Big News - Fender Loses Trademark Case

[mattsmusic]

FOR IMMEDIATE RELEASE


BIENSTOCK & MICHAEL, P.C. WINS LANDMARK TRADEMARK RULING
AGAINST FENDER MUSICAL INSTRUMENTS CORPORATION

On March 25, 2009, the United States Trademark Trial and Appeal Board overwhelmingly ruled in favor of a large group of guitar manufacturers and retailers by denying Fender Musical Instruments Corporation’s (“FMIC”) applications for federal trademark registrations of the two-dimensional body shape outlines used on its Stratocaster, Telecaster and Precision Bass electric guitars and basses. At the end of a five-year proceeding (Stuart Spector Designs, Ltd., et al. v. Fender Musical Instruments Corp., Consolidated Opposition No. 91161403), Bienstock & Michael, P.C. successfully represented all of the companies who opposed FMIC’s applications. The Board affirmed the opposers’ position that they, and the entire guitar industry, would be substantially harmed if these registrations were issued, as this would grant FMIC a monopoly to three of the most common guitar shapes used and promoted by the industry as a whole for
almost fifty years.

In a 75-page precedent-setting decision, the Board ruled that the body shapes were generic and that consumers do not solely associate these shapes with FMIC. All three applications were denied.

Ronald S. Bienstock, senior partner at Bienstock & Michael, P.C., who also argued the case at the oral hearing at the United States Patent and Trademark Office in Alexandria, VA, said, “This is an important victory, not only for our clients, but for the guitar industry as a whole. The TTAB has prevented FMIC from gaining a monopoly on these body shapes that have been used by hundreds of manufacturers for half a century. This ruling affirms what our clients, and everyone else in the industry, have known all along: these body shapes are generic and belong to everyone.” Bienstock added, “This decision has a broad impact on any trademark case where a company is attempting to recapture a trademark that it introduced some time ago, but neglected to police or protect it in any way while other companies used, marketed and promoted it.”

This dispute began in 2003 when FMIC filed three applications with the USPTO seeking trademark registration for the two-dimensional body shapes it uses on its Stratocaster, Telecaster and Precision Bass. In 2004, a group of large and small guitar manufacturers and retailers, in a “David v. Goliath” action, formally opposed the applications filed by musical instrument giant FMIC. These manufacturers included Indoor Storm, Ltd., Jim Triggs Guitars, JS Technologies, Inc., Lakland Musical Instruments, LLC, Levinson Musical Products, Ltd., Michael Tobias Design, Peavey Electronics Corporation, Raise Praise, Inc. d/b/a Tom Anderson Guitarworks, Sadowsky Guitars Ltd., Saga Musical Instruments, Schecter Guitar Research, Inc., Stuart Spector Designs, Ltd., The ESP Guitar Company, Tradition Guitars, Inc., U.S. Music Corp., Warmoth Guitar Products, Inc. and WD Music Products, Inc. Bienstock and Michael, P.C. was unanimously chosen to represent all of the opposers in this proceeding.

After five years of hard-fought litigation, which included over twenty thousand pages of evidence demonstrating countless companies who have manufactured, marketed and sold guitars that use the body shapes, the TTAB concluded, “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 [Stratocaster] body outline, this configuration is so common that it is depicted as a generic electric guitar in a dictionary.” The entire decision can be read at:

http://ttabvue.uspto.gov/ttabvue/v?p...ty=OPP&eno=246.

Bienstock and Michael, P.C. is a full-service intellectual property and entertainment law firm with offices located at Continental Plaza, 411 Hackensack Ave., 7th Floor, Hackensack, NJ 07601 and 250 West 57th Street, Suite 808, New York, NY 10107. The firm can be reached at (201) 525-0300 or through their website, www.musicesq.com

[reguv760]

In fact, in the case of the [Stratocaster] body outline, this configuration is so common that it is depicted as a generic electric guitar in a dictionary.”

wow...

Reg

[elcid]

Too bad for Fender, but I guess they should have done this 50 years ago. Too many uninspired hack companies have been making a lot of money of designs FMIC owns. I'm sure some companies do it better, but if Fender didnt give them the design and customer base they'd probably be making kitchen cabinets and end tables. The fact that Fender's design is so common that a dictionary picture of a guitar looks like a Strat should be a testament to the design, not work against them

[Gustavo777]

You can't trademark the perfect shape! In my opinion there are four perfect guitar shapes: the strat, the tele, the SG, and the Les Paul. Anything else is sub-perfect.

