Peavey Electronics Corp.—as well as 16 other companies, including Stuart Spector, U.S. Music, Tradition Guitars, Schecter Guitar Research, ESP, and Saga—has won a landmark body shape case that could affect trademarks in our industry for decades to come.
The United States Patent and Trademark Office’s Trial and Trademark Appellate Board (TTAB) on March 25 rejected Fender’s belief that its Strat, Tele, and P Bass guitar body shapes should be trademarked. The TTAB said the body shape configurations are “generic,” meaning they are free for any other company to use. The TTAB added in a written statement: “[T]here is no evidence of record that from the first production of the guitars incorporating these shapes in the early 1950s until 2003, that [the] 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 [the] applicant and its predecessors themselves did not view them as trademarks. [Fender] never policed the body shape, only the words marks and headstock profiles. In addition, [Fender] never claimed trademark rights in the body outlines publicly through, for example, the catalogs, until 2004.”
“It’s a substantial victory for the opposers specifically, and for the guitar industry as a whole,” said Ron Bienstock, attorney with Bienstock & Michael P.C., who represented the companies against Fender. “It’s a complete unequivocal victory.”
Fender had argued before the TTAB that its body shapes had reached iconic status and the body shapes were recognized by consumers as coming from a single source. However, the TTAB rejected that claim, saying, “After an exhaustive review of the record, we conclude it does not support a finding of acquired distinctiveness.”
Fender surveyed many customers visiting music instrument stores in an attempt to prove the body shapes are of iconic status however. But, according to the TTAB, the survey was flawed for several reasons, and in its ruling said, “[A]t most, this survey may indicate that a certain percentage of the respondents associate these shapes historically with [Fender] or [Fender] is the most well-known manufacturer, but not that the shapes connote a single source.”
Said Peavey Electronics founder Hartley Peavey: “My opinion is you cannot change history with threats and bluster.”
Fender issued the following statement: “Fender Musical Instruments Corporation (FMIC) is disappointed with the recent decision by the Trademark Trial and Appeal Board of the USPTO that refused registration of the two-dimensional outlines of three FMIC guitar and bass body designs. FMIC continues to believe that the extensive evidence it submitted during the course of this lengthy case was more than sufficient to establish that consumers associate FMIC being the source of these designs and thus are entitled to registration. FMIC is reviewing the decision and is evaluating its alternatives, including, but not limited to appealing the decision. FMIC will also continue to actively monitor and protect all of its trademarks and other intellectual property, in the U.S. and internationally, and will take appropriate actions, as necessary.”
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