U.S. Trademark of Fern Inlay Awarded to Gibson

[Spruce]

The comical side of this is that it has no financial ramifications for Gibson or others, it just makes them look foolish.

...which they've been doing relentlessly since 1986.

[outsidenote]

I think it's premature to be negative towards Gibson about this. It is their design and they are entitled to copyright it. If they didn't and someone else did, they might be put in a position of not being able to use their own design. Gibson has been heavily copied through the years and has been amazingly tolerant. As to the quality of their recent mandolins - I don't think that is really in doubt.

[T.D.Nydn]

The only people who will come out ahead in this are those lawyers.at one time I went to collage to be a divorce lawyer,and I dropped out to become an artist and a jazz musician.when I think about it,I've made some very bad decisions in my life.

[plexi]

We have had paten infringements it cost $400k plus court fees. All you have to do is make one change and Gibson will loose the case. It could be as simple as adding .001" to the headstock. It's ugly any way you look at it.


Steve.

[Marvino]

From United States Patent and Trademark Office

What is a trademark?
Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.

[Richard Mott]

I don't know patent & trademark law, but I am surprised that after Gibson's nearly 100 years of failure to assert a proprietary claim over the design, the company wasn't deemed to have waived any right to it. Especially given the recent four decades of mandolins proliferating with that design. With adverse possession, you have to act promptly and can't sit on your rights. I can't see how this would hold up to a legal challenge.

[Billgrass]

Any pickin' trademark legal eagles out there care to comment on the real implications? One thing I find curious is that it was awarded so long after the design was put into use. A copyright would have long expired, if that would have been possible for a design. Also, under copyright (and I think trademark law?), you have to actively protect your property or you lose your rights. To my knowledge Gibson has not been protecting the Fern from use by other builders, so wouldn't that nullify their rights?

[Jeff Hildreth]

Originally, Gibson's inlays were outsourced.

I am curious if Gibson, or some supplier, "designed" the fern. Any insight ?

[Scott Tichenor]

I've merged another thread that is essentially discussing the same questions relating around this issue. Lets please not water the information down by starting further separate discussions.

For the record, in the article we listed this exact wording:

Although one of the pages linked to below lists the Trademark as Published for Opposition, one legal source for this article told us that time period has passed and the Trademark is binding.

We've had a couple of people in the industry tell us this is not correct. It is in fact true that a large manufacturer everyone here would know has been advised by their legal team the Trademark is binding. That is a fact, whether those people are correct or not. It's also no surprise that there are differing opinions by lawyers and those that think they know more than them. The Mandolin Cafe is not the arbiter of the Trademark in question. We have no opinion on the matter. Those that share the view it is not binding (or is) are more than welcome to post their opinions here for public evaluation vs. contacting us with your side of the story. Our interest is that it 1) became known, and 2) that it be discussed. That goal is being accomplished.

[Darryl Wolfe]

Originally, Gibson's inlays were outsourced.

I am curious if Gibson, or some supplier, "designed" the fern. Any insight ?

Gibson. I have the drawings...that was their purpose

[billy_v]

My Breedlove full-gloss FF don't need no stinkin' fern.

[Killian King]

The only people who will come out ahead in this are those lawyers.at one time I went to collage to be a divorce lawyer,and I dropped out to become an artist and a jazz musician.when I think about it,I've made some very bad decisions in my life.

I think I see where you went wrong. It was probably inevitable that you would end up an artist when you attended Collage instead of College.

[Hendrik Ahrend]

My advice to independent builders: Just keep copying the vintage F5 head stocks, since this patented Gibson head stock drawing is not very close to the original anyway.

[Tom C]

About 10 years ago, Gibson did this with the flower pot. Supposedly, the design had to look different from like 50ft away as not to be mistaken for a Gibson. Builders were notified not to use it and many luthiers stopped using it. But Gibson never enforced it and builders started using it again.

[Canoedad]

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

Not really correct. The legal test is Substantial Similarity, or at least it was when I took IP in law school. It's complicated and expensive for anyone who wants to test Gibson's claim. Probably much wiser to stay away, which is what they are counting on.

[stevedenver]

Not really correct. The legal test is Substantial Similarity, or at least it was when I took IP in law school. It's complicated and expensive for anyone who wants to test Gibson's claim. Probably much wiser to stay away, which is what they are counting on.

finally a bit of rationale thought......

just like Robert johnsons lyrics, if this design hasn't been already registered, and there are no other claimants to origin and ownership of the design, I don't believe there is a lapse/public domain type argument, but there could be, ....ie since no one else has bother to patent the design and shape (not unlike the Les Paul body shape, deja vu PRS lawsuit) Gibson may well have done so in a timely manner. I dunno legally speaking. this is like policing a design or trademark, ala Kleenex versus facial tissue, Coke versus cola, the design, may well have been lost, or 'diluted' by common usage, but.....

I too am not an IP lawyer, but I can tell you this, that for all those with braggadocio and swagger posts above,

you will sing out of the other side of your mouths when you receive a Cease and Desist letter, or, have to hire a lawyer, who tells you not only how much that will cost to argue, but, that if you lose, you will pay Gibson's attorney fees and for infringement. This is why IP cases are a very big stakes deal.

And this, my friends is exactly why the design is now patented-it will, rightly or wrongly, eliminate a large number of boutique F look-a-likes. The purpose of this type of strategy, imho, is not only to sell product, but to keep others from selling competing products.

No names, but I know of 2 builders (that all would likely know) that used similar headstock designs to 2 different guitar makes, and they don't anymore......due this very tactic.

