Gibson’s ‘335’ Trademark Battle

It was announced on July 24th – and reported by MMR in this issue (see page 6) – that 16 guitar brands have filed for extensions in order to oppose Gibson Brands’ trademark application regarding the double-cutaway “335 [guitar] body shape.”

This may ring a bell for many, as back in November of 2000, Gibson brought suit against Paul Reed Smith over PRS’ line of single-cut guitars, claiming the shape was too similar to Gibson’s iconic Les Paul and would cause “market confusion.”

The case was much discussed within the industry, as well as amongst guitar players, many of whom took to the blogosphere and Internet bulletin boards to add their two cents – most of them clearly siding with whichever company produced “their guitar.”

Without rehashing the full details likely familiar to a good chunk of MMR readers, a federal district court sided with Gibson in 2004, a decision which was later reversed by the Sixth Circuit Court of Appeals. PRS once again began producing their single-cutaway guitars.

While the outcome of this current trademark dispute is yet to be determined, one element of the whole affair is consistent with events of a decade-plus ago. The interwebs are once again alive with the passionate reactions of six-stringers.

On Seymour Duncan’s User Group Forum, where Evan Skopp began the discussion by linking to MMR’s initial report, results ranged from “They [Gibson] probably just want that comfort of owning the patent [sic] and then charging the crap out of everyone to use it” to “Wow! It only took them 50+ years!” to responses explaining (to varying degrees of accuracy) the distinction between patents and trademarks.

I reached out to Ronald Bienstock, whose firm is representing 15 of the 17 brands involved in the current case, to get his take on what’s really at stake here.

“What is often misunderstood in terms of intellectual property (IP) law and the music instrument business, usually as to guitars, is that sentiment and reality are often two very different things,” he explains. “Guitar players, and to some extent bassists, often are loyal to a guitar body shape or style that they started with early in their lives.

“For example, over 50 years ago, a company initiates, or claims to initiate, a design, but within a year of the introduction of that design, other companies begin to use and advertise that same, or a very similar, design.  The number of companies using that design then grows exponentially over the next 50 years and that design is seen everywhere.  Still, a few fans of that original company may think, ‘Well, they came up with it.  Isn’t it theirs?’  That is sentiment, but it is not IP law.

“In order for these types of designs to be trademarks, and for one company to retain exclusive rights to use such designs, companies must treat these designs as trademarks.

“Since we are discussing IP law, we, as an industry, already have the leading case on this very issue: Stuart Spector et. al. vs. FMIC has clearly established what the law is, as it applies to a trademark application for a guitar body shape that has been in existence for over 50 years and has been copied directly or substantially: it is generic and cannot serve as an indicator of source.  Many guitar body shapes can become ubiquitous throughout the MI industry, like that of a double cutaway body guitar or bass first designed in 1958. This is why 17 companies have reacted to Gibson’s attempt to claim ownership of a generic guitar shape.”

As this is an ongoing legal matter in which Bienstock is actively involved (Gibson has not yet responded to inquiries from MMR), it would be natural for those who side with Gibson to dismiss his arguments – and that’s fine. What’s worth remembering, though – and this is as true for MI dealers as it is end-users – is that just because you’re a “fan” of a brand, doesn’t mean that the organization behind that logo is always in the right.

It’s MMR’s – and my own – job to remain agnostic on all matters such as this trademark dispute (I am happy to own, or to have formerly owned, guitars from nearly all suppliers involved, so I can, personally, truly claim not be on anyone’s “side”), but we’ll certainly be watching this case and reporting on developments as things evolve.