Monday, June 15, 2009

Fame of Gibson Guitar's "Dove Wing Peg Head" Design Brings TTAB 2(d) Victory

Finding Gibson's incontestably registered "Dove Wing Peg Head" design (shown on the right) to be "both distinctive and famous in connection with guitars," the Board sustained an opposition to registration of the mark shown below for "guitars," finding it likely to cause confusion with Gibson's mark. The Board concluded that Applicant Concordia adopted its design while aware of the custom in the trade to utilize headstock designs as source indicators, and while fully apprised of Gibson's famous design. Gibson Guitar Corp. v. Concordia Investment Partners, Inc., Opposition No. 91170847 (June 10, 2009) [not precedential].

Gibson and its predecessors have used the "Dove Wing Peg Head" design since at least 1922, and since 1952 it has been a prominent feature of Gibson guitars, including the popular Les Paul series. Sales have been "extensive," amounting to 45 to 90 thousand guitars per year from 1997 to 2006. And Gibson has heavily promoted this shape as a trademark. The Board therefore found the design to be "both distinctive and famous in connection with guitars" and "long ... synonymous with the Gibson brand." This factor "weighs heavily" in Gibson's favor.

Before comparing the marks, the Board observed that "as the fame of a mark increases, the degree of similarity necessary to support a conclusion of likely confusion declines."

Gibson identified three elements of its design that make it distinctive and readily recognizable: the dimple and the dove wings on the top, and the curvature of the sides. Applicant Concordia contrasted the two designs in detailed language "that reads like patent claims," while Gibson argued that the designs are quite similar:

Applicant is attempting to register a mark that prominently features these same “wings” but with a slightly different center dimple. The slight variation of the center cut does not negate the similarities between the two designs.

The Gibson design and the opposed design

The Board acknowledged that consumers "often do not have the luxury of side-by-side comparisons," and that despite the verbiage, the determination "really turns on a visual, and arguably subjective, comparison of the two headstock designs." The Board observed that both designs have "pronounced wings on the top surface, although applicant's larger and rounded, concave center 'dimple' does create a series of roughly-equal peaks and valleys accurately described as 'undulating.'"

Nonetheless, we find that applicant, in designing the undulating curved top of its peg head, has simply approached too closely to the well-known source-indicator of a competitor.

Finally, the Board pointed out that Gibson's use of a headstock design as a trademark "is consistent with the overall custom in the trade," and it concluded that "Applicant adopted the curved top of its headstock aware of this industry practice and being fully apprised of opposer's famous dove wing peg head design."

Balancing the relevant du Pont factors, the Board ruled that "applicant has simply approached too closely to the well-known trademark of a competitor in designing the undulating curved top of its peg head," and it sustained the opposition.

TTABlog comment: One might say that Gibson kicked Concordia's axe, but let's not.

You may recall that Robert M. Kunstadt and Ilaria Maggioni presented an entertaining and enlightening discussion of trade dress law in the context of guitar design in "Tell Tchaikovsky the News: Trade Dress Rights in Musical Instruments," 94 Trademark Reporter 1271 (November-December 2004). The Board cited this article with regard to the trade custom of using headstock designs as source indicators.

Text Copyright John L. Welch 2009.


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