As a builder, the simple question is, "do I want to spend 50K in federal court, or, might I prefer to simply change things?"......now be honest, wwyd???? "how many fs do I have to sell to pay my lawyer........

or, "should I just do my own fern design and headstock......close but not identical......."

and how many buyers will be swayed from a non-identical Gibson design in their purchase decisions???

[Spruce]

No names, but I know of 2 builders (that all would likely know) that used similar headstock designs to 2 different guitar makes, and they don't anymore......due this very tactic.

Are we talking like, 20 years ago?
If "yes", it was waaaaaay more than 2...

[allenhopkins]

Probably I'm naive, but I think that if there were a trademark or patent infringement case, the fact that Gibson has waited until forever to assert ownership, while thousands of F-model headstocks with fern inlays have been manufactured by others, would make their case weaker.

Gibson missed the boat in not patenting/trademarking the F-model body shape. That horse left the barn 75+ years ago. All that's left for the company that originated F-model mandolins, is to claim exclusive rights to details -- truss rod cover shapes, inlay patterns, headstock profiles -- while their best true innovation, the F-model, carved-top, f-hole mandolin, is being cranked out by the thousands by factories and individual luthiers in a dozen or more countries.

Tempest in a teapot, IMHO. Late in the game to get litigious, if that's in fact their intention.

[NoNickel]

I'm a corporate attorney and (unlike what one poster implied) am not rich. I am as puzzled by Gibson's actions as anyone here. I am trying to figure out, that if I worked for Gibson (rather than a large midwestern agricultural cooperative), how and why I would advise my client to take this action.

Gibson certainly invented the F style mandolin, and designed the flowerpot, the fern and most of the curves that many of us love. And back when those innovations were first implemented, they had every right to say "this is ours, and y'all keep away." But they did not do that. People have been copying the F5 and F4 and all of the cosmetic and engineering elements for years. I can't imagine that they have any desire to drive any builders out of business, and in fact probably what will happen is that they will send out some cease and desist letters and that will be that. The Gibson-looking Fern inlay will likely become less common, as builders will likely either redesign or stop advertising "Fern" inlays (only doing them when specially requested), which is all Gibson probably wants. All it would take is for one builder to spit in their face and continue to agressively advertise a substantially similar Fern inlay, and suffer the consequences of some lost profits and payment of Gibson's and their own attorney's fees to put the real freeze on this.

Under the law, Gibson owns the "common law" rights to the fern mark, because it created it. Just like a song you wrote is owned by you. But, just like the song, if someone else copyrights/trademarks it first then they own it. Where everyone missed the boat here is by not opposing the registration. Fender recently lost a five year litigation when it tried to register its stratocaster and telecaster designs when a large number of other guitar makers opposed it. Fender had allowed copying for too long the court said, and the shape was in the public domain. The same thing could have happened here, but face it. We are talking about mandolins, not electric guitars. And probably no one wanted to stand up and fight with Gibson on this.

What I really think is behind Gibson's play here is making sure that some troll doesn't sneak one by them and beat them to the PTO on the Fern mark and then ask Gibson to pay a fee to buy their own property back. In Gibon's defense, it could be something as simple as: "Hey, this is ours, let's just put everyone on notice that we own it." If this is the case, that probably still means cease and desist letters, because you have to make an effort to protect your mark or you could lose it.

One poster put it correctly, all good F5's are really just trying to copy this iconic, traditional design. What would really suck, is if Gibosn took the next step and claimed the F5/F4 mandolin shape -- scroll, points, headstock, f holes -- as theirs. This would not be totally without precedent as they did take PRS to court on the Les Paul single cutaway shape. And they had some success but ultimately lost. If that were to happen: we must let loose the hounds of h***.

[allenhopkins]

I would hate to think there might come a time that if you want a Gibson F-5, you would have to actually buy a Gibson F-5....

But if you want an "F-5," you can buy a JBovier. Gibson hasn't even trademarked "F-5," if you can believe it. While I assume that Audi can't build a "Coupe de Ville," and Burger King can't sell a "Big Mac," anybody can build a mandolin and call it an F-5.

[mtucker]

What I really think is behind Gibson's play here is making sure that some troll doesn't sneak one by them and beat them to the PTO on the Fern mark and then ask Gibson to pay a fee to buy their own property back. In Gibon's defense, it could be something as simple as: "Hey, this is ours, let's just put everyone on notice that we own it."

Seems to make the most sense out of all of this...

[stringduster]

Corporations just love flexing their "stuff" don't they?
Anything you can do to make it harder and harder for the small, independent builders
in this country to earn a living. I say "phooey"!

[FLATROCK HILL]

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.

I can think of a leafy design that might work on the Colorado builds. Well I could a minute ago anyway. What were we talking about?

[stevedenver]

Corporations just love flexing their "stuff" don't they?
Anything you can do to make it harder and harder for the small, independent builders
in this country to earn a living. I say "phooey"!

don't get me wrong, im no lover of Gibson or bullying, but, I do have a soft spot for property rights.

so, how do you feel about other countries taking designs and selling knock offs?
how do you feel about folks who squat, claiming land to be theirs?

Gibson, uncontrovertedly originated the design, basically, their property (as far as we know-neverever seen anything pre-Orville like a F or fern design-but it wouldn't surprise me if it was out there.

But, Gibson hasn't policed it in terms of copying, but its ok to take it? Well, maybe earlier, but not now.

If in fact the rights have been lost, as pointed out, its kinda late once the patent office grants a patent on the design. BTW< this is happening on a lot of tech, including cooking techniques, and many other things that were available or practiced, but not registered.

"F-5", probably not distinctive enough, F-5 , F-150,???? "Iceberg Greenburg, whats the difference?"

[T.D.Nydn]

And all those variations you mentioned are GIBSONS....