U.S. Trademark of Fern Inlay Awarded to Gibson

[MikeEdgerton]

This is much ado about not very much. We had the same discussion a few years back about the flower pot and the bell shaped truss rod cover. It didn't seem to have a whole lot of impact on the industry.

[T.D.Nydn]

I don't think this will effect Gibson at all.people seem to think that if only Gibson now can produce a scroll and fern peghead,that they're going to put a strike on gibsons?i doubt that.you know and I know that anyone who makes a F style mandolin is copying Gibson.my own opinion,for the longest time i always thought why get a F mandolin with someone else's name on it?no matter how good it is,it is still a copy.

[NursingDaBlues]

For corporate attorneys who, in their ceaseless quest to fund their personal lifestyles, give counsel that will double the price of mandolins, oh Lord we give thanks.

[JeffD]

Wow. How did this happen? Did they just sneak one past the proverbial goalie? I can't understand how the US Patent Office could award a trademark to one company for a design that's used by pretty much all the major competitors as well (even if Gibson originally came up with it almost a century ago). I'd think the argument could be easily made that this fern design has been in the public domain for a long enough time that awarding it as a trademark to one company is improper. Did any competitors even know about this or have the opportunity to challenge it?.

I would guess this has been researched and argued and debated and backed and frothed between patent attorneys for a while, generating astronomical fees.

Its a tough one. The only reason the fern peg head is used is that is looks like the Gibson icon. Nobody came up with it in parallel by accident and said "oh no, that looks just like..." So everyone that uses it uses it knowing where it came from.

OTOH at some point it has become part of a tradition, and perhaps therefor public domain. Where is that point? Is it at the point where the general public no longer associates the tradition with the brand? Well that hasn't happened yet. Everyone knows its a Gibson design. Yet the community also knows that not every fern is a Gibson, so there is nobody making mistaking every fern for a Gibson.

It seems to me it is a little like the fellow that suddenly starts to take legal action about his neighbor's encroaching fence, after years of ignoring it. Nobody argues the survey, nobody argues the encroachment, yet there is a point, either in law or in common sense, where one loses the right to complain.

I see no clear bad guy or good guy in this. Just suddenly applied clarity where the ambiguity benefited many.

[JeffD]

As I read the filing excerpt it is not just the fern design, and not just the peg had shape, but the two used in conjunction that is claimed. Presumably one can use the fern inlay design on a peg head of a different shape.

[JeffD]

This is much ado about not very much.

As I mentioned in the other thread, it is just suddenly applied legal clarity, where the ambiguity benefited many.

What Gibson might do (here I am giving Gibson advice ) is to offer an irrevocable non-exclusive license to the design, for a one time very very affordable fee, to anyone that asks for it. Just enough of a fee to cover the incremental paperwork. This kind of thing is done all the time. They don't lose their ownership, the feature is shared with the community, but what is accomplished is this - nobody else can claim ownership of the design, and take legal action against them or anyone else.

Its kind of like buying the lot next door, in order to keep it undeveloped.

[Dave Greenspoon]

Maybe other makers will stop duplicating a design that's so prone to breakage.

Channeling Fred Rogers: Can you say RIGEL? I thought you could!

It was only by accident a long time ago that I placed my Rigel next to an F-5 and immediately grokked the reason for the peghead style. It made me smile to realize that I'll never have to worry about that type of peghead repair. :-)

So what's next for the Big G? Trademarking the term "Florentine" along with "The", the numbers 4 and 5, and the letters A and F?

[Petrus]

I can only assume that Ellis/ Precision Pearl make Gibson's fern inlays, so I would like to think they would cut him a break. Everyone else may not be so lucky.

Or Ellis could just decide to no longer make the Gibson inlays and let them find someone else to do it, unless they're being paid a whole lot for the work. Let Gibson scramble for a replacement that does the work as good, while Ellis and others go on to new designs.

[Petrus]

Gibson did this not to make money,,but so others won't make money.the over saturation of makers and fern copiers finally reached the top for them I imagine.they are trying now to protect what's theirs,and I don't blame them.ive had copyright problems before in the past,people are quick to jump on someone else's idea to make money.the entire F design is gibsons and they should patent it.if you think about it,everyone who makes a F mandolin is essentially trying to make a Gibson design,,if you came up with an oringinal mandolin design,you would patent it and protect it also I'll bet.

