U.S. Trademark of Fern Inlay Awarded to Gibson

[T.D.Nydn]

Well Jim,yeah,maybe,,to best to honest ,the first non -G ,F 's I remember seeing were actually at bluegrass festivals in the late 70's and early 80's..

[Jim Hilburn]

The first F style I ever saw was in 1972 and it was made by Doug McKee who I was taking guitar lessons from. I had never heard much bluegrass and knew nothing of Loars or Monroe. However Doug filled me in and told me that if you wanted a decent mandolin you had to make it yourself because no one else was.
That's when I knew someday I'd make one...or more.

[David Lewis]

Mine too

[Petrus]

It's a mistake to compare the great work of individual workshop luthiers, who may make a dozen instruments in a year (?), to the mass production requirements of a company like Gibson which makes far more. It's apples and oranges. Even if Gibson has a small in-house workshop style department that exclusively makes their high-end models (actually that's all they make these days isn't it?) they have to figure in the cost of all the rest of the corporation overhead to keep that little shop going.

I gather that Gibson is very secretive about their production numbers, but looking at their presence in the marketplace, they must be producing exponentially more units than a small luthier could. You'll find Gibsons in many GCs and online at major retailers like Sam Ash, Sweetwater, ZZsounds, etc., while you usually won't find an Ellis or Weber or Collings in those places. They only brands that seem to have comparable market presence as Gibson produce substantially lower-end (sub-$1K) models, e.g. Kentucky, Breedlove, and so forth. So compromises must come with higher quantity and a larger corporate overhead; there's no way to avoid it even if Gibson does their sincere best to make a great product.

[Rush Burkhardt]

IMHO this move by Gibson is ill-conceived, and will come back to bite them.

The theory of the size of the mandolin marketplace has been discussed many times on this forum. (Certainly the "It's Not a Ukelele" t-shirt [mine's on the way] speaks volumes.) By biting-the-small-hand-that-feeds-it, Gibson uses money and the bully-pulpit to announce to the mandolin community its disdain. I can see wanting to protect the flower-pot and fern and their "exact style", [and it seems that protection has been pretty closely observed in the case of the flower-pot] but to go after the Florentine design of the headstock seems a step too far.

I do have experience in the "corporate world" where form is often off-set by function. Maybe the legal staff just needs more work?

[Jim Hilburn]

Not knowing corporate trademark law, for all I know Gibson might very well have the right to claim the Fern as their own.
But how many Loar era Ferns did they make? 50? maybe 75? Then they abandoned it for over 50 years till it became painfully obvious there was a mandolin market they had been ignoring.

[Bernie Daniel]

It's a mistake to compare the great work of individual workshop luthiers, who may make a dozen instruments in a year (?), to the mass production requirements of a company like Gibson which makes far more. It's apples and oranges. Even if Gibson has a small in-house workshop style department that exclusively makes their high-end models (actually that's all they make these days isn't it?) they have to figure in the cost of all the rest of the corporation overhead to keep that little shop going.

I gather that Gibson is very secretive about their production numbers, but looking at their presence in the marketplace, they must be producing exponentially more units than a small luthier could. You'll find Gibsons in many GCs and online at major retailers like Sam Ash, Sweetwater, ZZsounds, etc., while you usually won't find an Ellis or Weber or Collings in those places. They only brands that seem to have comparable market presence as Gibson produce substantially lower-end (sub-$1K) models, e.g. Kentucky, Breedlove, and so forth. So compromises must come with higher quantity and a larger corporate overhead; there's no way to avoid it even if Gibson does their sincere best to make a great product.

I think mostly you see so many Gibsons because they have been making them for over a century and they have accumulated. I'll guess the current annual output of Gibson mandolins is pretty modest. Probably more than a single luthier working on his own of course. OTOH certainly much less then the combined production of the small, independent guys.

