Oral Hearing: Mailed:
November 6, 2008 March 25, 2009
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Stuart Spector Designs, Ltd.
v.
Fender Musical Instruments Corporation
Opposition No. 91161403
to application Serial No. 76516127
filed on April 25, 2003
_____
U.S. Music Corporation
v.
Fender Musical Instruments Corporation
Opposition No. 911614051
to application Serial Nos. 76516126, 76516127, 76515928
filed on April 25, 2003
_____
Warmoth Guitar Products, Inc.
v.
Fender Musical Instruments Corporation
Opposition No. 91161406
to application Serial Nos. 76516126, 76516127, 76515928
filed on April 25, 2003
1 The November 23, 2005 order dismissing this proceeding was
vacated on December 12, 2005. The electronic case file has now
been updated to reflect this correction. Opposition Nos.
91162245, 91162246 and 91162923 were dismissed without prejudice
on September 9, 2005. Two other proceedings, Opposition Nos.
91161269 and 91162484, were dismissed with prejudice under
separate orders, December 12, 2005 and February 11, 2008,
respectively.
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition Nos. 91161403 et al.
2
_____
Indoor Storm, Ltd.
v.
Fender Musical Instruments Corporation
Opposition No. 91161411
to application Serial Nos. 76516126, 76516127, 76515928
filed on April 25, 2003
_____
Tradition Guitars, Inc.
v.
Fender Musical Instruments Corporation
Opposition No. 91161413
to application Serial Nos. 76516126, 76516127, 76515928
filed on April 25, 2003
_____
Raise Praise, Inc. d/b/a Tom Anderson Guitar Works
v.
Fender Musical Instruments Corporation
Opposition No. 91161420
to application Serial Nos. 76516126, 76515928
filed on April 25, 2003
_____
Schecter Guitar Research, Inc.
v.
Fender Musical Instruments Corporation
Opposition No. 91161422
to application Serial Nos. 76516126, 76516127, 76515928
filed on April 25, 2003
_____
JS Technologies, Inc.
v.
Fender Musical Instruments Corporation
Opposition No. 91161486
to application Serial Nos. 76516126, 76516127, 76515928
filed on April 25, 2003
Opposition Nos. 91161403 et al.
3
_____
W D Music Products, Inc.
v.
Fender Musical Instruments Corporation
Opposition No. 91161518
to application Serial Nos. 76516126, 76516127, 76515928
filed on April 25, 2003
_____
Sadowsky Guitars Ltd.
v.
Fender Musical Instruments Corporation
Opposition No. 91161519
to application Serial Nos. 76516126, 76516127, 76515928
filed on April 25, 2003
_____
The ESP Guitar Company
v.
Fender Musical Instruments Corporation
Opposition No. 91161520
to application Serial Nos. 76516126, 76516127, 76515928
filed on April 25, 2003
_____
Lakland Musical Instruments, LLC
v.
Fender Musical Instruments Corporation
Opposition No. 91162312
to application Serial No. 76516127
filed on April 25, 2003
_____
Michael Tobias
v.
Fender Musical Instruments Corporation
Opposition No. 91162313
to application Serial No. 76516127
filed on April 25, 2003
Opposition Nos. 91161403 et al.
4
_____
Richard Keldsen
v.
Fender Musical Instruments Corporation
Opposition No. 91162483
to application Serial Nos. 76516126, 76516127, 76515928
filed on April 25, 2003
_____
Levinson Music Products, Ltd.
v.
Fender Musical Instruments Corporation
Opposition No. 91162485
to application Serial Nos. 76516126, 76516127, 76515928
filed on April 25, 2003
_____
James Triggs
v.
Fender Musical Instruments Corporation
Opposition No. 91162497
to application Serial Nos. 76516126, 76515928
filed on April 25, 2003
_____
Peavey Electronic Corporation
v.
Fender Musical Instruments Corporation
Opposition No. 91162498
to application Serial Nos. 76516126, 76516127, 76515928
filed on April 25, 2003
_____
Ronald S. Bienstock of Bienstock & Michael, P.C. for Stuart
Spector Designs, Ltd., et al.
Daniel A. Crowe of Bryan Cave LLP for Fender Musical
Instruments Corporation.
______
Opposition Nos. 91161403 et al.
5
Before Hairston, Kuhlke and Walsh, Administrative Trademark
Judges.
Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Fender Musical Instruments Corporation
(FMIC), seeks registration of the marks shown below for
goods identified in each application as “guitar bodies” in
International Class 15. Each of the applications includes
the following description of the marks, “The mark consists
of a fancifully shaped configuration of the body portion of
a guitar.” The applications are based on use in commerce
under Trademark Act Section 1(a), 15 U.S.C. §1051(a), and
seek registration based on acquired distinctiveness under
Trademark Act Section 2(f), 15 U.S.C. §1052(f).
2 3 4
2 Application Serial No. 76516126, filed on April 25, 2003,
alleging 1954 as the date of first use and first use in commerce.
Throughout the decision this design is referred to as “126.”
This design corresponds to applicant’s Stratocaster guitar.
3 Application Serial No. 76515928, filed on April 25, 2003,
alleging 1949 as the date of first use and 1950 as the date of
first use in commerce. Throughout the decision this design is
referred to as “928.” This design corresponds to applicant’s
Telecaster guitar.
Opposition Nos. 91161403 et al.
6
Opposers have opposed registration of applicant’s marks
on the grounds that they are generic or, in the alternative,
have not acquired distinctiveness in view of the widespread
use of identical and substantially similar configurations by
third parties over several decades.
Applicant filed answers by which it denied the salient
allegations.5 The case is fully briefed and an oral hearing
was held on November 6, 2008.
EVIDENTIARY ISSUES
The evidence of record, as fully referenced in the
parties’ briefs, is voluminous, consisting of many testimony
depositions on behalf of opposers and applicant,
respectively, all with accompanying exhibits, and numerous
additional exhibits made of record by the parties’ notices
of reliance (NOR). The parties have asserted many
objections on various grounds and preserved these objections
in appendices attached to their briefs. In addition,
opposers, on December 17, 2007, filed a motion to strike
large portions of applicant’s notice of reliance, filed on
October 31, 2007.
4 Application No. 76516127, filed on April 25, 2003, alleging
1951 as the date of first use and 1957 as the date of first use
in commerce. Throughout the decision this design is referred to
as “127.” This design corresponds to applicant’s Precision Bass,
also called P Bass, electric bass guitar.
5 Applicant’s answers include “affirmative defenses” (e.g.,
unclean hands and equitable estoppel); however, inasmuch as
applicant did not address them in its brief, they are waived and
we give them no further consideration.
Opposition Nos. 91161403 et al.
7
We first address opposers’ motion to strike and rule as
follows. The motion is granted as to the in-house
publications/catalogs Frontline and Bass Street, and the
auction catalogs from the Crossroads guitar auction and the
Guitarmania auction. The distribution of these publications
to retailers, trade shows, guitar clinics and to individuals
upon request does not constitute “general circulation”
within the meaning of Trademark Rule 2.122(e). Thus, these
documents are not proper matter for submission under a
notice of reliance. Carefirst of Maryland, Inc. v.
FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492 (TTAB
2005); Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d
1400 (TTAB 1998); Glamorene Products Corp. v. Earl Grissmer
Co., 203 USPQ 1090 (TTAB 1979); Hunt-Wesson Foods, Inc. v.
Riceland Foods, Inc., 201 USPQ 881 (TTAB 1979). The motion
also is granted as to the press clippings. Harjo v. Pro-
Football Inc., 50 USPQ2d 1705, 1722 (TTAB 1999), rev’d on
other grounds, 284 F. Supp.2d 96, 68 USPQ2d 1225 (D.D.C.
2003) (press clippings not admissible under notice of
reliance). We note, however, that many, if not all, of
these documents were properly introduced as exhibits through
testimony and have been considered within that context.
The motion is denied with regard to the American Ways
and Diamondback magazines inasmuch as applicant has shown
Opposition Nos. 91161403 et al.
8
the public availability and general circulation of these
publications.
The motion is granted as to the excerpts from foreign
publications, inasmuch as applicant has only stated and not
shown that these publications are in general circulation in
the United States. However, the publication shown to be in
general circulation in the United States, while written in
Spanish, is acceptable under notice of reliance in this
case, inasmuch as it is merely used to show how the product
is displayed to relevant consumers in the United States.
With regard to the objection as to inadequate
identification for the newspaper and magazine excerpts, the
motion is granted as to any of the submissions that do not
have a date and is otherwise denied inasmuch as applicant
has provided sufficient information as to the remaining
documents. With regard to the documents that contain what
opposers term “handwritten testimony,” the motion is denied;
however, the Board will not consider any of the notations on
the documents.6
As to opposers’ remaining objections, they have been
rendered moot by applicant’s correction of its notice of
reliance, withdrawal of an internet print out, and corrected
service of purportedly missing documents.
6 We add that consideration of any of the evidence excluded above
would not change the decision.
Opposition Nos. 91161403 et al.
9
As noted above, the parties attached appendices to
their briefs that contain their respective “statement of
objections” on various grounds, including hearsay, lack of
foundation, lack of personal knowledge, incompetence of
proffered experts, documents not produced during discovery,
and evidence not admissible by notice of reliance. They are
voluminous and are specifically addressed, infra, to the
extent the Board has relied on any of the evidence under
objection in rendering its decision. However, we rule on
the more general issues as follows.
Opposers’ objections based on hearsay in section A of
their appendix are overruled for the reasons presented in
applicant’s response brief. Opposers’ objections based on
relevancy and materiality in section D of its appendix are
overruled; the testimony and exhibits that concern goods
other than guitars (i.e., various merchandising items) are
relevant to the issue of acquired distinctiveness as to the
goods in issue, namely, guitar bodies. The issue is the
probative value and the weight to be given this evidence.
Applicant, in its Statement of Objections, objects to
the exhibits opposers submitted under notice of reliance
stating that “the Board should limit admissibility of all of
opposers’ references and exhibits to only what the exhibit
shows on its face.” Applicant expends five pages to state
the obvious. We shall consider these articles or
Opposition Nos. 91161403 et al.
10
advertisements for whatever they may show on their face, but
not for the truth of the matters asserted therein. See,
e.g., Logicon, Inc. v. Logisticon, Inc., 205 USPQ 767 (TTAB
1980). Thus, with regard to applicant’s hearsay objections
to the various documents relied on by opposers, they are
overruled to the extent that the matter is admissible and
has been made properly of record by way of notice of
reliance. This issue goes to the probative value of the
individual exhibits, and while they may not be considered
for the truth of the matter asserted, they may be used to
show, for example, that opposers or third parties advertised
the guitar or guitar parts in the publications on those
dates. See Gravel Cologne, Inc. v. Lawrence Palmer, Inc.,
469 F.2d 1397, 176 USPQ 123 (CCPA 1972); Wagner Electric
Corp. v. Raygo Wagner, Inc., 192 USPQ 33, 36 n. 10 (TTAB
1976). In addition, they may be used to show that opposers’
or third parties’ guitars appeared in an article or
advertisement and that the public has been exposed to the
articles or advertisements and may be aware of the
information contained therein. Harjo v. Pro-Football Inc.,
50 USPQ2d at 1721 n. 50.
To the extent an objection has not been specifically
addressed above in our consideration of evidentiary
objections or below in our discussion of what the evidence
of record shows as to the merits of these consolidated
Opposition Nos. 91161403 et al.