I wouldn't be surprised if they trademark the entire F body style. That would throw a lot of makers into a tizzy.

[Canoedad]

As of right now Two Old Hippies is still picturing a Weber Fern on their website. http://webermandolins.com/
It will be interesting to see if it remains.

[Tobin]

Its kind of like buying the lot next door, in order to keep it undeveloped.

That would be great if they had done it before everyone else had already built their condos on that lot. But in this case, since many other makers have been producing F5 Ferns for decades, it's a little late for that.

[JEStanek]

The Weber design is similar but different. All you really need is an extra leaf or changed angle and they aren't the same.

Jamie

[JeffD]

That would be great if they had done it before everyone else had already built their condos on that lot. But in this case, since many other makers have been producing F5 Ferns for decades, it's a little late for that.

While I agree, I really can see Gibson's side as well. I have at least some sympathy.

I can imagine this kind of dialog, our hypothetical condo owners and developers saying: "Yea, we knew the land wasn't really ours, never was, even though you never formally claimed it we all knew, but you haven't said boo in so many years, so look, just be quiet and go away. Its a good location and we like it and we're here and what are you going to do?"

I am not saying anyone did this or said anything like this - I just don't see any obvious bad guys, Gibson or builders, in this.

Because Gibson of course has known the design as been in use for many years. Its not like they suddenly noticed the encroachment.

So perhaps the builders might say, "hey Gibson, you snooze you lose." And perhaps they would be right, but then who is the bully.

One could say that folks have been making significant money over the years based on the designs owned by another, the attractiveness and advantages of the designs specifically being the association with that other.

I seriously am not trying to infer any malice. I am showing, I guess, that an assumption of malice could be applied to either side, and in either case it would be ridiculous conjecture.

[greenwdse]

I'm not a lawyer, but have spent a long time looking at legal contracts and I think the imporant word in the Trademark is "and". The Trademark has been granted for "...curved swirl on the top left and top right, and with a fern design within the peg head in the center and a second fern design within the lower portion of the peg head"

So the amrk applies only if all elements are present, i.e. the curved swirls and the fern design and the seccond fern. My interpretation would be that if you only have a single fern on an f-shaped peghead, you're good.

I agree. The word "and" and "with" are clear. Other than that, the other stuff can be interpreted quite broadly. What I'd like to know is, as a plant enthusiast, what would and wouldn't be considered a "fern?"

[JeffD]

The Weber design is similar but different. All you really need is an extra leaf or changed angle and they aren't the same.

And those who use the fern inlay on a differently shaped peg head would not be using Gibson's trademarked design.

[NoNickel]

They should concentrate on just building better instruments rather than silly little unimportant features.

When someone comes up with a design, or a "look" that becomes immediately recognizable, it becomes very valuable. Think of the Nike "swoosh" or "Coke" (and their bottle desgin), or MacDonald's arches. These attributes of those products have little to do with the actual product, but are enormously valuable. So the Fern inlay is not a "silly, unimportant feature." (I sure hope not. It was a $250 upcharge on my new Duff.) If Gibson created it then it was theirs and they had the right to protect it. What Gibson did wrong is wait way too long to claim it. I really don't see how they got this Mark with so many others using it. Some of the bigger companies should have have filed resistance with the PTO, but it looks like they didn't or if they did, it wasn't effective.

[JeffD]

The fern, the flower pot, the torch and wire, they are all ultimately arbitrary designs, whose only value is in evoking the quality of Gibson instruments with which they are associated. New wonderful floral and other patterns are not that hard to come up with, really, and a new design could become iconic to the mandolin on which it appears, in which case it would behoove the builder to trademark it.

[Tobin]

I can imagine this kind of dialog, our hypothetical condo owners and developers saying: "Yea, we knew the land wasn't really ours, never was, but you haven't said boo in so many years, so look, just be quiet and go away. Its a good location and we like it and we're here and what are you going to do?"

I am not saying anyone did this or said anything like this - I just don't see any obvious bad guys, Gibson or builders, in this.

Because Gibson of course has known the design as been in use for many years. Its not like they suddenly noticed the encroachment.

So perhaps the builders might say, "hey Gibson, you snooze you lose." And perhaps they would be right, but then who is the bully.