[elcid]

Sure you can, it's intellectual property. If they could trademark it these other companies would have to spend more time developing their own image.
The worst part is, they don't just steal the body shape, they take the whole design. How many companies make a two tone sunburst guitar with a maple neck, white pickguard and three single coil pickups, then call it anything other than a Strat? Too fcking many.

A PRS Singlecut and a Les Paul look, similar but not identical. That was a bullsht lawsuit, but Fender gets raped daily on the design they own.

[GilkyBear]

Same reason why you can't trademark the basic pickup truck design, it would monopolize the market. Although if they had done it 50 years ago as Cid said, they probably would have had a much better chance of winning. Or collecting tons and tons of royalty money.

[TongueShredder]

At the end of the day, it is always about getting more money (Monopoly). If this takes effects, everyone will start to patent shapes of cars, houses, pots, pans, shirts, pants, you name it. Its becoming a bit ridiculous

Finally, thank god, Ibanez still rules..

[The Euphor]

Originally Posted by elcid

Sure you can, it's intellectual property.

Give the rights to Leo Fender then. And woops, no more Fender - the company.

[kotornut]

I feel like Cid does. It is Fenders shape. I never call a G&L Legacy a "legacy" I call it a G&L "strat" the same with the Suhr model and so on and on. Yeah it's super common but it is their design. They should of spoke up long ago.

[C.Thep]

point and laugh at Fender!

hahahahahaha!!!!

[elcid]

Originally Posted by The Euphor

Give the rights to Leo Fender then. And woops, no more Fender - the company.

The only flaw with that logic is a company purchased the design and company from Leo Fender, so FMIC has every right to keep doing what they do.

Originally Posted by C.Thep

point and laugh at Fender!

hahahahahaha!!!!

Why point and laugh at Fender? For basically making the electric guitar what it is today and getting fcked over on the design?

Nevermind, sometimes I think of this as a guitar forum more than an Ibanez fanboy site. Silly me.

[elcid]

Originally Posted by TongueShredder

At the end of the day, it is always about getting more money (Monopoly). If this takes effects, everyone will start to patent shapes of cars, houses, pots, pans, shirts, pants, you name it. Its becoming a bit ridiculous

Finally, thank god, Ibanez still rules..

It's not a Monopoly, a ton of other companies make guitars, but if it's an damn near exact Fender copy, then Fender should get paid. There are plenty of non-Fender shaped gutiars out there but like Kotor said, people call other guitars Strats of Teles because that is what they copy, down to the smallest detail. Should Ibanez pay Fender, probably not their design is close but easily distinguishable, a lot of other companies should though. When someone makes a Alder bodied, maple necked, guitar with a pick guard, 3 single coils, a traditional trem, and calls it the "S" model, it's obvious even to the most anti-Fender posters here who is being ripped off.
Gibson, Gretsch, Dean, BC Rich, EB/MM, there are companies out there that don't have to go to Fender's well to make money.

[C.Thep]

Originally Posted by elcid

The only flaw with that logic is a company purchased the design and company from Leo Fender, so FMIC has every right to keep doing what they do.






Why point and laugh at Fender? For basically making the electric guitar what it is today and getting fcked over on the design?

Nevermind, sometimes I think of this as a guitar forum more than an Ibanez fanboy site. Silly me.

no, that's just what you do when corporations lose...it's common practice

[callen3615]

Originally Posted by elcid

sometimes I think of this as a guitar forum more than an Ibanez fanboy site. Silly me.

They never learn.

[elcid]

Originally Posted by C.Thep

no, that's just what you do when corporations lose...it's common practice

I must've missed that meeting.

I don't see what's so great about corporations losing. Has Fender ever personally wronged you? If Fender won would that mean you point and laugh at all the other corporations that were on the losing end of the decision? What if Ibanez sued another company and lost? If Ibanez sued the company that makes the Chinese knock offs and lost would you point and laugh at Ibanez?

You don't have to answer, I already know what you would say.