11
cases, we have considered the evidence, keeping in mind the
objections, and have accorded whatever probative value it
merits.
Finally, much of the evidence of record is marked as
confidential and, therefore, we must refer to some
information in a more general manner in the decision.
THE PARTIES
Applicant7 manufactures, sells and distributes musical
instruments, including, but not limited to guitars8
throughout the world, including the United States. Notice
of Opposition ¶ 5; Answer ¶ 5. With the exception of Indoor
Storm, opposers also manufacture and/or sell guitars and/or
guitar kits in the United States. See footnote 9. Indoor
Storm is a retail store that sells applicant’s guitars as an
7 All references to applicant include its predecessors-in-
interest, unless otherwise noted. While opposers have attempted
to put into question applicant’s acquisition of rights from its
predecessors, this issue was not pleaded or tried by express or
implied consent of the parties. To the extent opposers argue
that the issue is simply part of applicant’s burden to show
acquired distinctiveness, i.e, if it relies on the predecessor’s
use it must establish its rights to the benefit of that use,
opposers, in paragraph 8 of their respective notices of
opposition, include allegations, admitted to by applicant, that
“applicant or its predecessors-in-interest began using the body
design.” Applicant was clearly not put on notice that its
acquisition of rights would be in issue. In any event, the
testimony of Mr. Holtry, applicant’s associate general counsel,
is sufficient for that purpose and opposers’ speculation as to
any deficiencies in that testimony is not sufficient to rebut it.
8 For simplicity, the word “guitars” means electric guitars and
electric bass guitars, unless otherwise noted.
Opposition Nos. 91161403 et al.
12
authorized dealer along with guitars from other
manufacturers. Abrams Test. pp. 11-13, 92.
STANDING
Each opposer has demonstrated a real interest in
preventing registration of the proposed marks as they are
either competitors (guitar manufacturers and/or sellers) or
retailers of the goods in the applications.9 See Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); De
Walt, Inc. v. Magna Power Tool Corp., 289 F.2d 656, 129 USPQ
275, 280 (CCPA 1961) (damage presumed or inferred when the
mark sought to be registered is descriptive of the goods and
opposer is one who has a sufficient interest in using the
descriptive term in its business); Plyboo American, Inc. v.
Smith & Fong Co., 51 USPQ2d 1633, 1634 (TTAB 1999)
(competitor has standing to oppose). Thus, each opposer has
established its standing.
9 Spector Test. pp. 3, 23; U.S. Music Corporation, App. NOR § III
U.S. Music Corporation’s Answer to Applicant’s First Set of
Interrogatories Int. No. 18; Warmoth Test. pp. 9, 12-14; Indoor
Storm, Abrams Test. pp. 11, 12, 86, 92; Tradition Guitars, Chris
Donahue, Stip. Aff., App. NOR § III Tradition’s response to Int.
No. 18; Schecter Guitar Research, Ciravolo Test. p. 8, 10, 48,
Anderson Test. pp. 15-17; JS Technologies, Suhr Test. p. 9, 22,
23; Raise Praise, Anderson Test. pp. 11, 19; W D Music, App. NOR
§ III, W D’s response to Int. No. 18; Sadowsky Test. pp. 6, 7,
11, 13; ESP Guitar Company, Masciandro Test. pp. 6, 9-11;
Lakland, Lakin Test. p. 3; Tobias Test. pp. 4, 14; Keldsen Test.
pp. 9, 11, 14; Levinson Test. pp. 6, 11, 16; Triggs, App. NOR §
III Int. Nos. 11, 18; Peavey Test. pp. 12-16, 84. Opposers may
rely on these interrogatory responses, inasmuch as applicant has
placed these responses into the record under notice of reliance.
Trademark Rule 2.120(j)(7).
Opposition Nos. 91161403 et al.
13
ACQUIRED DISTINCTIVENESS/GENERICNESS
As noted above, opposers have challenged registration
of these proposed marks on the claims that they are generic,
or in the alternative, have not acquired distinctiveness,
given the opposers’ and third-parties’ use of these shapes.
Acquired Distinctiveness
Configurations of products are not inherently
distinctive and may only be registered as marks upon a
showing of acquired distinctiveness. See Wal-Mart Stores,
Inc. v. Samara Bros., Inc., 529 US 205, 54 USPQ2d 1065
(2000). In an opposition proceeding, opposer has the
initial burden to present prima facie evidence or argument
upon which we could reasonably conclude that applicant’s
mark has not acquired distinctiveness. If opposer does so,
the burden of proof shifts to applicant to prove by at least
a preponderance of the evidence that the mark has acquired
distinctiveness. Yamaha Int. Corp. v. Hoshino Gakki Co.
Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1004-1008 (Fed. Cir.
1988). “[T]he only relevant issue before this court on
appeal, as it should have been before the board, is which
party should prevail on the entire record.” Yamaha, 6
USPQ2d at 1006. However, the burden of persuasion under
Section 2(f) on the issue of acquired distinctiveness is on
the applicant. Id.
Opposition Nos. 91161403 et al.
14
“Distinctiveness is acquired by ‘substantially
exclusive and continuous use’ of the mark in commerce.” In
re Owens-Corning Fiberglas Corporation, 774 F.2d 1116, 227
USPQ 417, 424 n. 11 (Fed. Cir. 1985), citing, Levi Strauss &
Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 942 (Fed.
Cir. 1984). An applicant must show that the primary
significance of the product configuration in the minds of
consumers is not the product but the source of that product
in order to establish acquired distinctiveness. See In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed.
Cir. 2005); In re Ennco Display Systems Inc., 56 USPQ2d 1279
(TTAB 2000).
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 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. There is no fixed rule for the amount of proof
necessary to demonstrate acquired distinctiveness, however,
the burden is heavier for product configurations. In re
Ennco, 56 USPQ2d at 1283 (product configurations face a
heavy burden to establish secondary meaning). See also
Yamaha, 6 USPQ2d at 1008 (evidence required to show acquired
Opposition Nos. 91161403 et al.
15
distinctiveness is directly proportional to the degree of
non-distinctiveness of the mark at issue). Thus, even long
periods of substantially exclusive use may not be sufficient
to demonstrate acquired distinctiveness. Moreover, the
burden is particularly heavy when that use has not been
exclusive. In re Gibson Guitar Corp., 61 USPQ2d 1948, 1952
(TTAB 2001) (66 years of use not sufficient given similarity
of configuration to other guitars). See also Flowers
Industries Inc. v. Interstate Brands Corp., 5 USPQ2d 1580,
1588-89 (TTAB 1987) (“long and continuous use alone is
insufficient to show secondary meaning where the use is not
substantially exclusive”).
Genericness
In addition, product configurations may become generic.
Sunrise Jewelry Manufacturing Corp. v. Fred S.A., 175 F.3d
1322, 50 USPQ2d 1532, 1535 (Fed. Cir. 1999) (“generic name”
in Section 14 of the Lanham Act 15 U.S.C. Section 1064(3),
“must be read expansively to encompass anything that has the
potential but fails to serve as an indicator of source, such
as names, words, symbols, devices, or trade dress”).
“[R]egistration of an incontestable mark that is a product
design may be cancelled if the mark is generic.” Id. at
1533. By extension, generic product design can not be
registered. Trademark Act Sections 1, 2 and 45, 15 U.S.C.
§§1051, 1052 and 1127. See Malaco Leaf, AB v. Promotion In
Opposition Nos. 91161403 et al.
16
Motion, Inc., 287 F. Supp.2d 355 (S.D.N.Y. 2003) (“It is
axiomatic that generic product designs are not entitled to
trade dress protection under the Lanham Act, and that “even
a showing of secondary meaning is insufficient to protect
product designs that are overbroad or generic”; evidence of
extensive third-party use supports a finding that the
Swedish Fish design is generic; evidence of failure to
police its trade dress for decades is further evidence that
the Swedish Fish trade dress is weak and has not acquired
distinctiveness); Abercrombie & Fitch Stores Inc. v.
American Eagle Outfitters Inc., 280 F.3d 619, 61 USPQ2d
1769, 1781 (6th Cir. 2002) (“no designer should have a
monopoly on designs regarded by the public as the basic form
of a particular item”). See also BellSouth Corp. v.
DataNational Corp., 60 F.3d 1565, 35 USPQ2d 1554 (Fed. Cir.
1995) (“competitor use [of logo] is evidence of
genericness”); BellSouth Corp. v. White Directory
Publishers, Inc., 42 F. Supp.2d 598, 49 USPQ2d 1801
(M.D.N.C. 1999) (“such conduct estops BellSouth from turning
on its head over thirty years of history by now seeking
trademark protection of the walking fingers logo”).
In the context of product design, genericness may be
found where the design is, at a minimum, so common in the
industry that it cannot be said to identify a particular
source. See Walker & Zanger Inc v. Paragon Industries Inc.,
Opposition Nos. 91161403 et al.
17
465 F. Supp.2d 956, 84 USPQ2d 1981, 1985 (N.D. Cal. 2006)
(“Cases addressing product design suggest that the term
‘genericness’ covers three situations: (1) if the
definition of a product design is overbroad or too
generalized; (2) if a product design is the basic form of a
type of product; or (3) if the product design is so common
in the industry that it cannot be said to identify a
particular source”). Further, “[c]ourts exercise
‘particular caution’ when extending protection to product
designs because such claims present an acute risk of
stifling competition.” Id. at 1984, citing, Landscape
Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 42 USPQ2d
1641, 1646 (2nd Cir. 1997). This is because “[w]hile most
trademarks only create a monopoly in a word, a phrase or a
symbol, granting trade dress protection to an ordinary
product design...create[s] a monopoly in the goods
themselves.” Yurman Design, Inc. v. PAJ, Inc., 262 F.3d
101, 59 USPQ2d 1813 (2nd Cir. 2001). Cf. Wal-Mart, 54
USPQ2d at 1069 (in discussing whether product design could
ever be inherently distinctive the court stated: “Consumers
should not be deprived of the benefits of competition with
regard to the utilitarian and esthetic purposes that product
design ordinarily serves by a rule of law that facilitates
plausible threats of suit against new entrants based upon
alleged inherent distinctiveness”).
Opposition Nos. 91161403 et al.
18
“[C]ases have recognized that competitor use is
evidence of genericness.” BellSouth Corp. v. DataNational
Corp., 35 USPQ2d at 1558.
ANALYSIS
Genericness
We first address whether the configurations are so
common in the industry as to be generic and, thus, incapable
of registration. Similar to the circumstances in BellSouth,
supra, this case presents many (seventeen) opposers
testifying to their own use and observation of third-party
uses of identical and substantially similar guitar body
shapes in the United States.
Third-party Uses
As stated above, competitor use of the same or
substantially similar designs is evidence of genericness.
The record shows that, at least from the mid-1970s,
consumers in the United States have been exposed to guitars
in the 126, 928 and 127 shapes emanating from third parties.
Opposers have presented unrebutted testimony that they have
offered for sale identical and substantially similar guitars
in the United States and have seen identical or
substantially similar guitars offered in the United States
Opposition Nos. 91161403 et al.
19
by parties other than applicant since at least the 1970s.
Below is a sampling of the testimony as to each shape.10
127 Body Configuration
Daniel Lakin, owner of opposer Lakland Musical
Instruments LLC, testified as follows:
A. Well, I mean, I saw not just the one – in ’76
I saw not just the Precision Bass that Fender made
but there were companies making the same design.
