitar
shapes he relies upon, i.e., differences in the curvatures
of the horns, the sizes of the waists, and the symmetry or
asymmetry of the bodies, are not apparent from the
drawings, it is only because the drawing in the cited
registration is insufficiently clear and definite in its
depiction of these specific details of the configuration of
registrant’s guitar; applicant contends that he should not
be penalized for, nor should his arguments limited by, the
asserted deficiencies in registrant’s drawing.
Ser. No. 75/580,063
27
However, we need not and do not reach the issue of
whether, as the Trademark Examining Attorney argues, our
comparison of the marks must be limited to the marks as
depicted in the application and registration drawings, or
whether instead, as applicant argues, we may and should
consider the photographic depictions of the guitars as
well.11 This is because our decision in this case would be
the same either way.
That is, even considering the photographs of the
guitars and not just the application and registration
drawings, and taking into account the specific differences
between the two guitar configurations that applicant argues
are apparent from the photographs, we nonetheless find that
those differences are too subtle and minor to adequately
distinguish the two configurations except when they are
compared side-by-side. As noted above, the test for
likelihood of confusion is not whether the marks can be

11 We are aware of no Board precedent on this issue, i.e., whether
our comparison of two product configuration marks under the first
du Pont factor must be limited to consideration of the marks as
they are depicted in the application and registration drawings.
Indeed, we are aware of no precedential Board decisions (either
ex parte or inter partes) in which the asserted ground for
refusal of registration (or ground for opposition to or
cancellation of registration) was the one involved in this case,
i.e., likelihood of confusion as between two product
configuration marks.

Ser. No. 75/580,063
28
distinguished in a side-by-side comparison.12 Rather, the
focus is on the recollection of the average purchaser, who
normally retains a general rather an a specific impression
of trademarks. See Sealed Air Corp. v. Scott Paper Co.,
supra.
For this reason, we accord very little probative value
to the form statements submitted by applicant; the side-by-
side comparison upon which the persons signing the
statements base their enumeration of the differences
between the two guitar configurations is not helpful to our
likelihood of confusion determination in this case.
Additionally, even if these statements were of more
probative value than they are, we still would be obliged to
reach our own considered decision as to the visual
similarity or dissimilarity of the two configurations; the
opinions of the persons who signed the statements are not
binding on us, nor ought we to accept them uncritically.
See Quaker Oats Co. v. St. Joe Processing Co., Inc., 109
USPQ 390, 391 (CCPA 1956); Youngstown Sheet and Tube
Company v. Armco Steel Corporation, 170 USPQ 162, 165 (TTAB
1971).

12 There is no evidence in the record to support applicant’s
argument, at footnote 12 of his brief, that guitar purchasers
normally engage in side-by-side comparisons of competing models.
Ser. No. 75/580,063
29
We also find that the above-excerpted letter from Tony
Orifici is of little probative value on the issue of
whether the two guitar body configurations are confusingly
similar. First, in his detailed comparison of the two
guitars, the alleged difference in “body shape” is only
mentioned in passing, and then only in conjunction with
other “cosmetic” differences (“the head stock, cutaways,
fingerboard inlays”) which are irrelevant to our analysis.
Moreover, like the signers of the form statements, Mr.
Orifici unhelpfully bases his observations on a side-by-
side comparison of the two guitars: “One only has to look
at the two guitars side by side to see this.” It also is
apparent that Mr. Orifici’s ability to distinguish between
the two guitars is based, in large part, on the functional
and technical differences between the guitars, i.e., on the
differences in their respective controls and pick-ups, and
most importantly on the differences in the sound of the two
guitars: “I know what I like and need for my signature
sound... The guitars sound completely different from one
another. If I wanted a guitar that had the same sound as
my PRS, I would have bought another PRS!” Mr. Orifici’s
contention that applicant’s guitar is not a “clone” or
“copy” of the Paul Reed Smith guitar likewise is beside the
point in this case; the issue is whether the configurations
Ser. No. 75/580,063
30
are confusingly similar, not whether applicant’s guitar is
a “clone” or “copy” of the Paul Reed Smith guitar.
We have carefully considered the evidence of record,
and we conclude that the two configuration marks at issue
here are similar, rather than dissimilar, under the first
du Pont factor. We find that the overall, general
similarities in the two guitar configurations are more
significant and likely to be recalled by purchasers than
are the specific, subtle differences between the two
configurations. For example, we find that purchasers are
more likely to perceive and recall that both guitars
feature a prominent and elongated left horn; they are less
likely to perceive and recall the subtle differences in the
shapes and lengths of the respective left horns.13
Moreover, as noted above, because applicant’s goods, trade
channels and classes of customers are legally identical to
those of registrant’s, the degree of similarity between the
marks which is required to support a finding of likelihood
of confusion is lessened. Century 21 Real Estate Corp. v.
Century Life of America, supra. We find that the marks are

13 And, as discussed above in connection with the acquired
distinciveness refusal, no evidence is of record in this case
from which we could conclude that guitarists typically or
generally look to the shape of a guitar body, per se, as a
source-indicator, or that they are accustomed to distinguishing
as to source on the basis of such minor and subtle differences
between the shapes of guitars as those applicant relies on.
Ser. No. 75/580,063
31
sufficiently similar that confusion is likely to result
from their use in connection with these identical goods,
and that the first du Pont factor accordingly weighs
against applicant in this case.
Having carefully considered all of the evidence of
record pertaining to the du Pont likelihood of confusion
factors, we conclude that a likelihood of confusion exists,
and that registration of applicant’s mark accordingly is
barred by Section 2(d). Any doubts we might otherwise have
as to the existence of a likelihood of confusion must be
resolved against applicant and in favor of the prior
registrant. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984).
In summary, we have carefully considered all of the
evidence of record and all of applicant’s arguments in
opposition to the Trademark Examining Attorney’s refusals
to register (including any arguments not explicitly
discussed in this opinion), and we are persuaded that the
refusals are proper.
Decision: The Section 2(d) refusal, and the non-
distinctiveness refusal under Sections 1, 2, 45, and 2(f),
are affirmed.