I would not want to make a guess on the number but David Harvey actually demos many of the new ones on his Facebook page -- so I'm sure you are not seeing very many mandolins made each day in Nashville?

[banjoboy]

What's next? Is Gibson gonna go after a trademark on "The"?

[Mark Wilson]

What's next? Is Gibson gonna go after a trademark on "The"?

I was thinking the same.

Seems no one disputes that these F5 design elements are Gibson trademarks and claiming them as trademarks seems reasonable to me even if it is decades late.

[Spruce]

Seems no one disputes that these F5 design elements are Gibson trademarks....

...oh, sure they do.

And--especially with guitar designs--have successfully done so in litigation(s), as well...

[JeffD]

To be specific, its the fern inlay design combined with the head stock scrolls. Per the wording I don't see that either is protected when used alone. Perhaps in other legal decisions, but not in this one.

It may be ill conceived from a business strategy point of view, I don't know. But I think they are within their rights to do it.

If it bites them they will regret it. My own guess is that it will have very little effect on anything, in the big picture.

I would love to see some headstock designs by other makers become iconic. That would really be great. I really love the Collings comb-over, for example. And the Weber "celtic" knot inlay is easily recognize, and kind of fun.

[Jeff Hildreth]

It has long been my opinion that whatever the current GIBSON CORP does is done in order to enhance the value of the CORP (its stock) for eventual sale.
Nothing they do surprises me.

[stringduster]

To Steve Denver ands a few others, the reality about "patents" is the same for most disagreements, whoever has the most money wins.
In 1970 I was just out of college in Ohio and basically a leather working hippie. I opened my own storefront across from Ohio State and ran it under the name "The StrapWorks" for several years until moving to Colorado where I did business under that name for a few more years before moving on to other things. Several years ago a good friend with a vintage music store asked if I would make mandolin straps for his shop since I still had most of my tools. I agreed. Shortly there after I opened up a Facebook page using my old name "The StrapWorks". It wasn't long before some guy in a closeby state who sold NYLON WEBBING products, informed me that HE held the name and that I needed to change MINE. He was concerned that someone in the market for tow ropes, and stuff might confuse his six figure business and huge warehouse with my one man workshop based out of my garage. First he suggested I change MY name to "Strap Works", dropping the "the" and separating Strap from "Works", which I did after some hesitation. That wasn't good enough. After another round of THREATS he decided that I needed to "drop" the "s" as well. .Then, so as not to create confusion, I changed my business name to "The Strap Works OF MONTANA".I told him that I had used the name "The StrapWorks" since 1970! before he was probably, most likely even born. I tried to work thru the myriad and confusion of contacting the State of Ohio's Board of Taxation to resurrect old records proving that "I" and not HIM had previous title to the name. I found out very quickly how much money it would cost for me to do all this, again, being a lone craftsman just getting by. So WHO WON? YOU guess. I finally said "to hell with this guy" and changed my business name to Mandolin Straps of Montana. I LOVED the name I used for all those years. They were part of my history. And to give it away because I couldn't afford to defend it from a monied guy with time to hassle a nobody like I was, is.......AMERICA at it's best. That is how patents work in the REAL world.

[Charlieshafer]

On an unrelated front, there is a flip side where the little guy wins. This involves the bicycle world, where way back in the late 80's, three hippie welders from Somerville, Mass., working for Fat City, started welding some titanium frames. They named their little company Kestrel, and were smart enough to get a trademark. Later that year they were walking around the floor of the bicycle trade show , too broke to afford a booth, trying to get some interest. They came around the corner, and lo and behold, a huge display by a well-heeled company also called Kestrel. They all met, with the big guys trying to do the posturing thing. The little guys had the trademark, so the big guys had to shell out a relatively huge sum of money to buy the name. The three little guys simply changed the name of their company to Merlin, used the cash to buy all the equipment they needed to get the business going, and the rest was history.

The moral of the story is pretty simple. Got a good name? Trademark it; it's pretty cheap when done right away.