Ibanez is the company that I remember particularly
because I bought a Jazz bass version of a Fender J
bass version. Ibanez. And they also made a P
bass at the time...There’s also a company named
Univox that made them...Then moving on, it seemed
like everybody was making them. Peavey was
definitely making them. Kramer I believe made a P
bass. Yamaha made a bass that was either – it was
very close to a P bass, I don’t think it had a
pick guard so it looked a little bass...Well, I
saw when I first started playing, and then getting
into it, I’ve seen – it seems like I’ve seen ads
going back all the way to the ‘60s. Just looking
through old magazines and things like that. ‘70s
seems to be when it really started to hit, the
volume of these copies, if you will. Although
there was a company, Tokai, that was known for
making them...
10 During testimony applicant objected to opposers’ exhibits Nos.
O-107, 108 and 109 on the basis that they were not authenticated
and/or were leading because they contain respectively the words
Stratocaster, Telecaster and Precision Bass. These exhibits are
drawings of guitar body configurations that are identical to the
drawings in the subject applications that opposers used to elicit
testimony regarding comparisons between the drawings in the
exhibits and other guitar bodies. We do not find these exhibits
to be tainted by the fact that they contain the obvious in that
they are identical to the drawings in the applications and there
is no dispute that those drawings represent applicant’s
Stratocaster [126], Telecaster [928] and Precision Bass/P Bass
[127] guitars. Further, these exhibits are not claimed to be
anything other than a drawing upon which the witness may make a
comparison. In view thereof, applicant’s objections to these
exhibits are overruled. For clarity, we refer to the
corresponding shape (i.e., 126, 928 or 127) in brackets.
Opposition Nos. 91161403 et al.
20
Lakin Test. pp. 10-11, 15-16.
A. Lakland has made and sold a model that is
identical to P Bass body shape since 1999.
Lakin Test. p. 13, Exh. Nos. O-75, 78, 80, 85 (Lakland
advertised its identically shaped bass monthly in the
magazine Bass Player from 1999-2004. Lakin Test. p. 78).
Opposer, Michael Tobias, a guitar manufacturer,
testified that Veneman imported basses with the “P Bass
shape” and he saw them in shops in the mid 70s. Tobias
Test. pp. 39-40. He further testified that Aria, Schecter
and at least “100’s of others” sold “P Bass body shapes” in
the 70s. Tobias Test. pp. 41, 74-75.
Stuart Spector testified that:
A. Dozens and dozens of other manufacturers make
basses in the shape of P Bass, e.g., Cort, Samick,
Sadowsky, Fernandez, ESP, Schecter...
Spector Test. pp. 17-18, see also Exh. Nos. O-2 and O-3.11
Richard Sadowsky, owner of opposer Sadowsky Guitars
Ltd., testified that he first started making basses in the
“P Bass shape” shape in 1982. Sadowsky Test. p. 43, see
also Exh. Nos. O-30, 34 (advertisements in Bass Guitar
magazine and Guitar World magazine). He also testified that
11 Stuart Spector, owner and president of opposer Stuart Spector
Designs Ltd, and former director of research and development for
Kramer Musical Instruments. Applicant, in its statement of
objections, objected to Exh. No. O-2 as lacking in foundation and
not authenticated. The objection is overruled. The testimony of
Mr. Spector provides sufficient foundation for him to
authenticate his own company’s catalogs.
Opposition Nos. 91161403 et al.
21
others, including Schecter, ESP, and DeMarzio make this
shape. Sadowsky Test. p. 44.
A. ...However, I would say that from the early
‘60s onwards and definitely into the mid-60s a lot
of far eastern manufacturers were, as that source
of production became prevalent, utilizing not only
Fender shapes, but Rickenbacker shapes.
Essentially we are using two or three generic
American manufactured shapes.
Moorhouse Test. p. 39, see also pp. 168-171 for
foundation.12
928 Body Configuration
Michael Tobias testified to seeing guitars offered for
sale in the United States with the 928 body shape in the mid
to late 70s made by Aria (Tobias p. 6) and Danny Gratton
(Tobias Test. p. 38). Richard Sadowsky testified that he
has seen third-party 928 shaped guitars at trade shows, in
the press and on television, and that other manufacturers of
this shape include Tokai, Schecter, ESP, and Sadowsky.
Sadowsky Test. p. 76. He testified that Sadowsky first
built a 928 shaped guitar in 1981 and continues to sell 928
shaped guitars. Sadowsky Test. pp. 77-78, see also Exh.
Nos. 4513 (advertisement in 1990 Guitar Player magazine) and
49 (page from Sadowsky product brochure). Keith Richards
12 Barry Moorhouse owns the music retail and distribution company
The Bass Center and House Music that originated in England and
later expanded to the United States. He is also the author of
the book The Bass Book.
Opposition Nos. 91161403 et al.
22
and Prince own and play Sadowsky guitars with the 928 shape
(Sadowsky Test. p. 88) as do many others, including Pat
Metheny, Gilberto Gil, Dary Stuermer, John Abercrombie
(Sadowsky Test. pp. 90-95).
126 Body Configuration
Michael Tobias testified that in the 1970’s Aria and
Schecter made and sold guitars with the 126 shape. Tobias
Test. pp. 10, 41. Stuart Spector testified that Kramer made
a guitar with the 126 shape. Spector Test. pp. 14-16.
Richard Sadowsky testified that many others besides Sadowsky
made 126 shaped guitars including Hoshino, Tokai, Schecter,
ESP, DeMarzio, and Morris. Sadowsky Test. p. 15.14
Sadowsky has made a guitar in the 126 shape since 1979.
Sadowsky Test. p. 26, see also Exh. O-14 (example of 1986
Sadowsky guitar in 126 shape); Exh. No. O-18 (2002/2003
Guitar World Buyers Guide featuring Sadowsky guitars in 126
shape); Exh. No. 19 (1993/94 brochure of Sadowsky guitars in
126 and 928 style).15 Sadowsky Guitars has displayed its
guitars on its website since 1996. Sadowsky Test. p. 28,
see also Exh. Nos. O-20, 21. Paul Simon purchased a
Sadowsky guitar in the 126 shape in 1983 and Bruce
13 Applicant’s objection to this exhibit on the basis of hearsay
is overruled, we merely consider this exhibit for what it shows
on its face.
14 Applicant’s objection first presented in its appendix that this
information was not produced during discovery is overruled.
15 Applicant’s objections to these exhibits are overruled.
Opposition Nos. 91161403 et al.
23
Springsteen purchased one in the late 80s. Both musicians
perform with these guitars. Sadowsky Test. pp. 41, 42. See
also Exh. Nos. O-27 and 28 (picture of Simon and Springsteen
playing Madison Square Garden in 1986 with Sadowsky guitars
in 126 shape).
All Three Body Configurations
Michael Tobias testified that many manufacturers were
making guitars in the three shapes. Tobias Test. p. 23-24.
...by the mid ‘70s the Japanese invasion of
instruments was huge and there were lots of brands
making these shapes all for sale and in the same
place at the same time. There were American
builders also being like Schecter who opened
Schecter Shops which we actually participated in
’78 where they would just stock you with these
bodies and necks of almost an exact spec with
their name on them and their whole business was to
assemble parts guitars for people.
Tobias Test. p. 11.
Many manufacturers sold guitar kits with these body
shapes from the mid-70s where the customer assembled the
guitar. Sadowsky Test. pp. 98-105, see also Exh. Nos. O-60
and 62.16
Hartley Peavey, owner of opposer Peavey Electronics
Corporation, testified:
A. They have become traditional shapes over the
last 50 years and these shapes are made by
hundreds, maybe thousands of companies.
Q. And how would you know that?
16 Applicant’s objections to the exhibits are overruled.
Opposition Nos. 91161403 et al.
24
A. Simply because I have been in the industry
longer than anybody else that I know in the
industry....
Q. And you have seen them for sale in the United
States?
A. Yes, I went to my first trade show in 1954.
NAMM17 show, I’m sorry, not trade show.
Peavey pp. 74-75.
Douglas Abrams, owner of opposer IndoorStorm,
testified:
Q. What kind of shapes are indicated on your
website?
A. If you go to our website you would see many,
many shapes of what is called the Stratocaster,
Telecaster and the Precision bass. You would
certainly see on the Stratocaster, if you had been
to IndoorStorm since we started, you would be in
the thousands of different guitars that we posted,
that [126], entitled the Stratocaster, all of the
shapes, virtually identical.
Abrams Test. p. 19.
...based on the data that we have, that there are
about two to three million separate IP addresses
that on a typical year, who hit our website.
Abrams Test. p. 128.
...when I went to the NAMM shows not only have I
seen these generic shapes ... but there are walls
of them...There are brands from Hondo, JB Player.
You could walk into any – within one foot of
walking in, if you just circle, you would see at
least three or four thousand of these generic
shapes.
Abrams Test. pp. 21-22.
Based on my years and years of looking at guitars
and selling guitars and reading guitar magazines,
I’m convinced this body shape here [126],
Stratocaster, has absolutely no connection with
17 NAMM, the National Association of Music Merchants, is the major
industry trade show. Sadowsky Test. p. 19.
Opposition Nos. 91161403 et al.
25
any one manufacturer on this planet. The same
with [928], this generic body shape has absolutely
not one bit to do with any one manufacturer on the
planet... the Precision bass [127] has absolutely
nothing to do with any specific manufacturer on
the planet. And you could look at these and have
no clue whose guitar it would turn out to be.
Abrams Test. pp. 34-35.18
...there is no way that these drawings have any
degree of uniqueness that gives Fender some claim
to the use of those body shapes. And if somebody
said are there thousands of guitars that have body
shapes that fall within the category of great
similarity to these three shapes, I would say
there are about as many of these as there are
stars.
Abrams Test. pp. 100-101.
Kenneth Warmoth, partner of opposer Warmoth Guitar
Products, Inc., has sold component parts of guitars
including guitar bodies since 1976. Warmoth Test. p. 9. He
has sold to major retailers, including Sam Ash, Music Arts
Enterprises, Book Mays and thousands of other retailers.
Id. Beginning in 1976, he traced the bodies of applicant’s
guitars as depicted in 126, 928 and 127 to make his
identical product. Warmoth Test. p. 12. His company has
manufactured all three body shapes since 1976 and continues
to do so. Warmoth Test. p. 42. He testified he has seen
these body shapes continuously in magazines, music stores,
and trade shows made by third parties, including Aria,
18 Applicant’s objections are overruled, the witness is merely
presenting his opinion based on his years of working in this
industry, in the same manner applicant’s retailer witness
(Umanov) presents his opinion.
Opposition Nos. 91161403 et al.
26
Hondo, Ibanez, Schecter, DiMarzio and Tom Anderson. Warmoth
Test. p. 19. Consumers have been exposed to Warmoth guitars
in advertising since 1976, through catalogs since 1978 and
on its website since 1997. Warmoth Test. p. 25.
What launched our impetus into this market was a
demand for higher quality parts, for different
woods, for different woods and finishes that were
not available from Fender. And the body is very
comfortable, it’s very ergonomic, and that’s what
makes it popular, in my opinion, and there’s just
a huge demand for it. It’s the same body that
everybody uses. It’s pretty universal and common.
Q. When you say “universal,” can you elaborate on
that?