Interestingly enough, when it comes to real property, there is precedence for this. It's called Adverse Possession. If you openly build on someone else's land and use it for long enough, and the rightful owner doesn't challenge you, you eventually have a claim to ownership. It's not a principle I particularly agree with, but it is well-established in the legal world.

I just wonder if there is any crossover case to be made with respect to trademarks. Perhaps a good attorney could argue this angle successfully, viz. the issue of another maker having used the Fern design for several decades without any challenge from Gibson. Even if it wouldn't be a claim of ownership by the other maker, it could perhaps be argued as at least a right to continue using the design?

[Jim Hilburn]

The only reason there are so many mandolin builders in the first place is that Gibson for all practical purposes abandoned making mandolins, not completely but definitely anything resembling the F-5 of the Loar era. That was what the small numbers of players in the 60's and 70's wanted but there was no source so they took matters in their own hands. Even in 1970 it was a nearly 50 year old instrument and it was more like you were making a replica than infringing on their product.

So now demand for mandolins has grown exponentially and Gibson want to claim it as their own.

[JeffD]

Interestingly enough, when it comes to real property, there is precedence for this. It's called Adverse Possession. If you openly build on someone else's land and use it for long enough, and the rightful owner doesn't challenge you, you eventually have a claim to ownership. It's not a principle I particularly agree with, but it is well-established in the legal world.

I just wonder if there is any crossover case to be made with respect to trademarks. Perhaps a good attorney could argue this angle successfully, viz. the issue of another maker having used the Fern design for several decades without any challenge from Gibson. Even if it wouldn't be a claim of ownership by the other maker, it could perhaps be argued as at least a right to continue using the design?

It is an argument parallel to adverse possession. Seems like the case could be made.

If Gibson were to make the magnanimous gesture I mention above it would all be solved without all the attorney fees.

I can imagine a world where such a parallel to adverse possession were to be successfully argued. The avalanche of trademarks would be overwhelming as companies large and small panic and rush to quickly define their borders and chase away the squatters. Patent and trade mark attorneys would do well to argue adverse possession in order to drum up business.

I am not against lawyers - my goodness when you need one you need one, but they do make good money when people can't figure out a way to play nice with each other.

[Gregory Tidwell]

If I ever got around to building my own mandolin I think I would put a poison ivy inlay on it anyway, so fooey on Gibson for hogging all the great flora.

[Tobin]

If Gibson were to make the magnanimous gesture I mention above it would all be solved without all the attorney fees.

Heh, I suppose it's possible that this was their intent all along. In which case, it may have been a stroke of genius (evil genius, that is) to wait this long. Now that the Fern design is well-established in the market, all the other makers that want to continue building Fern designs now find themselves in a pickle. And for a reasonable licensing fee, or a small royalty fee for each build, they could continue doing it. Gibson suddenly gets to pocket money for doing absolutely nothing at all. Whereas, if they had trademarked it when it was new, they would have essentially cut off any potential for copies to be made by anyone else in the first place. So at this point, since it's rather too late to use a trademark as an exclusive protective measure for their design, they can use it as a source of profit. The only question is whether others will play ball.

[Nevin]

This copywright is probably close to meeningless. To get the protection of copywright law you have to be pretty agressive in defending it. This involves hiring lawyers to patrol the market looking for people who may be infringing and sending them stop letters. It can cost a lot of money. The only instrument manufacturer I know of who does this is Rickenbacker. It would be hard to say they have been defending the design when they let it be copyed for almost 100 years without saying anything.

[JeffD]

My understanding is that the concept of hitting a key board and the symbol associated with that key showing up on a screen is specifically owned by the person or persons who first thought of it. The owner offered one time non-exclusive licenses, allowing unlimited commercial use of the concept, computer manufacturers and anyone who applied. If memory serves, $75. Under $100. One time for ever. Everyone made money, nobody was screwed.

[JeffD]

This copywright is probably close to meeningless. To get the protection of copywright law you have to be pretty agressive in defending it. This involves hiring lawyers to patrol the market looking for people who may be infringing and sending them stop letters. It can cost a lot of money. The only instrument manufacturer I know of who does this is Rickenbacker. It would be hard to say they have been defending the design when they let it be copyed for almost 100 years without saying anything.

Well yes, but what it does achieve is that someone else can't easily say claim the design and go after Gibson. It adds clarity where there was ambiguity. And those who have benefited from the ambiguity can certainly feel inconvenienced.