April 06, 2009
Intellectual Property Alerts

Fender Guitars Denied Trademark Registrations
by Cyrus Wadia

The U.S. Patent & Trademark Office has denied Fender Musical Instrument Corporation's attempt to register design trademarks for its iconic Stratocaster, Telecaster, and Precision Bass electric guitars.
 
In 2003, Fender filed trademark applications for the three “guitar bodies” designs, originally created in the 1950s:


 

                                  Precision Bass             Telecaster                Stratocaster
 

Source:  U.S. Patent & Trademark Office Trademark Electronic Search System


The applications were opposed by a wide variety of competing guitar manufacturers and stores on the grounds that (1) the guitar designs had become so common as to be “generic” under trademark law, or (2) the widespread use of identical and substantially similar designs by third parties contradicted Fender’s claim that it had "acquired distinctiveness" such that consumers knew that the designs were Fender-brand electric guitars. 

Acquired Distinctiveness/Genericness   

Product design can only be registered as a trademark upon a showing of “acquired distinctiveness.”  Distinctiveness is established by exclusive and continuous use of a trademark in commerce, and a trademark applicant must show that the primary significance of the product configuration in the consumers’ mind is the source of the product.  Product configurations can, however, become “generic,” meaning that the design is so common in the industry that it fails to serve as an indicator of the product's source.  Generic product design cannot be registered as a trademark.  The basic rationale behind that rule, according to past trademark decisions, is that no designer should have a monopoly on a design that is regarded by the public as the product's basic form.  

Analysis

The U.S. Patent & Trademark Office's Trademark Trial and Appeal Board (TTAB) found that the guitar body designs at issue have become so common in the industry as to be generic and thus incapable of registration.  In reaching that decision, the TTAB relied on the "rampant" third party use of the designs, Fender's failure to police its trademarks in the marketplace by objecting to third parties' use of similar designs, Fender's failure to claim that the guitar body designs were actually trademarks until 2003, and Fender's own recognition in advertising that others manufactured guitars with similar shapes.  According to the TTAB, "[t]he 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."  

Fender also argued that the guitar body shapes had acquired distinctiveness based on a survey, use, sales volume, advertising expenditures, media exposure, licensing/notice to third parties, testimony regarding recognition of the trademark, and intentional copying.  The TTAB examined evidence in support of each claim, and found that the evidence cumulatively failed to establish that consumers generally recognized the guitar body as being a "Fender" guitar body.
 
A decision in favor of Fender would have significantly altered the landscape of guitar manufacturing given the widespread use of similar electric guitar product configurations by competing manufacturers.  While product configuration trademarks are never easy to obtain, this decision reinforces the value of both filing trademarks to protect designs as early as possible, and taking active steps to police against use or abuse of those trademarks.

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