A. By “universal” I mean it’s – so many
manufacturers have used this shape, that it’s
“the” body...It typifies the American guitar,
Strat.
Q. In terms of one manufacturer?
A. I would say most. Double cutaway Stratocaster
body is by far the most popular body out there.
Q. And popular in terms of all manufacturers?
A. I would say.
Warmoth Test. p. 32, see also, Exh. Nos. O-394-397 (Warmoth
catalogs from 1982 on).
Thomas Anderson, president of opposer Tom Anderson
Guitarworks testified as follows:
Q. When you refer to this shape [126], is this
shape referred to in a sense of a genre or with
some specificity as to one manufacturer?
A. No, it’s a style that every manufacturer I can
think of makes.
Anderson Test. p. 12.
Mr. Anderson provides the same testimony as to the 127
and 928 shapes. Anderson Test. pp. 13-14, see also Exh.
Nos. O-357-371 (advertisements in various consumer and trade
Opposition Nos. 91161403 et al.
27
magazines showing Anderson guitars in 126 and 928 shape from
1986-2000). Both Anderson and Schecter traced Fender guitar
bodies (126, 928 and 127) to make their guitars. Anderson
Test. pp. 15-18, 72. During his tenure at Schecter from
1976-1984, Anderson testifies that Schecter made identically
shaped guitars. Anderson Test. p. 15. He saw guitars
identical to 126, 928 and 127 advertised by third parties in
Guitar Player magazine from 1972 on and saw identically
shaped guitars in stores from 1970 on. Anderson Test. p.
21. Anderson’s 126 shaped guitar was featured on the
television animated series “The Simpsons.” Anderson Test.
p. 57, Exh. No. O-382.19
Richard Keldsen, owner of opposer Saga Musical
Instruments, testified that he has sold guitar kits that
include bodies in the 126 and 127 shapes since 1978 and the
928 shape since 1980 (with a hiatus for approximately 12
years from the mid-eighties to nineties). Keldsen Test. pp.
20, 23 and 26. He advertises in music magazines, trade
publications and consumer-oriented magazines, and exhibits
at NAMM trade shows. Keldsen Test. p. 10. He began
advertising in Guitar Player magazine beginning in 1978-79
and has advertised in the same magazines as applicant.
Keldsen Test. pp. 13-14. As to other manufacturers he
testifies as follows:
19 Applicant’s objection to this exhibit is overruled.
Opposition Nos. 91161403 et al.
28
Q. Do you know any of the manufacturers that
produce body shapes that are depicted here in
Opposers' O-107, 108 and 109 [126, 928 and 127
shapes]?
A. There are a lot of them.
Q. When did you first see the body shapes in
terms of other manufacturers that are depicted in
[126, 928 and 127]?
A. It probably goes back to the days before I was
even involved as a participant in the musical
instrument industry. There were guitars being
sold, you know – I started in the early 1970s, and
right from the get-go there were numerous
manufacturers that had – that were using those
body shapes...You’d see them in the music stores
you’d go in. And, you know, they were pretty much
omnipresent.
Keldsen Test. p. 29.
Other manufacturers include Tokai, Hondo, and Yamaha.
Keldsen Test. p. 35.
Matt Masciandaro, president of opposer ESP Guitar
Company testified:
...Well, this [126] is a generic shape that is
made by every solid body guitar manufacturer in
the past 50 years, including ESP. And we’ve been
making it for 20 years in the United States.
Masc. Test. p. 12.
...The people we deal with and our customers have
grown up in a market where these shapes have been
made by every manufacturer that they see, whether
it’s in a store or on a stage, all making a
similar shape to this... Every company makes it.
Masc. Test. p. 26.20
Because Fender is applying for a mark on bodies
that have been used by many manufacturers other
than Fender for a period of 50 years and are now
generic shapes not necessarily associated with a
20 Applicant’s objections to this testimony are overruled.
Opposition Nos. 91161403 et al.
29
specific brand, so I don’t think they have the
position to do that or to receive that mark.
Masc. Test. pp. 40-41.
ESP’s Vintage Plus and GL-56 models are identical to
the 126 shape. Masc. Test. p. 15. Their Ron Wood model is
identical to the 928 shape and has been made since 1989.
Masc. Test. p. 17. The P-4 and the P-5 model basses are
identical to the 127 shape. Masc. Test. p. 20. ESP
displays its guitars in magazines, catalogs and on its
website. See Exh. Nos. O-346 (catalog from early 90s with
126 and 928 shaped guitars); O-347 (catalog from 1995 with
126 and 928 shaped guitars); O-354 (catalog from 2004 with
126, 928 and 127 shaped guitars). Their guitars are sold in
retail establishments including Sam Ash and Musician’s
Friend. Masc. Test. p. 6.
John Suhr, president of opposer JS Technologies,
testified that when he was working at a music store called
Rudy’s Music Stop in 1982 he assembled and sold Schecter
guitar kits that had the body shapes of 126, 928 and 127.
Suhr Test. p. 7. Since 1997, Suhr has made guitars with 126
and 928 shaped bodies. Suhr Test. pp. 23-24.
Gary Levinson, founder and president of Levinson
Limited, testifies that he makes guitars in the shapes in
126, 928 and others have made these shapes since the 60s,
including Hofner, Aria, Ibanez, Riverhead, Moon, Fernandes,
Opposition Nos. 91161403 et al.
30
Tokai, Hondo, Samick, Washburn, Peavey, Schecter, ESP,
Hamer, and Pensa-Suhr. Levinson Test. pp. 14-15.
Michael Ciravolo, president of opposer Schecter Guitar
Research, testified as follows:
Q. Do you know if any of those competitors
manufacture guitars that have body shapes that are
similar to what we are showing you here in [126,
928 and 127]?
A. I think you’d be hard pressed to find one that
doesn’t.
Q. Do you know when any of these competitors of
yours may have begun to make those body shapes?
A. That would be a guesstimate on my part. But I
know from my beginning retail days, pretty much
everything that I said that we stocked is based,
you know, on this or a slight variation.21
Q. And that began in what year.
A. ’80, pretty much, at the Music Stop. That
would put me at ’70 or ’80. ...
Q. Do you see any of your competitors showing
guitar shapes that are embodied here in [126, 928
and 127] in any of the consumer or trade
magazines.
A. Oh, all of them.
Ciravolo Test. pp. 17-19.
A. Why after 60 years would I be asked to change
a body style? We’ve been making this for a long
time. There are tens of thousands of guitars that
are identical to that on the market. I’m not
changing my guitar design ...They want a Schecter
guitar. They want a Schecter C-1 that Jerry
Horton from Papa Roach plays. They want a
Schecter C7 that Jeff Loomis plays.
Ciravolo Test. p. 99.
Mr. Ciravolo testified that in the beginning Schecter
sold parts to custom shops and stores that would assemble
them for customers which looked “pretty generic ...just
21 Applicant’s objection to this answer is overruled.
Opposition Nos. 91161403 et al.
31
mainly what you have here, the Strat, Tele you know, with
the guitars.” Ciravolo Test. p. 29. See also Exh. Nos. O-
168 (2004 catalog with guitars in 126, 127 and 928 body
shapes); O-170 (2006 30 year anniversary catalog with many
126, 928 and 127 shaped guitars). Schecter advertises in
magazines, including Guitar Player, Guitar World, Revolver
monthly and catalogs. See generally Ciravolo Test.
Harold Kuffner is a “source liaison for helping people
find factories to manufacture guitars, basses, acoustic
guitars, mandolins, banjos” and has worked in the musical
instrument business for 39 years. Kuffner Test. pp. 3-4.
As such, he is competent to testify as to the manufacturing
and importing of guitars into the United States and his
business relationships with some of the opposers does not
fatally bias his testimony on this issue. He testified that
during the 1980s factories in Japan manufactured and
imported into the United States the same or similar guitars
for applicant and its competitors Ibanez, Yamaha, Moon
Custom Guitars, Tokai and Fernandes. Kuffner Dep. pp. 14-
15, 46.
A few examples of some of opposers’ guitars from
testimony exhibits are set forth below.
Opposition Nos. 91161403 et al.
32
22 23 24
25
26 27
22 Sadowsky Test. O-30 (page from Bass Player magazine).
23 Sadowsky Test. O-34 (page from Guitar World magazine).
24 Sadowsky Test. O-45 (page from Guitar Player magazine).
25 Sadowsky Test. O-46 (page from Sadowsky website)
26 Lakin Test. O-75 (2002/2003 Lakland catalog).
27 Lakin Test. O-85 (page from Bass Player magazine).
Opposition Nos. 91161403 et al.
33
28
29
30
28 Warmoth Test. Exh. O-396 (1985 Warmoth catalogue).
29 Warmoth Test. Exh. O-402 (1991 Warmoth catalogue).
30 Masc. Test. Exh. O-347 (1995 ESP catalog).
Opposition Nos. 91161403 et al.
34
31
32
33 34
31 Masc. Test. O-354 (2004 ESP catalog).
32 Ciravolo Test. O-168 (2004 Schecter catalog).
33 Suhr Test. O-339 (excerpt from Suhr website)
34 Suhr Test. O-342 (excerpt from Suhr website).
Opposition Nos. 91161403 et al.
35
35 36
In addition, opposers’ notices of reliance are replete
with excerpts from consumer magazines over a thirty year
period dating from 1975 - 2007 that contain advertisements
for, or articles about, third-party guitars that are
identical in shape to 126, 928, and 127. A few examples are
reproduced below.
35 Masc. Test. Exh. No. O-355 (2006 catalog).
36 Masc. Test. Exh. No. O-356 (2007 catalog).
Opposition Nos. 91161403 et al.
36
O-500 O-504
O-505 O-505 O-
509 O-513 O-530 O-539
O-540 O-555 O-565
Exhibit No. O-517, which does not reproduce well from
the electronic database, contains a full page advertisement
Opposition Nos. 91161403 et al.
37
from the November 1981 Guitar Player magazine that has a
picture of a store with opposer Schecter’s guitars on
display which are identical in body configuration to 126,
928 and 127. Exhibit No. O-594 is a full page advertisement
from the September 2004 Vintage Guitar magazine that
displays opposer Anderson’s guitars in the 126 and 928 body
shapes next applicant’s guitars in the 126 and 928 body
shapes. Applicant does not dispute that it advertises in
the same magazines, e.g., Guitar World and Guitar Player, as
opposers. McDonald Test. p. 163.37
A few examples of guitars that applicant may not
consider to be identical are reproduced below.
37 Richard McDonald, applicant’s senior vice president of global
marketing.
Opposition Nos. 91161403 et al.
38
O-504 O-510
O-538 O-547
Failure to Police
The record also shows that applicant was aware of
opposers’ products and never objected to the body shapes,
although, in some cases applicant did object to their
headstock designs.
Q. Have you ever received any correspondence from
Fender or its predecessors in interest regarding
the use of the P bass body shape?
A. No. Not regarding the use of the P bass body
shape. We did have a headstock issue when we
first started. We had only made one bass,
photographed it, it was in an ad and they thought
it was too close to theirs. And we settled that.
Q. You changed that?
A. Changed it.
Q. Nothing to do with the body shape.
Opposition Nos. 91161403 et al.
39
A. Nothing ever, no.
Lakin Test. p. 44.
Q. There’s no doubt that you had an authentic
Fender Precision bass and you copied the outline
of that body style.
A. Yes. We did.
Q. And that’s what Mr. Glaub wanted you to do.
A. That’s correct, yes.
Lakin Test. p. 78.
