U.S. Trademark of Fern Inlay Awarded to Gibson

[NewsFetcher]

The Mandolin Cafe has posted the following news release:
U.S. Trademark of Fern Inlay Awarded to Gibson

Gibson Guitar Corpration has received a Trademark Serial number #86174550 on March 24, 2015 for the Fern inlay on the F-style mandolin headstock, the Mandolin Cafe has learned.



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[Delaware]

So I guess The Loar has a redesign in their future?

[Darren Bailey]

I wonder if this will bump prices up of those instruments now bearing a forbidden symbol. Copyright serves a purpose, but I guess the copyright people didn't know about the wider use of this particular property.

[mmukav]

It was awarded on my Birthday!

[Clement Barrera-Ng]

Wow.. Now when an instrument listed for sale as a 'Lawsuit' model I'd have to ask from each period.. 70s or the 2010's.

[Tobin]

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?

The big question that springs to mind is how close a similar design has to be now in order to infringe on the trademark.

[red7flag]

Just wondering if anybody knows how closely the Fern will be protected? How close a builder can come without infringing? Heard any plans?

[Tobin]

I was wondering the same thing here. Given that the drawing for the trademark is a fairly crude sketch, and doesn't have any dimensions or hard info on it, this seems to be pretty vague.

It does look pretty much exactly like the fern inlay on my Ellis, though. As much as a sketch can come, anyway. I'm supposing mine and other pre-existing non-Gibson ferns will be exempt from any legal trouble, but I really do wonder if everyone is going to have to change their designs now. And how much.

Is Gibson going to trademark the flowerpot too?

[multidon]

When you read the description, you could make an argument that the general shape of the headstock is included in the trademark.

[Timothy S]

Very interesting. Glad I got my Kimble Fern when I did!

Begs the question though...is Gibson really going to pursue legal action again every maker that uses (or has used) both the Fern and F5 headstock design? I can't help but think that the lawsuits would drag out longer than our lifetimes.

[darylcrisp]

so from here on, all mandolins built with the Fern might just have a build date inside of March 23 2015 or earlier

[Marty Jacobson]

Just wondering if anybody knows how closely the Fern will be protected? How close a builder can come without infringing? Heard any plans?

As long as they can argue that a product might be reasonably confused with a Gibson on the basis of this design, then they have a potentially good case.

[NoNickel]

Wow! I received my infringing Duff on March 23, 2015. Maybe that's why it was held up for a week in customs with no explanation?

[FLATROCK HILL]

As long as they can argue that a product might be reasonably confused with a Gibson on the basis of this design, then they have a potentially good case.

You're probably right...legally they may have a good case. I would bet that their (Gibson's) public image will suffer if they go after the 'little guys'.
Ninety years ago this might have made sense; today it looks foolish and petty. JMO.

[Timbofood]

I agree with you Flatrock, it's a little late to start that fight without having some real image trouble. I suppose theoretically it's an infringement but, after this length of time might be a little hard to say how much damage has been done. I guess we need to wait for steveindenver to give a (free) legal opinion on this....Steve?

[T.D.Nydn]

Gibson just might pursue the lawsuits,they have the money and the lawyers.look at Disney,they did the same thing,they pursued any and every infringement on their characters no matter how petty.

[darylcrisp]

so from here on, all mandolins built with the Fern might just have a build date inside of March 23 2015 or earlier

[Andrew B. Carlson]

They've got some rights to their flower pot design right?

[mtucker]

Quite entertaining...

[sblock]

The official description says this:

Description of Mark: The mark consists of a three-dimensional configuration of a peg head of a stringed musical instrument with a 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.

Translating this into English, they seem to be claiming the full 3D shape of the peghead in addition to the "classic" fern inlay, including the "curved swirl" on either side, that is, both the curleycue and the peghead scroll. In other words, the entire F-5 peghead shape.

