Generic Fair Use

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Tag: genericide

The Shape of Things: Gibson sues Dean Guitars for Trademark Infringement

In May 2019, Gibson Brands, Inc. sued Armadillo Distribution Enterprises, Inc. for trademark infringement, unfair competition, and counterfeiting.[1] Armadillo may not be a well known name, but it is affiliated with the guitar brands Dean Guitars and Luna Guitars, which compete with Gibson. Gibson is one of the most prominent names in the electric guitar industry, alongside Fender. In this lawsuit, Gibson accuses Armadillo/Dean of infringing at least four “body shapes” of its electric guitar models: the Flying V, the Explorer, the ES, and the SG, each of which Gibson cites as a registered trademark.[2]

This case caught my attention because I am a guitar player and I often write about music and the music industry as it relates to trademarks and copyrights. Here are just a few examples. I do not personally own any Gibson-branded guitars (they are too heavy in the neck), but I do own one acoustic Dean Guitar – though not one of the types that is accused of infringement in this case. With regard to electric guitars, I prefer Schecter Guitars. Always a Hellraiser™.

Armadillo has not yet responded with an Answer to this lawsuit, but I anticipate Dean Guitars will present a substantial defense to all of Gibson’s claims. It is important to note that this is not a patent case. This is not about who “invented” the particular shape or style of an electric guitar. Any patent rights for these designs would have expired decades ago. Instead, this dispute concerns trademarks. It essentially seeks to determine whether a particular shape of a guitar evokes a specific source in the minds of the relevant consuming public. With regard to the guitar industry, there is a long history associated with these particular “body shapes” and how they impact pop culture and the competition between the most popular brands and manufacturers.

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Has the OREO trademark become generic?

Generic trademarks are no joke. Earlier this week, the Trademark Trial and Appeal Board ruled that the trademark BOOKING.COM was generic for travel agency and hotel reservation services. Legally speaking, if a mark is generic, it no longer serves the purpose of a trademark and cannot be protected or enforced against third party uses. According to the TTAB’s ruling, booking.com operates to essentially identify the product itself and does not operate as a source-identifier to customers. Therefore no one is entitled to exclusive use of this term in commerce.

This news triggered a few things in my mind. Recently, a friend of mine and I had lunch at a nice restaurant in the Houston area. This restaurant offered a particular dessert offering – a dressed-up, fancy Oreo cookie.[1] Now, being a trademark nerd, I noticed the lack of any trademark designation on the menu listing. No ™. No ®. And no disclaimer in the fine print suggesting that “Oreo” is a trademark owned by someone else and licensed to this restaurant. Nothing of the sort. My friend and I joked about this for a while until it occurred to me that I may have stumbled upon something interesting:

Has OREO become a generic term that no longer functions as a trademark?

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