Sadowsky testified that he has a “P Bass shaped”
instrument advertised on the website and has not received
correspondence from applicant or its predecessors. Sadowsky
Test. p. 69, Exh. Nos. O-30, 38 and 40. The majority of its
instruments are in one of the shapes as depicted in 126, 928
and 127 and he never received correspondence from applicant.
Sadowsky Test. p. 18, see also p. 33.
Tobias testified that he never received an objection
from applicant. Tobias Test. p. 12. Hartley Peavey, owner
of opposer, Peavey Electronics Corp., testified he never
received correspondence from applicant to cease making his
body shapes. Peavey Test. p. 31.38
Kenneth Warmoth testified he never received
correspondence from applicant regarding his body shapes but
38 While Peavey testified that many of his instruments look like
126, 928 and 127 in body shape, in cross examination Peavey
states that the body shapes of his guitars have differences from
applicant’s (e.g., sharper horns). This testimony does not
obviate the obvious similarities in some of the shapes or clarify
how they would be perceived by the general consuming public.
Opposition Nos. 91161403 et al.
40
did receive a complaint about his headstock and now they
license that use. Warmoth Test. p. 30.
Q. And you have a licensing agreement to
manufacture what from Fender?
A. Replacement necks utilizing the Fender
trademark head shape.
Q. In those discussions utilizing that license,
was there any conversation or written
documentation with reference to body shapes?
A. No.
Q. Would your company be harmed if you’re no
longer able to make body shapes depicted in [126,
928 and 127]?
A. It would have a significant impact on our
sales numbers and value [sic] of employees.
Q. Why are you an opposer in this proceeding?
A. I’ve been making these body shapes for 30
years, unopposed, untrademarked, and have built a
business on making these parts. There’s a lot of
demand for it. While I make other body shapes,
the demand for them is pretty insignificant when
compared to these three shapes.
Warmoth Test. p. 31.
Douglas Abrams testified that IndoorStorm has sold many
brands, including applicant’s as an authorized dealer, and
applicant never objected to its selling of guitars made by
others with identical body shapes. Abrams Test. p. 58.
Tom Anderson testified that his company has been
displaying its 126 and 928 shaped bodies at the NAMM trade
show (from 1986 on) and representatives from applicant came
to his booth. Anderson Test. p. 23, 26. Applicant
specifically objected to the shape of his headstocks which
he changed to accommodate applicant but never objected to
the identically shaped guitar bodies. Anderson Test. p. 35.
When asked how his company would be harmed if it could no
Opposition Nos. 91161403 et al.
41
longer manufacture guitars in the 126 and 928 body shapes he
responded, “We couldn’t exist.” Anderson Test. p. 37.
Mr. Masciandaro testified that ESP displays their
Vintage Plus, GL-56, P-4 and P-5 models at NAMM and
applicant’s representatives have been by the booth. Masc.
Test. p. 24. Applicant never objected to the body shapes
only to the headstock. Masc. Test. pp. 34-35.
Mr. Levinson testified that he was never contacted by
applicant regarding his guitar body shapes but has received
correspondence regarding the headstock. Levinson Test. p.
32.
Mr. Keldsen testified that he was contacted as to his
use of the term “Stratokit” and later as to his headstock,
but never as to the body shapes:
A. When we first put the kit on the market, we
called it the Saga Stratokit. And within 30
seconds of its introduction, we got a letter from
Fender’s legal staff. And, actually it was a nice
letter. And it said, you know, you can’t do that.
You know, we’ve got – we have this word
trademarked. And that was it – and so we stopped
immediately. And just incidentally, there was no
– there was no talk about the head stock.
Certainly, there was no talk about the body. The
head stock didn’t become an issue until six or
seven years later. And the body never became an
issue.
Keldsen Test. p. 73.
Even applicant’s witness acknowledged that third
parties made guitars with body configurations that were
identical to 126 and provided no testimony that any action
Opposition Nos. 91161403 et al.
42
was taken against those manufacturers. See, e.g., McDonald
Test. pp. 429. The examples of enforcement efforts
proffered by applicant are after 2002 and pertain almost
exclusively to internet auction sites. See generally Holtry
Test.
Applicant’s Trademark Notice
Applicant’s trademark notices have evolved over the
years. What the record establishes is that applicant,
starting from the beginning in the 1950s, never claimed the
body configurations as trademarks in any advertising or
required third parties to do so until 2003, the year it
filed its applications. Moreover, the later trademark
notices do not specifically claim the simple outlines of the
body configurations by themselves, but rather lay claim to
the “body designs.”
In an advertisement in the 1972 Down Beat magazine the
trademark claim reads “Fender is a registered trade mark of:
CBS Musical Instruments A Division of Columbia Broadcasting,
Inc.” McDonald Test. Exh. A-154 FMIC009740. In a 1983
Guitar Player advertisement the trademark claim only
references the word mark: “Squier is a trademark of Fender
Musical Instruments.” Id. FMIC009952. In a 1985 Guitar
Player advertisement only the word marks are claimed
“Fender, J Bass, Jazz Bass...are trademarks of...” Id.
FMIC009973.
Opposition Nos. 91161403 et al.
43
In the sample of trademark claims that include the body
designs appearing in publications submitted under Mr.
Holtry’s testimony, the earliest example is from 2003.
Holtry Test. Exh. No. A-218 (May 15, 2003 Rolling Stone
magazine “...the distinctive headstock and body designs of
such guitars and basses are the trademarks of...”).
The most revealing examples come from applicant’s own
Frontline catalog. Reproduced below are the trademark
claims as they evolved over the years.
1990 - Fender, Squier, Sunn, Frontline,
Stratocaster...and the head profiles of F.M.I.C.’s
classic guitars and basses...are all trademarks of
FMIC (McDonald Test. Exh. No. A-148 FMIC000005);
1997 – Fender, Squier, Frontline, Telecaster...the
head profiles of FMIC’s classic guitars &
basses...are all trademarks of Fender Musical
Instrument Corp. (Id. FMIC001217);
1999 – Fender, Squier...and the head profiles of
FMIC’s classic guitars and & basses...are all
trademarks of Fender Musical Instrument
Corporation (Id. FMIC001694;
2001 – Fender, Squier, Guild...and the head
profiles...are all trademarks... (Id. FMIC001900);
2003 – The trademarks identified in this magazine,
including the headstock designs of the
Stratocaster and Telecaster guitars are owned by
FMIC. (Id. FMIC002162);
2004 – The trademarks identified in this magazine,
including the Fender Jazz Bass, Precision Bass,
Stratocaster and Telecaster guitar body and
headstock designs are owned by Fender Musical
Instruments Corp. (Id. FMIC002297).
Applicant’s omission of its body outlines from its
trademark notices cannot be from a lack of understanding the
Opposition Nos. 91161403 et al.
44
concepts of intellectual property protection. Over the
years, applicant has registered many trademarks.
Recognition of Third-Party Use in Advertising
The copy in applicant’s advertisement in a 1981 issue
of Guitar Player magazine reads “You can play an original or
you can end up with one of the many copies.” McDonald Test.
Exh. No. A-154 FMIC009858. Applicant’s advertisement in a
1988 issue of Guitar World reads, “You’re not taken in by
look-alikes or by wild claims.” Id. FMIC009878. Another
advertisement in the record comes from the August 1986 issue
of Guitar Player and reads:
Nothing can compare to the genius of an original.
Because even the best copies are only imitations.
The same is true in music. Eric Clapton and the
Fender Stratocaster are probably the most imitated
guitarist and guitar in the world. But there’s no
genius in imitation. Only confirmation of
something we’ve known all along. There’s only one
Eric Clapton. And only one Fender.
Id. FMIC009786.
The unrebutted testimony in this record indicates that
at the time this advertisement ran, applicant did not seek
to stop others from producing guitars with the identical
body shape. This advertisement shows a company recognizing
that others make this shape and distinguishing its guitar
from others by its name - there’s “only one Fender.”
It is clear from this record that guitar consumers in
the United States have been exposed to a multitude of the
126, 928 and 127 body shapes, either as complete guitars or
Opposition Nos. 91161403 et al.
45
as guitar parts, coming from and being associated with third
parties.39
The evidence overwhelmingly demonstrates that these
configurations are so common in the industry that they
cannot identify source. In fact, in the case of the 126
body outline, this configuration is so common that it is
depicted as a generic electric guitar in a dictionary. See
Random House Dictionary of the English Language Unabridged
(2d ed. 1987) definition for the word guitar.40
39 Not only were consumers inundated with pictures of these body
shapes for sale by others, but many articles were written about
various third party guitars with these shapes. See e.g., Guitar
Player magazine excerpts. One particular excerpt reads:
But no design has ever even approached the current
dominance of the Strat-style in the contemporary
guitar scene. “It’s overwhelming,” reports Bob Capel,
from Sam Ash Music on West 48th Street in New York
City, one of the world’s leading guitar retailers.
“Very few manufacturers don’t make one. Kramer’s got
‘em, Charvel’s got ‘em, Jackson’s got ‘em, plus the
custom-made instruments. Of the people coming into
the store, I’d say at least 70 or 80% want a Strat or
Strat-styled guitar.” ...Al Julson at Knut-Koupee in
Minneapolis: “Every company’s got at least one, it
seems – Guild, B.C. Rich, Music Man. It’s a sign of
the times – the contemporary music scene just seems to
be using the Strat-style. In the ‘70s, with the
popularity of the Allman Brothers and Jimmy Page and
others, the Les Paul was popular, but there weren’t
nearly as many companies copying it.”
Smith Test. Exh. O-2 August 1987 Guitar Player magazine.
While we cannot receive the substance of the article for the
truth of the matter, we can accept this as evidence of
potential consumers being exposed to these statements.
40 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Opposition Nos. 91161403 et al.
46
In an attempt to rebut opposers’ case, applicant argues
that many of the guitars in the record are not similar in
shape to applicant’s body configurations. Applicant relies
on its cross examination of opposers’ witnesses where they
testified to differences in the shapes. While in a few
cases the guitars may have differences that may be noticed
by general consumers, in many instances the differences were
described as follows:
...[discussing the C-1 Classic] it looks to me the
top horn is slightly longer, the bottom horn is
slightly longer. But we’re talking such low
tolerances. And I guess I’m not just – I’m not
used to looking at this guitar two-dimensional
outline.
Q. What about the – when you said the horn was
longer, you mean in a direction from the bottom of
the guitar up toward the head stock?
A. The balance point. But we’re talking an
eighth of an inch, if that.
Q. What about the width of the horns in comparing
the C-1 Classic to what’s depicted in [126].
A. The C-1 Classic is never meant to be a two-
dimensional guitar. The horns have a real unique
contour. So again, unless I was laying two like
templates on top of each other, I can’t tell you
to be precise.
Q. So the horns of the C-1 Classic may be
narrower than what’s depicted in [126], you’re
just not sure?
A. We’re talking, in guitar terms, you know, if I
had calipers, I mean, you’re talking fractions,
millimeters, if that. And depending where in the
horn, does it get thicker as it goes down? I
mean, I can’t give you an exact answer on that.
I’ve never overlaid it on a Strat template.
Ciravolo Test. pp. 81-82.
Below is Schecter’s C-1 guitar, the 126 drawing, and
one of applicant’s guitars for comparison:
Opposition Nos. 91161403 et al.
