Thursday, April 07, 2005

Affirming 2(d) Refusal, TTAB Pulls Plug On Gibson Guitar's "LP" Application

March was a TTABad month for Gibson Guitar Corp. The company began by losing a Section 2(d) opposition to string-maker J. D'Addario & Co. (blogged here), and ended by losing its appeal from a 2(d) refusal of the mark LP for electric guitars. In re Gibson Guitar Corp., Serial No. 76230196 (March 31, 2005) [not citable].

Giovanni Hidalgo

The Examining Attorney contended that Gibson's mark was likely to cause confusion with six registered marks containing the letters LP "as their dominant elements," owned by Kaman Music Corporation (d/b/a Latin Percussion) for various percussion instruments. The Board focused particularly on the two Kaman marks shown below:

Gibson argued that the goods are too dissimilar to support a finding of likelihood of confusion, but third-party registrations and website excerpts submitted by the Examining Attorney led the Board to conclude otherwise. Moreover, as the Board observed: "it is common knowledge that any rock band needs, at a minimum, a guitar and a set of drums."

As to the marks, the Board not surprisingly found them similar in overall commercial impression; it noted that the circle background of the Kaman marks is "common and ordinary" and of "no real trademark significance." As to connotation, Gibson asserted that LP means "Les Paul" for guitar purchasers (while LP means LATIN PERCUSSION for purchasers of percussion instruments). The Board reviewed Gibson's scanty evidence, which included uses of the letters "LP" as a model designation for Les Paul guitars, and was not impressed: "we cannot conclude that consumers, seeing LP used in connection with guitars in the manner shown in the documents of record, would immediately understand it to mean "Les Paul.'"

Les Paul

Gibson argued that Kaman always uses the name LATIN PERCUSSION with its products, while its own products always include the name LES PAUL. The Board, however, noted that it must consider the marks as shown in the subject application and registrations. In addition, there is no requirement that Gibson always use LES PAUL with the applied-for mark, nor that Kaman always use LATIN PERCUSSION with its registered marks.

Finally, Gibson pointed to its purported 34 years of use of the LP mark without actual confusion, but that argument failed to strike a responsive chord. The Board noted that Gibson's application was filed based not on actual use, but on intent-to-use. Although Gibson may have used LP as a model designation, that was not trademark use and it has no import here.

TTABlog comment: Maybe the Board should have deemed this decision "citable," in the hope that it would deter a certain guitar company from ever again trying to register a model designation as a trademark.

Text ©John L. Welch 2005. All Rights Reserved.


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