[Petrus]

Maybe they should focus on getting the "Loar" name trademarked too. Just saying.

[Vincent Capostagno]

The real teeth in this trademark will be seen when Customs seizes shipments containing scrolled headstocks with Ferns. The independant luthiers are probably not a threat and may be able to obtain a letter of permission upon request.

[Tom Coletti]

Maybe they should focus on getting the "Loar" name trademarked too. Just saying.

Loar was a person who worked at Gibson for a few years, not intellectual property of Gibson itself. Gibson probably couldn't even trademark the name Orville at this point without a certain popcorn manufacturer rolling up its sleeves and throwing the first punch (though the popcorn and mandolin industries are entirely separate and I believe there are clauses that deal with trademarking in different fields.)

--Tom

[T.D.Nydn]

There is no question at all that most,by far, F model mandolins are made to look just like Gibsons,the design is there's,,they can copyright the whole thing,,and like I said before,maybe the A model design also.

[JeffD]

It has long been my opinion that whatever the current GIBSON CORP does is done in order to enhance the value of the CORP (its stock) for eventual sale.

You are probably right.

[Glennly]

Glenn,

According to the way the trademark reads. Would it be fine to use the shape of the peghead with a different inlay?

I am not saying anything in terms of legal advice, as there are a great number of factors, many of which I'm unaware of, but which also include the aggressiveness of the plaintiff and the defendant's willingness or ability to fight what could be a very expensive battle.

That being said, the legal standard for trademark infringement is likelihood of confusion among the relevant consumer base as to source or sponsorship. Identity is not required. On the other hand, the peghead shape has been ubiquitously used for scrolled mandolins and I think would almost unquestionably be viewed as an aesthetic choice, which makes the mandolin look better and be more marketable. As such, no one could claim exclusive rights to it.

[Glennly]

So Glen, are you saying (in broad strokes) that this is really kind of a non issue for most small builders and there likely will not be repercussions to the guy who makes ten a year. Now, those who make hundreds, if not thousands, may have some cosmetic issues to "modify"?
Not owning one, nor planning on owning one I don't think the "Fern Police" will be knocking at my door. Should I have the wherewithal to have something built, I have to go with something which will compliment my inlay at the left. Tulips perhaps, lilies?

Again, Timbofood, I am not providing legal advice, just my seat of the pants opinion on whether the registrations could be successfully challenged. Most builders, especially independent ones, wiould probably be wise to make the business decision not to poke the bear.

[Glennly]

There is no question at all that most,by far, F model mandolins are made to look just like Gibsons,the design is there's,,they can copyright the whole thing,,and like I said before,maybe the A model design also.

The issue is solely that of trademark at this point. regarding the build of the instrument itself, that is considered a useful design, which is not eligible for copyright and, of course, all patents on the original design have long since expired.

[Glennly]

It's extraordinarily hard to prove lying. Gibson would merely argue that the use was substantially exclusive and that they consider the other designs out there to be insubstantial or to have been infringements in the first place. Of course, the next question would be, why then haven't they objected previously? Allowing third parties to use your claimed mark without objection could be seen as abandonment of exclusive rights, or as evidence that the senior user is not being significantly harmed by such use.

[NoNickel]

Again, Timbofood, I am not providing legal advice, just my seat of the pants opinion on whether the registrations could be successfully challenged. Most builders, especially independent ones, wiould probably be wise to make the business decision not to poke the bear.

I agree with Glenn. If I were a builder, I would tread lightly here. But in an actual litigation, i think Gibson would have a real problem with people who have been using the mark prior to the registration.

[stringduster]

Bernie you're mixing apples and oranges if you want to compare an insignia to a song. Or her name to an insignia. Mine visitations tell me then when it comes to one or the in the other slight variations to alter the shape of an insignia or adding or deleting Letters to make a product name slightly different or by changing the spelling for instant