47
. 41
Schecter has also sold the traditional model shown
below again with the 126 drawing and one of applicant’s
guitars for comparison:
While the record includes a spectrum of guitars, even
looking only at those that are identical, there is
sufficient support to establish rampant third-party use over
41 From Holtry Test. Exh. No. 218 Intel advertisement with a
Stratocaster [127] body.
Opposition Nos. 91161403 et al.
48
the course of over three decades. Moreover, those guitars
that are close or very similar confirm the lack of
distinctiveness. It is simply not reasonable to conclude
that the average consumer of guitars, which would include
non-musical parents buying a guitar for their child, could
distinguish one guitar from another based solely on a
millimeter of difference in the body shape. As the Board
stated in Gibson Guitar Corp., 61 USPQ2d at 1951-52,
“[a]lthough guitar collectors and aficionados may well be
aware of these differences, the determination of acquired
distinctiveness must be made on the basis of casual guitar
purchasers as well [which includes] people who wish to learn
guitar as a hobby, or by parents for their young children.
Such casual purchasers are not likely to note the
differences between applicant’s guitar configuration and
those of others, let alone recognize the overall
configuration as a trademark without significant education
on the part of applicant.”
Applicant also takes issue with the lack of evidence
regarding the amount of sales of these goods in the United
States;42 however, the issue is consumer perception which
42 There is some testimony regarding opposers’ sales by volume;
however, applicant objected to this testimony on the basis that
it was requested but not provided during discovery. After a
review of the parties’ arguments on this point we overrule the
objections. It is clear that applicant had been dissatisfied
with opposers’ discovery responses, communicated with opposers on
this point, and was told the information requested was not kept
Opposition Nos. 91161403 et al.
49
can be addressed by understanding consumer exposure to the
goods and the lack of sales numbers is not fatal to
opposers’ case. Given the decades-long advertising by
opposers and third parties as shown in opposers’ notices of
reliance and testified to by opposers, we may infer that at
least a steady stream of sales is occurring over the
decades. In addition, the photographs of the 2007 NAMM show
reveal a multitude of companies displaying their identically
shaped guitars, and for several we have testimony, supra,
that the witnesses have seen those types of guitars (in the
shape of 126, 928 or 127) sold over the decades in the
United States. See, e.g. Kaplan Stip. Aff. Exh. No. O-104
(Aria, Hohner, Fernandes, Samick, Yamaha and of course the
opposers ESP, Schecter, JS Technologies, Inc., Anderson
Guitarworks). While we do not have sales numbers for those
goods in the United States, again we may infer that for
those for which we have testimony that they were for sale in
the United States in the 70s, 80s and 90s, that they
continue to be for sale and that is why they continue to
participate in the annual NAMM show.
in the manner requested. Applicant could have filed a motion to
compel but did not. See The H.D. Lee Co., Inc. v. Maidenform,
Inc., 87 USPQ2d 1715 (TTAB 2008). To the extent the testimony is
inconsistent with the discovery responses, is speculative or
unsupported by documentary evidence, this serves to limit the
probative value of that testimony. Finally, while we have
overruled the objections, the Board has not relied on this
challenged testimony in reaching its decision.
Opposition Nos. 91161403 et al.
50
Finally, there is no evidence of record that from the
first production of the guitars incorporating these shapes
in the early 1950s until 2003, that applicant or its
predecessors in interest ever treated the outlines of the
body shapes as trademarks. In fact, we may infer from the
evidence of record that applicant and its predecessors
themselves did not view them as trademarks. They never
policed the body shape, only the word marks and headstock
profiles. In addition, they never claimed trademark rights
in the body outlines publicly through, for example, the
catalogues, until 2004. Rather, they only claimed the word
marks and the headstock profiles. In the meantime, many
other guitar manufacturers sold guitars with the identical
body shapes for at least 30 years, either as complete
guitars or in the form of kits.
In view of the above, we find that opposers’ have
proven their claim that the applied-for configurations are
generic.
In an attempt to sweep away the inescapable conclusion
of genericness, applicant has riddled the testimony with
machine-gun fire objections. However, even if we only
considered the evidence submitted under opposers’ notices of
reliance and applicant’s evidence, we would come to the same
conclusion.
Acquired Distinctiveness
Opposition Nos. 91161403 et al.
51
We next address opposers’ claim that, in the event the
configurations are not generic, applicant has not satisfied
its burden to show acquired distinctiveness.
As discussed above, this record establishes that for at
least 30 years consumers have been exposed to guitars
manufactured and/or sold by third parties that have body
outlines that are identical or substantially similar to each
of the applied-for configurations. Thus, opposers have met
their initial burden to present prima facie evidence or
argument upon which we could reasonably conclude that
applicant’s mark has not acquired distinctiveness. Yamaha,
6 USPQ2d at 1005. In the face of this rampant exposure to
third-party guitars for at least 30 years, applicant
attempts to carry its burden to show acquired
distinctiveness.
Applicant argues that these shapes have achieved an
iconic stature but the issue before us is whether these
designs are recognized by consumers as indicating a single
source or merely as a type of body design that comes from
many sources. Thus, even if the designs are iconic that
does not, by itself, lead to the conclusion that they
indicate a single source. Applicant relies upon the
following to establish that its marks have acquired
distinctiveness: a survey, long use, sales volume,
advertising expenditures, media exposure, licensing/notice,
Opposition Nos. 91161403 et al.
52
testimony regarding recognition of the mark, and intentional
copying.
After an exhaustive review of the record, we conclude
that it does not support a finding of acquired
distinctiveness.
Applicant’s Survey
Applicant’s expert witness, Gabriel M. Gelb of Gelb
Consulting Group Inc., performed a survey which is of
record.43 In rebuttal, opposers presented expert testimony
challenging the probative value of applicant’s survey.44
Mr. Gelb reported that 58%, 50% and 21% of respondents
identified the Telecaster [928], Stratocaster [126], and
Precision Bass [127] shapes, respectively, and 65%, 64%, and
64% of respondents identified applicant as the manufacturer
of guitars known as the Telecaster, Stratocaster and
Precision Bass, respectively.
43 Opposers’ objections to Mr. Gelb’s testimony and to the survey
are overruled as they go to the weight of the evidence rather
than its admissibility, and we therefore consider the survey for
whatever probative value it may have.
44 Applicant’s objections to Mr. Gleason’s testimony are
overruled. We find the record establishes that he is
sufficiently qualified to serve as a rebuttal expert as to the
general methodology and implementation of the survey. Further,
we do not find Mr. Gleason’s testimony to be tainted by extreme
bias. This simply goes to the weight to be accorded his
testimony. Finally, while a party has a duty to supplement
discovery responses, we see no violation here. Upon retaining
Mr. Gleason for rebuttal testimony, opposers timely supplemented
their responses.
Opposition Nos. 91161403 et al.
53
The survey was conducted in four different geographic
locations in Houston, Texas (Evans Music City and Bellaire
Music), Chicago, Illinois (Guitar Center and American
Music), Philadelphia, Pennsylvania (Medley Music), and
Portland, Oregon (Guitar Center). Gelb Test. Exh. No. A-
198. The relevant population was defined as “persons who
own or plan to own an electric guitar.” The survey was
conducted in front of the display windows of six different
retail musical instrument stores. Potential participants
were selected outside these stores and asked if they own or
plan to own an electric guitar and, if so, if they would be
willing to participate in a “national survey” for a
“national maker of guitars.” Respondents were then asked a
qualifying question as to their level of guitar-playing
skill. Those who answered that they do not play the
electric guitar were eliminated. The total qualifying
sample consisted of 403 individuals who play the guitar at
varying levels. The interviewer then went through the
following line of questioning:
What I’d like to do now is to show you some shapes
of guitars, some or all of which you might
recognize. I’m going to ask you – for each shape
– if it represents a specific guitar or bass
guitar. It’s OK to say if you don’t know. I’m
going to ask you if you know the name of each
specific guitar shown by its shape. It’s OK to
say if you don’t know. Can you tell me the name
or names of that guitar? Why do you believe that
shape is a _______ guitar? Can you tell me the
company or companies that makes that guitar? Why
do you believe that shape is made by ______.
Opposition Nos. 91161403 et al.
54
Opposers have raised a number of perceived flaws
regarding the survey. In particular, opposers point to the
failure of applicant to disclose the rules and procedure for
coding the raw data making it impossible to assess the
reliability of the survey. In addition, opposers contend
that the interviews were conducted in circumstances that
could have influenced the answers of the respondents and the
order of the questions may have been structured to bias the
answers of the respondents.
We find that the inability to review either the coding
rules and procedures or, more importantly, the verbatim
responses, lessens the probative value of the survey
report’s conclusions. While it may be that many of the
responses were “one or two word answers,” App. Br. p. 36,
such information is helpful, and in some cases quite
revealing, in evaluating the overall probative value of the
survey results. Moreover, the fact that opposers did not
“propound a single document request in these proceedings,
much less one that would have encompassed the data
underlying the Gelb Survey,” App. Br. p. 35, does not
obviate the need for the Board to be able to review this
information.
In addition, the probative value of the survey is
weakened inasmuch as it was conducted with the interviewees
facing the display windows of stores selling electric
Opposition Nos. 91161403 et al.
55
guitars, two of which (Guitar Center stores) are known to
carry a significant number of applicant’s guitars. Gelb
Test. p. 148. We do not know if applicant’s guitars and
word marks were in the display windows but when asked if
that would bias the responses Mr. Gelb answered “what the
impact would be of the Fender in the window, assuming there
was a Fender in the window, I mean I’m not sure what that
would mean.” Gelb Test. p. 148. See J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, § 32.171 n. 1
(4th edition updated 2009), citing, Marcalus Mfg. Co. v.
Watson, 156 F. Supp. 161, 115 USPQ 232 (D.D.C. 1957), aff’d,
258 F.2d 151, 118 USPQ 7 (D.C. Cir. 1958) (location of
secondary meaning survey, where participants could see
background design with the word mark, tainted survey).
The probative value of the survey is further weakened
by the exclusion of an entire segment of the relevant
population, those who own or want to own an electric guitar
but do not play. American Basketball Ass’n v. AMF Voit,
Inc., 358 F. Supp. 981, 177 USPQ 442 (S.D.N.Y. 1973, aff’d
without op., 487 F.2d 1393, 180 USPQ 290 (2d Cir. 1973),
cert. denied, 416 US 986, 181 USPQ 685 (1974) (because not
all potential purchasers were included, survey accorded
limited probative weight).
Opposers also argue that the order of the questions was
flawed inasmuch as they “were asked in such an order as to
Opposition Nos. 91161403 et al.
56
ask for a brand name before a manufacturer’s name [and i]n
this circumstance, where Applicant’s brand names (Strat,
Tele and P-Bass) are well advertised registered trademarks,
identification of the brand before the name of the
manufacturer’s is a critical error, as it suggests an answer
[and] any such bias could easily been disproven by simply
reordering the questions and comparing responses.” Br. p.
55.
Applicant responds that the questions were ordered in
this manner “to address a common consumer perception issue,
which is that many consumers think about and know of
products by their brand name, and sometimes not necessarily
by the manufacturer” and the reliability of the survey “is
confirmed by the fact that most participants know both an
FMIC brand name and named ‘Fender’ as the single source for
the FMIC Marks.” Br. p. 35. Further, applicant argues that
in order to “ensure a further level of reliability and to
verify the participant’s rationale for identifying a single
source of the configuration” the survey included the follow
up question “why” to see if the respondents have “a complete
understanding of why they have that specific answer.” Id.
