Precedential No. 13: TTAB Axes Fender Guitar Shapes, Finding Them Generic or Lacking Acquired Distinctiveness

Sixteen guitar companies (and one retailer) banded together to successfully oppose Fender's applications to register the three product configuration marks shown below, for "guitar bodies." In a 75-page opinion, the Board ruled that the designs are generic, and alternatively that Fender's proof of acquired distinctiveness was insufficient to merit registration under Section 2(f). [This posting will hit only the high notes (which, to Fender's ear, may be the low notes).] Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corporation, 94 USPQ2d 1549 (TTAB 2009) [precedential].

(Stratocaster, Telecaster, Precision Bass)
Genericness: With regard to a product configuration, "genericness may be found where the design is, at a minimum, so common in the industry that it cannot be said to identify a particular source." The Board concluded that, in light of the "rampant third-party use," Fender's designs are that common.

The record shows that, at least from the mid-1970s, consumers in the United States have been exposed to guitars in the 126, 928 and 127 shapes emanating from third parties. Opposers have presented unrebutted testimony that they have offered for sale identical and substantially similar guitars in the United States and have seen identical or substantially similar guitars offered in the United States by parties other than applicant since at least the 1970s.

It is clear from this record that guitar consumers in the United States have been exposed to a multitude of the 126, 928 and 127 body shapes, either as complete guitars or as guitar parts, coming from and being associated with third parties. The evidence overwhelmingly demonstrates that these configurations are so common in the industry that they cannot identify source. In fact, in the case of the 126 body outline, this configuration is so common that it is depicted as a generic electric guitar in a dictionary. See Random House Dictionary of the English Language Unabridged (2d ed. 1987) definition for the word guitar.

Fender attempted to draw fine distinctions between its designs and the third-party designs, but the Board found it "simply not reasonable to conclude that the average consumer of guitars, which would include non-musical parents buying a guitar for their child, could distinguish one guitar from another based solely on a millimeter of difference in the body shape."

Fender also objected to the lack of sales figures for the third-party guitars, but the Board was unmoved: "Given the decades-long advertising by opposers and third parties as shown in opposers’ notices of reliance and testified to by opposers, we may infer that at least a steady stream of sales is occurring over the decades."

The evidence also showed that Fender was aware of the products of the opposers and never objected to the body shapes.

In fact, we may infer from the evidence of record that applicant and its predecessors themselves did not view them as trademarks. They never policed the body shape, only the word marks and headstock profiles. In addition, they never claimed trademark rights in the body outlines publicly through, for example, the catalogues, until 2004.

The Board noted that Fender "riddled the testimony with machine-gun fire objections," but pointed out that even if it considered only the evidence submitted under opposers’ notices of reliance and Fender's evidence, it would still come to the same conclusion.

Acquired Distinctiveness: Of course, product configurations are not inherently distinctive and may be registered only upon a showing of acquired distinctiveness. Fender relied on the following in attempting to establish acquired distinctiveness: a survey, long use, sales volume, advertising expenditures, media exposure, licensing/notice, testimony regarding recognition of the mark, and intentional copying. After an "exhaustive review of the record," the Board concluded that Fender's evidence was not enough.

Fender's survey suffered from several flaws and, "[g]iven the record in this case, at most this survey may indicate that a certain percentage of the respondents associate these shapes historically with applicant or applicant is the most well known manufacturer but not that the shapes connote single source." In short, the survey "is not particularly probative of acquired distinctiveness and does not overcome the high bar set by the lack of exclusive use for decades."

As to Fender's sales and advertising figures, "it is well established that compelling sales and advertising figures do not always amount to a finding of acquired distinctiveness." Fender's assertion that it promotes the configurations as trademarks by means of "look for" advertising was not supported by the record. Its other evidence was similarly dismissed by the Board.

Opposers' evidence coupled with applicant’s inaction in failing to police other uses of these designs and its omission of these body designs from its trademark assertions in its own magazine (see e.g. the trademark statements in applicant's Frontline magazines from 1990-2003 Exh. A-148) clearly demonstrate such commonality that applicant has an unusually heavy burden in this case. Thus, the absence of "look for" advertising is just one more piece added to an avalanche of evidence that obliterates any claim to source-identifying significance of the two dimensional outlines. Therefore, applicant's evidence of industry practice, while supportive of its case, cannot overcome thirty years in which many competitors made, displayed and sold to consumers guitars with the identical body shapes.

The Board concluded that Fender did not establish acquired distinctiveness "such that these two dimensional outlines of guitar bodies, standing alone, serve to indicate source."

TTABlog note: Ron Coleman comments at length here.

TTABlog BTW: 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).

Text Copyright John L. Welch 2009.