As we have discussed in previous posts, it is a business’s responsibility to pursue claims of infringement against its copyrights and trademarks – the TTAB will not do it for you. The reasonable hope is that this encourages businesses to make claims that are pragmatic rather than frivolous.
So what happens when a business starts to assert its trademark dominance after decades of allowing similar products to coexist? In recent and ongoing trademark claims involving Gibson Guitars, we can see some ways that this might play out.
Trademark Infringement Claims Against Who?
Gibson has been engaged in trademark conflicts with the brands Dean, Armadillo, Heritage, and Kiesel. They have served cease-and-desist letters which then led to lawsuits which were then followed by countersuits brought by the allegedly infringing companies.
The marks in question are mainly guitar and headstock shapes, plus the word mark “Hummingbird.” Below are the primary guitar shapes (from the Gibson website) that the company has claimed are distinct to its brand:
Mixed Brands, Mixed Defenses
Heritage was actually founded by a small group of former Gibson employees in Michigan – after Gibson moved from Michigan to Nashville. Their defense cited a 1991 agreement between Gibson and Heritage that allowed production to continue for both companies.
Kiesel has been embattled over a similar V-shaped guitar, but they assert that their guitar shape came out in 1986, whereas Gibson’s trademark was legitimized in 1995.
Why Is Gibson on the Trademark Attack?
One thing you may notice about all of these claims: the trademarks in question are more than 20 years old. Why would Gibson sit on this for so long?
If we look at Gibson’s financial history in the past five years, it paints the most compelling picture. The company filed for Chapter 11 bankruptcy in 2018. This seems to have stemmed from an acquisitive venture into consumer electronics that did not go well – plus, anecdotal evidence points to supply and retailer problems that affected their specialized guitar sales.
Under the new organization, Gibson has new part-owners and new leadership. It may be that one of their tactics to recover is through legal backtracking of trademark infringement, with the added benefit of cutting down on competition.
Is This Paying Off for Gibson?
Sort of – but probably not how they had hoped. In Gibson’s trademark infringement win against Dean, the Armadillo branch, they asked for $7 million. They received $4000.
The court did issue an injunction to stop Dean from making more similarly-shaped guitars. At the time, they did not hold Armadillo accountable for decades of infringement. A heavy factor was Gibson’s long delay in pursuing any kind of claim.
Recently, a separate ruling has expanded to encompass an injunction against Armadillo that could include some legal fee compensation in the $55,000 range – still far below the millions that Gibson may have wished to retroactively recover, perhaps to bolster the second incarnation of its company from the ashes.
Waiting years to enforce trademark rights against infringers can cost trademark owners money in lost sales and dilution of the trademark value. If you know someone is infringing on your trademarks now is the time to stop the infringement not many years after the infringement started.