In this case, while we do not find the ordering of the
questions to have fatally tainted the responses, the
reliability of the survey would have been increased if the
questions had been reordered. For example, after answering
Opposition Nos. 91161403 et al.
57
the question as to the “name” of the shape, when asked why a
respondent thought the shape came from a particular company
the top reason given for the 928 Telecaster shape was
“Fender makes Squier/Telecaster/Jaguar.” Exh. No. A-198.
This could indicate that asking for the “name” first
influenced the response to the “company” question. This
could be particularly true here where applicant’s products
have a large market share and its brand names may have been
in front of the interviewees.
We further note other more subtle biases in the survey
presentation. For example, during testimony Mr. Gelb was
asked whether “by saying national maker of guitars” he was
biasing the respondents into thinking about only large
guitar companies. He answered as follows:
Well, I don’t know how to answer that because
anybody who has a website and offers guitars,
whether or not they have one location or fifty
locations is a national maker of guitars, as far
as I’m concerned. And I think that’s a pretty –
that’s a pretty clear question. If I had not said
national, I probably really would have gotten a
bunch of local guitar makers who don’t sell
outside of Houston, and that would not have been
productive.
Gelb. Test. p. 132.
In addition, the questions prompt the respondents that
these are “recognizable” shapes and ask for a “specific”
shape. When asking the next question, which company or
companies manufacture this guitar, after the respondent
answered with one name they did not ask a follow up question
Opposition Nos. 91161403 et al.
58
if the respondent knew of any other companies that make
guitars with this shape. When asked about this Mr. Gelb
testified that it is implicit in the question when asking
“company or companies.” Gelb Test. p. 143. However, given
applicant’s market share, it “is not surprising” that
interviewees could recall that applicant makes guitars with
these body shapes “in light of applicant’s sales and
advertising, its market share and the length of time that it
has sold” guitars.45 British Seagull Ltd. v. Brunswick
Corp., 28 USPQ2d 1197, 1201-03 (TTAB 1993), aff’d 35 F.3d
1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 US
45 This problem is illustrated by the 32% false positive responses
as to the imaginary shape. Thirty-two percent of respondents
believed an imaginary shape came from applicant. Gelb Test. Exh.
No. A-198. Thus, when we subtract the positive results of the
control shape from the positive results on the target shapes the
results are much lower, 32 and 33 percent. We note that Mr. Gelb
did not view these results as a problem:
So the fact that when you have something that you
can’t really see what the configuration is and you in
some proportion ascribe it to the market share leader,
I don’t think that’s strange...And that when
confronted with a strange shape, some proportion said
that was Fender. I don’t find that’s strange, nor
does it controvert the other findings that I’ve
described...and secondary meaning surveys, you are
looking just for the facts as the respondents know
them, and there is no reason to subtract anything from
what are the perceived facts.
Gelb Test. pp. 160-61, 162, 164.
Mr. Gelb’s conclusory statement does not provide sufficient
explanation as to why these false positives do not serve to
impact the other results. Applicant’s explanation that the
imaginary shape applicant provided actually resembles
applicant’s other guitars, frankly, merely serves to confuse
the issue even further rather than clarify or explain away
these false positives.
Opposition Nos. 91161403 et al.
59
1050 (1995). Thus, the questions “name or names” and
“company or companies” allowed respondents to “just play
back the [name] of the best-known and dominant [brand].”
McCarthy, supra § 32.172.46
In support of its position that the survey is highly
probative of acquired distinctiveness, applicant relies on
In re Owens-Corning Fiberglas Corp., 227 USPQ at 424 (survey
showing 41% and 50% recognition, submitted together, found
sufficient to establish acquired distinctiveness of trade
dress) and In re Jockey Int., Inc., 192 USPQ 579, 581 (TTAB
1976) (survey showing 51.6% recognition found sufficient to
establish acquired distinctiveness for trade dress). The
records in these cases did not include over 30 years of
rampant diluting third-party use. In addition, in Owens-
Corning the court stated “The Solicitor further criticized
the survey on the basis that the way the question was
46 On this point, we note that a more useful survey in this case
might have been one that follows the Teflon format where
interviewees are first instructed on the differences between
matter that is generic and matter that is source-identifying. E.
I. Du Pont de Nemours & Co. v. Yoshida International, Inc., 393
F. Supp. 502, 185 USPQ 597 (E.D.N.Y. 1975); McCarthy § 12:16. In
such a survey, the control shapes would include actual generic
shapes and the question would inquire whether that is a shape
that comes from one company or one that comes from more than one
company. While we recognize that the Teflon survey is directed
at the question of genericness, and applicant here is relying on
the survey to establish acquired distinctiveness, given the
market share and the fact that genericness is a claim in this
case, the Teflon format might have served to answer the lingering
question, are respondents recognizing a brand or are applicant
and its Stratocaster, Telecaster and Precision Bass guitars,
simply dominant in the marketplace.
Opposition Nos. 91161403 et al.
60
presented inhibited plural responses from persons who might
have believed that more than one manufacturer makes ‘pink’
insulation. We do not agree that such criticism requires
outright rejection of survey data showing that 50% of the
respondents named OCF, the only manufacturer to color its
insulation pink. Whether or not this survey alone is
conclusive, the results show a syndetic relationship between
the color ‘pink’ and Owens-Corning Fiberglas in the minds of
a significant part of the purchasing public.” Id. at 424
(emphasis added). Given the record in this case, at most
this survey may indicate that a certain percentage of the
respondents associate these shapes historically with
applicant or applicant is the most well known manufacturer
but not that the shapes connote single source.
Accordingly, we conclude that applicant’s survey is not
particularly probative of acquired distinctiveness and does
not overcome the high bar set by the lack of exclusive use
for decades.
Length of Use
While long use of a mark is a relevant factor to
consider in determining whether a mark has acquired
distinctiveness, In re Uncle Sam Chemical Co., Inc., 229
USPQ 233 (TTAB 1986), it is not necessarily conclusive or
persuasive, In re Packaging Specialists, Inc., 221 USPQ 917,
920 (TTAB 1984). In this case, while there has been over 50
Opposition Nos. 91161403 et al.
61
years of continuous use for each of the configurations, the
probative value of this factor is greatly diminished
inasmuch as this use was not substantially exclusive given
the third-party uses.
Sales Volume/Advertising Expenditures
Applicant has submitted evidence sufficient to
establish substantial sales and market share over the years
and extensive expenditures on advertising. However, while
sales volume figures may demonstrate the growing popularity
of the products, mere figures demonstrating successful
product sales are not probative of purchaser recognition of
a configuration as an indication of source. See Braun Inc.
v. Dynamics Corp., 975 F.2d 815, 24 USPQ2d 1121, 1133 (Fed.
Cir. 1992) (“[L]arge consumer demand for Braun’s blender
does not permit a finding the public necessarily associated
the blender design with Braun.”); In re Bongrain Int’l
(American) Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1729 (Fed.
Cir. 1990) (growth in sales may be indicative of popularity
of product itself rather than recognition as denoting
origin). Moreover, it is well established that compelling
sales and advertising figures do not always amount to a
finding of acquired distinctiveness. See In re Boston Beer
Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999)
($85,000,000 in annual sales revenues and $2,000,000 in
advertising expenditures found insufficient to establish
Opposition Nos. 91161403 et al.
62
acquired distinctiveness); Goodyear Tire & Rubber Co. v.
Interco Tire Corp., 49 USPQ2d 1705 (TTAB 1998) ($56,000,000
sales revenues and 740,000 tires sold insufficient to show
acquired distinctiveness of tire tread design).
Thus, although there have been substantial sales and
expenditures on advertising, the more important question is
how is the alleged mark being used, i.e., in what manner
have consumers been exposed to the alleged mark so that we
can impute consumer association between the configurations
and the product producer. To determine whether a
configuration has acquired distinctiveness, advertisements
must show promotion of the configuration as a trademark.
Here, other than trademark notices on advertisements
that include the body designs beginning in 2003,47 there is
nothing in the record that shows that the alleged marks are
being promoted as source indicators. The examples in the
record simply show a picture of the product and in all of
the examples the word mark FENDER is prominently
displayed.48
Applicant’s assertion that it promotes the
configurations as trademarks by “look for” advertising is
47 Exh. No. A-148. With regard to the trademark notices, see
discussion supra.
48 It is possible that one or two examples without the mark Fender
may be in this voluminous record.
Opposition Nos. 91161403 et al.
63
not supported by the record. Mr. McDonald testified as
follows:
Q. You’ve used that term a couple of times today,
“beauty shot.” What do you mean by that?
A. “Beauty shot” is kind of a subgroup of what we
call the “moneyshot” on a “look for” type
advertising campaign, where we depict our product,
you know, the points of differentiation in the
best possible light. ...
Q. And what portion of the guitar is depicted in
that money shot or what did you call it? Beauty –
A. Yeah, “beauty shot” is what we call it. The
body, where the finish and – you know, where our
differentiation lies in the shapes of the bodies,
the finishes, you know, the ornamental features of
the guitar.
McDonald Test. pp. 103-104.
Advertising is about differentiation. You don’t
advertise things that your competitors can lay
claim to. And what is ours are the designs of our
instruments, so they feature predominantly in the
advertising. It’s basically ‘look for’
advertising, as you see in just about any
industry.
McDonald Test. p. 164.
“Look for” advertising refers to advertising that
directs the potential consumer in no uncertain terms to look
for a certain feature to know that it is from that source.
It does not refer to advertising that simply includes a
picture of the product or touts a feature in a non source-
identifying manner. Below are examples of what Mr. McDonald
pointed to as “look for” advertising.
Opposition Nos. 91161403 et al.
64
McDonald Test. Exh. A-148 FMIC001705.
This is merely a picture of the goods, not “look for”
advertising.
McDonald Test. p. 168, Exh. A-154 FMIC09004.
Opposition Nos. 91161403 et al.
65
Again, this advertisement merely presents a picture of
the product with the accompanying text, “Today, the shape
and sound are familiar. But back then, they were nothing
short of revolutionary.” In other words what is accepted as
the normal standard today was viewed as strange and
“revolutionary” when it first appeared in the marketplace.
Moreover, “[a]dvertising that touts a product feature for
its desirable qualities and not primarily as a way to
distinguish the producer’s brand is not only not evidence
that the feature has acquired secondary meaning, it directly
undermines such a finding.” Thomas & Betts Corp. v. Panduit
Corp., 65 F.3d 654, 662, 36 USPQ2d 1065, 1071 (7th Cir.
1995); Turtle Wax, Inc. v. First Brands Corp., 781 F. Supp.
1314, 22 USPQ2d 1013, 1022 (N.D. Ill. 1991); In re Edwards
Ski Products Inc., 49 USPQ2d 2001 (TTAB 1999); In re Pingel
Enterprise, Inc. 46 USPQ2d 1811 (TTAB 1998). See also First
Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1 USPQ2d
1779 (9th Cir. 1987) (no acquired distinctiveness found
where “It did not, for example, order consumers to look for
the ‘familiar yellow jug’”); Sykes Laboratory, Inc. v.
Kalvin, 610 F. Supp. 849 (C.D. Cal. 1985) (cosmetic
container held without acquired distinctiveness because
claimant “never promoted its design separate and apart from
the trademark name”).