In principle, they can haul into court and sue anyone else for trademark infringement if their pegheads look sufficiently similar that a reasonable person might confuse them with Gibson's own. It might suffice that someone merely copies the F-5 style peghead shape, irrespective of ANY inlay they might use! Such as case might, or might not, be winnable in court. Very hard to say in advance. Of course, Gibson may not actually have to sue: their lawyers may simply send threatening "cease & desist" letters to luthiers, telling them that they're infringing on a trademark, and scaring them out of using the F-5 peghead shape. That would be chilling enough!

I would be nice to know Gibson's actual intentions behind this trademark registration, but I doubt that they will be forthcoming.

[dcoventry]

Well, huh. I can't see the big deal at some level. Here does:

There are other inlays besides Fern and Flower pot that can be done that are VERY attractive. Did Gibby include Torch and Wire? Besides that, many, gasp!, non-traditional inlays are quite striking i.e. Phoenix, Rigel, Fleur de Lys etc. I know we as a people, tend towards the traditional much of the time, I feel a huge "who cares and move along" moment coming.

Head stock shape? The traditional F5 head stock as many achey-breaky parts, so would this be a great loss if the trademark issue is true? We seem to like snake heads, the mustache, paddles etc. We can do better for the balance, weight and artistic, if properly motivated.

Perhaps we look upon this as a water shed moment to advance and diversify the acceptability of design. However, I am a Rigel and Phoenix guy, so there!!

[sblock]

Well, huh. I can't see the big deal at some level. Here does:

There are other inlays besides Fern and Flower pot that can be done that are VERY attractive. Did Gibby include Torch and Wire? Besides that, many, gasp!, non-traditional inlays are quite striking i.e. Phoenix, Rigel, Fleur de Lys etc. I know we as a people, tend towards the traditional much of the time, I feel a huge "who cares and move along" moment coming.

Head stock shape? The traditional F5 head stock as many achey-breaky parts, so would this be a great loss if the trademark issue is true? We seem to like snake heads, the mustache, paddles etc. We can do better for the balance, weight and artistic, if properly motivated.

Perhaps we look upon this as a water shed moment to advance and diversify the acceptability of design. However, I am a Rigel and Phoenix guy, so there!!

Well, I think you'll find that an awful lot of us mandolin players really LIKE traditional the fern inlay, and that most F-5 owners really LIKE the shape of the F-5 peghead. And yes, there are plenty of other designs -- and also less fragile ones, too. But that's completely and utterly beside the point. The heart wants what the heart wants. It's not just about originality: a classic design is a classic design. Many luthiers copy the F-5 style peghead and inlay designs because there is continuing demand for these. Perhaps you "can't see the big deal," but maybe you're even not trying to understand? Regardless of your position, many of the rest of us sure can see the big deal!!

Will we be made to give up on any new F5-style mandolins unless they're made by Gibson? We'll have to wait and see how this plays out.

[T.D.Nydn]

Well,Gibson patented it for a reason...yes,at first everyone infringing will get a warning letter...then....

[MikeEdgerton]

To get an idea as to how Gibson might handle this you can look at how they handled the flowerpot. There are plenty of old threads but this one has some comments from people that received a letter from Gibson.

[dcoventry]

Well, I think you'll find that an awful lot of us mandolin players really LIKE traditional the fern inlay, and that most F-5 owners really LIKE the shape of the F-5 peghead. And yes, there are plenty of other designs -- and also less fragile ones, too. But that's completely and utterly beside the point. The heart wants what the heart wants.

Will we be made to give up on any new F5-style mandolins unless they're made by Gibson? We'll have to wait and see how this plays out.

Ok, then buy a Gibson if that is the metric by which you judge acceptability. I guess the heart would be willing to follow "suit" so to speak. Seriously, that's the sticking point? So the strap hanger wasn't part of this deal? I judge by sound and comfort.

And I apologize in advance as to my prickliness. I enjoy seeing the progress of the mandolin" Bowlback a-oval to F with oval and f holes. I think there is more and better to come. In fact, I think the best is yet to come.