Picking Guitar Battles: Gibson Sues Over Guitar Body Shape Trademarks
Iconic guitar manufacturer Gibson Brands served up a clear reminder of the potential consequences associated with failing to enforce intellectual property rights. Earlier this year, Gibson filed a complaint against Armadillo Distribution Enterprises for trademark infringement over the Explorer and Flying V guitar body shapes, among others.1 Armadillo owns the brands Dean Guitars and Luna Guitars, both of which compete with Gibson in the guitar manufacturing market.2 Gibson has acquired trademark rights for each of the body shapes at issue in the complaint, but the timing of those trademark registrations will likely impact the outcome of the case.3
Although Gibson introduced its classic Flying V and Explorer guitar models in 1958, the respective trademark registrations were not acquired until the late 1990s.4 In the 40 years that passed between creation of its guitar shapes and registration of the associated trademarks, Gibson was consistently lax in its approach to IP enforcement.5 As a result, designs reminiscent of the Flying V and Explorer guitar shapes proliferated with well-known brands such as BC Rich, Jackson Guitars, Ibanez Guitars, Kramer and Schecter offering variations on both shapes.6 Two of the alleged infringing guitars in the Armadillo case, the Dean Z and V models, were introduced by Dean Guitars in the late ‘70s, much to the disinterest of Gibson.7 Now, after decades of inactivity and full awareness of Dean’s guitar offerings, Gibson has decided to reverse course on its lax IP policy, but how is the case likely to play out?
Broadly speaking, trademarks are words, names, or symbols intended to distinguish one producer’s goods from those of other producers.8 Trademark law supports this intention by prohibiting subsequent producers from using a similar mark in a way that is likely to cause confusion among consumers.9 A trademark owner is generally responsible for policing its own trademarks in the market and asserting IP rights accordingly.10 In the instant case, in order for Gibson to succeed on its trademark infringement action, it must show that Armadillo’s use of the mark creates a likelihood of confusion in the minds of potential consumers as to the source, affiliation, or sponsorship of the parties’ products.11 Gibson’s ability to show consumer confusion is made more challenging by the concept of trademark “genericide.” Genericide occurs when a trademark loses its source identification with the trademark owner and instead becomes a common name for a genus of goods.12
Here, Gibson failed to educate the public on an association between the body shapes at issue and the Gibson “brand.” By not registering the guitar shapes as trademarks sooner and allowing for the unobstructed sale of similarly shaped guitars by its competitors, Gibson effectively slept on its trademark rights and accepted the public dissociation between its guitar shapes and its brand. Simply put, because of the myriad of companies offering similarly shaped guitars in the market for decades prior to this lawsuit, it is likely that Gibson has abandoned its trademark rights.
An additional hurdle for Gibson will be the requisite showing of “confusion” in the minds of potential customers. When it comes to music equipment, experienced guitarists are generally well-informed consumers. The Gibson guitar models at issue are considered to be high-end and will likely attract more sophisticated customers, who will certainly appreciate the difference between a Gibson and a Dean guitar.
See Gibson Brands, Inc. v. Armadillo Dist. Enters., Inc., No. 4:19-cv-00358-ALM (E.D. Tex. May 2019).↩
See Gibson vs. Dean: Five Things You Need to Know, Guitar.com (June 21, 2019), https://guitar.com/news/industry-news/gibson-vs-dean-five-things-you-need-to-know/. [https://perma.cc/GH8W-KRU4]↩
See Scott Burroughs, Axe Attack, Above the Law (Aug. 7, 2019), https://abovethelaw.com/2019/08/axe-attacks-the-war-over-guitar-shape-trademarks/?rf=1. [https://perma.cc/9ZU4-T9XF]↩
See David Clark, The Shape of Things, Generic Fair Use (June 27, 2019), http://www.genericfairuse.com/2019/06/27/the-shape-of-things-gibson-sues-dean-guitars-for-trademark-infringement/#_ftn11. [https://perma.cc/TPG4-G2T2]↩
See Gibson vs. Dean, supra note 4.↩
See Sport Supply Group, Inc. v. Columbia Cas. Co., 335 F.3d 453, 460 (5th Cir. 2003).↩
See Armco, Inc. v. Armco Burglar Alarm Co., 693 F.2d 1155, 1161 (5th Cir. 1982).↩
See Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 663 (5th Cir. 2000).↩
See Gary Fechter, Practical Tips on Avoiding Genericide (Nov. 15, 2011), https://www.inta.org/INTABulletin/Pages/PracticalTipsonAvoidingGenericide.aspx. [https://perma.cc/572M-VHRR]↩