Opposition Nos. 91161403 et al.
66
McDonald Test. p. 194, Exh. A-154
FMIC009569.
The advertising copy above this picture reads,
“professionals choose a Fender bass more often.” It does
not direct viewers to look for that body outline to know it
comes from applicant. Instead, it prominently displays the
Fender trademark in the bottom of the picture to identify
the source.
Applicant also points to the 2004 edition of Frontline
celebrating the 5Oth anniversary of the Stratocaster, and
particularly notes the pictures of the Stratocaster on pages
2 and 3. However, the main focus is on the head stock, and
the following is written next to a picture of only half of
the Stratocaster body: “It’s the de facto standard. Our
literature calls it the most popular electric guitar ever
made. When people think of an electric guitar, they think
of that shape.” McDonald Test. Exh. A-148 FMIC02299. This
Opposition Nos. 91161403 et al.
67
alludes to at least the outline shape being a “standard” or
“generic” shape for an electric guitar.
An advertisement in the August 1986 issue of Guitar
Player, that applicant points to as “look for” advertising,
again is simply a picture of the product. See, e.g., A-154
FMIC009784-9786. Moreover, as discussed infra the
accompanying text in the advertisement acknowledges copies.
Another advertisement in Guitar Player in a 1981 issue
includes the following:
Unfortunately, many guitar and accessory companies
have been more concerned with offering you a look-
alike. But at Fender, we believe you shouldn’t
settle for anything less that true Fender sound.
And our Fender products are proof of it. So the
point of all this is simple. You can play an
original or you can end up with one of the many
copies. But don’t say we didn’t warn you.
Exh. A-154 FMIC009858.
Finally, the advertising copy in a 1990 advertisement
reads: “We created the Strat Ultra for the working pro-the
musician who’s been there and back. You’re not taken in by
look-alikes or by wild claims.” Exh. A-154 FMIC009878.
In short, there is nothing in the record that promotes
the configurations in a way that would imbue them with
source-identifying significance; rather, the advertising
simply shows the product like any advertising would.
Moreover, in some cases the advertising severely undercuts
applicant’s position in that it recognizes copies and treats
the product as an industry standard.
Opposition Nos. 91161403 et al.
68
There are cases where the lack of “look for”
advertising was not fatal in view of industry practice to
recognize certain configurations as source indicators. See
Yamaha, 6 USPQ2d 1001 (where the promotional display of
product pictures served as a vehicle for stimulant
recognition of the head shape designs given the custom in
the industry to use headstocks as source identifiers); In re
The Black & Decker Corp., 81 USPQ2d 1841, (TTAB 2006)
(industry practice to use key head design as source
indicator).
The third-party registrations submitted by applicant
for guitar body designs (App. NOR) support applicant’s
position that the United States Patent and Trademark Office
recognizes guitar body designs as capable of indicating
source and the industry’s practice of registering guitar
body designs.49
In Yamaha, the evidence of record included four other
guitar makers that made “similar” headstocks. In addition,
the application had been filed in 1979 based on first use in
1977, in other words, there were only two years in which
concurrent use could have had dilutive effect. In our case,
there has been over thirty years of “an environment of
49 We note, however, that in many of these examples the
applications were filed within five years, as opposed to 50
years, of first use, indicating a recognition and intention that
the body design should be treated as a trademark.
Opposition Nos. 91161403 et al.
69
proliferation” of usage by others of identical body shapes
and very similar body shapes. Yamaha, 6 USPQ2d at 933.
Further, in Yamaha the Board noted that in fact one of the
“competitive” headstocks was a registered trademark and
while two of the designs “seem somewhat similar” the two
others were “quite distinguishable.” Yamaha, 6 USPQ2d at
933 fn. 13. Finally, the Board noted that it was “mindful
of the inability of opposer’s highly limited evidence to
demonstrate such commonality or ornamental significance that
an unusually heavy burden would be needed to sustain a
Section 2(f) burden of proof.” Yamaha, 6 USPQ2d at 935. In
the case before us, opposers’ evidence cannot be
characterized as “limited.” Opposers’ evidence coupled with
applicant’s inaction in failing to police other uses of
these designs and its omission of these body designs from
its trademark assertions in its own magazine (see e.g. the
trademark statements in applicant’s Frontline magazines from
1990-2003 Exh. A-148) clearly demonstrate such commonality
that applicant has an unusually heavy burden in this case.
Thus, the absence of “look for” advertising is just one more
piece added to an avalanche of evidence that obliterates any
claim to source-identifying significance of the two-
dimensional outlines. Therefore, applicant’s evidence of
industry practice, while supportive of its case, cannot
overcome thirty years in which many competitors made,
Opposition Nos. 91161403 et al.
70
displayed and sold to consumers guitars with the identical
body shapes.
Licensing Agreements
Applicant argues that its broad licensing program which
spans video games, restaurants, movies and merchandising
items, keeps its marks “in sights and minds of consumers on
a daily basis.” Br p. 15. We begin by noting that, two of
the agreements were signed shortly before the filing date of
the applications and the remaining were signed thereafter.
Further, some of them are redacted in such a manner that it
is not possible to know what trademarks specifically are
being licensed together in the same agreement. Viewing the
goods (mouse pads, luggage tags, lunchboxes and t-shirts) it
is reasonable to infer that the agreement includes at a
minimum the mark FENDER, because it always appears with the
licensed products. See e.g., Exh. A-245. Even the few
merchandise products that are just the body outline, include
the word mark.
Applicant argues that “[a] number of third party guitar
manufacturers recognize the status of the FMIC Marks as
highly recognized and valuable icons [and applicant]
licenses certain musical instrument manufacturers to employ
the [applicant’s] marks in connection with the manufacture
and sale of electric guitars, or components thereof,
including BBE Sound (parent of G&L), DeTemple Guitars, Dewey
Opposition Nos. 91161403 et al.
71
Decibel, and All Parts Music Corp.” Br. pp. 13-14. First,
recognizing these shapes as “highly recognized” and
“valuable icons” can simply mean they recognize the
product’s desirability not that they identify a single
source. In fact, these licensees market their goods under
their own trademarks. Further, based on this record, four
manufacturers is not a particularly representative or
impressive number for this industry. This proceeding alone
has 17 guitar manufacturer/sellers opposing registration of
these proposed marks.
Media Exposure
Applicant’s guitars, in particular the guitar
encompassing the 126 body configuration, have been played by
many musicians on television and in live concerts. However,
opposers’ guitars encompassing these shapes have also
received this type of media coverage. (MTV and The
Simpsons). See, e.g., Anderson Test. p. 57 Exh. No. O-358.
Moreover, these exposures are of the entire guitar. There
is nothing to single out the body outlines by themselves.
Similarly, the examples of exposure through third-parties’
permitted or licensed use in various media, including
television, live performances, movies, charitable events and
merchandising does not direct the attention of potential
consumers to identify the outline of the body configurations
as an indication of commercial source. With regard to the
Opposition Nos. 91161403 et al.
72
books written about applicant’s guitars, it is not known
what exposure these book have had to the consuming public.
Gibson, 61 USPQ2d 1948.
Direct Consumer Testimony
Direct consumer testimony can be relevant to establish
acquired distinctiveness. Applicant submitted as “direct
consumer testimony” a retailer of applicant’s guitars
(Umanov testimony), the author of a book about Fender and
curator of the exhibition entitled “Five Decades of Fender.
The Sound Heard Around the World” at the Fullerton50 Museum
Center (Smith testimony), and one professional musician
(Lofgren testimony). This testimony has little probative
value as it comes from only three witnesses and does not
represent the average customer for guitars. “It is well
settled that the assertions of retailers, who know full well
from whom they are buying, that they themselves recognize a
particular designation as a trademark, or that they believe
that their customers consider it to be a mark, cannot serve
to establish that members of the purchasing public, who come
to the marketplace without such specialized knowledge, would
in fact recognize the designation as an indication of
origin.” In re Semel, 189 USPQ 285, 288 (TTAB 1975). See
50 Fullerton, California is where Leo Fender, the creator of the
Stratocaster, Telecaster and Precision Bass, had his
manufacturing operations. See generally Smith Test.
Opposition Nos. 91161403 et al.
73
also In re Edward Ski Products Inc., 49 UPSQ2d 2001 (TTAB
1999).
Intentional Copying
Applicant concedes to third-party use of these body
configurations over the years and seeks to use the third-
party use as support for the alleged source-identifying
significance of its configurations. However, “[c]opying is
only evidence of secondary meaning if the defendant’s intent
in copying is to confuse consumers and pass off his product
as the plaintiff’s.” Thomas & Betts Corp. v. Panduit Corp.,
65 F.3d 654, 36 USPQ2d 1065, 1072 (7th Cir. 1995). See also
In re Edward Ski Products, 49 USPQ2d at 2005. This record
supports quite the opposite. All examples of opposers and
third-party use clearly display the manufacturer’s trademark
or trade name on the guitar. Thus, it does not appear that
opposers and third parties intended to copy applicant’s
guitar shapes for the purpose of confusing consumers and
passing off applicant’s guitar shapes as their own.
Applicant argues that “many opposers utilize well-known
FMIC word marks, or similar variations, in connection with
[the] sale of their guitar copies, thus causing confusion
and taking advantage of the goodwill FMIC has established in
the FMIC Marks and its corresponding word marks.” Br. p.
47. However, none of these uses serve to confuse the source
of the product but rather these uses serve to describe the
Opposition Nos. 91161403 et al.
74
shape or style of the product.51 See, e.g., Sadowsky Test.
Exh. No. O-20 (printout from web page describing various
Sadowsky guitars as “Strat style”). Moreover, this clearly
is not a case where applicant “vigorously pursued
manufacture of knockoff goods in an effort to protect its
mark.” Hermes Int’l v. Lederer de Paris Fifth Avenue, Inc.,
219 F.3d 104, 55 USPQ2d 1360, 1365 (2d Cir. 2000).
While it may be that the more knowledgeable consumers
(professional musicians, authors or retailers) are familiar
with the history and origin of these shapes, i.e., Leo
Fender, based on the multitude of third-party sources for
these body outlines and applicant’s failure to promote or
police these outlines as trademarks, this record does not
support a finding that consumers with varying degrees of
knowledge would or could identify the source of a particular
guitar based solely on the outline of these body
configurations.
As noted above, applicant refers to the “iconic” status
of these outlines in American popular culture; however, we
must resolve a narrow issue: Do consumers associate these
two-dimensional outlines, depicted in the drawings, as
indicators of source? After a thorough review of this
51 The appropriateness of using applicant’s word marks in a
descriptive manner is not at issue in this case; however, we note
the record includes examples of this type of descriptive use in
print and on the internet.
Opposition Nos. 91161403 et al.
75
extensive record, we conclude that applicant has not
established acquired distinctiveness such that these two-
dimensional outlines of guitar bodies, standing alone, serve
to indicate source.
Accordingly, based upon consideration of all the
evidence in the record, we find that opposers have made a
prima facie case that applicant’s evidence of acquired
distinctiveness is inadequate and that applicant has failed
to establish that the configurations involved in the
applications before us have acquired distinctiveness within
the meaning of Section 2(f).
Decision: Each of the consolidated oppositions is
sustained against the application(s) against which they were
brought based on the claim of genericness and in the
alternative that the configurations have not acquired
distinctiveness; and application Serial Nos. 76516126,
76516127 and 76515928 are refused registration.
