If you were a company making banjos with gibson on them, then yes, you can be concerned. Also if youre a luthier selling banjos I wouldnt advertise my own gibson line. But if youre making a conversion or a replica, you have very little to be concerned about. Gibson obviously cares not for intelectual property when it comes to banjos.

uspto.gov/trademarks/basics/tr...copyright

One cannot copyright a name.

Gold Tone did not "buy" Mastertone, they filed for a trademark.

To see the public details do a trademark search and read all the documents associated with the filing.

tmsearch.uspto.gov/search/sear...formation

Evidently Gold Tone was able to file because Gibson had not trademarked Mastertone. Gold Tone took advantage of that low hanging fruit instead of sticking to their own name and brands.

A similar thing was done with Deering, they discovered that Galaxy went out of business and sold their assets at auction, the Vega trademark being abandoned, Deering filed for a new trademark of the name Vega.

Thanks, Joel! That's very helpful. Much appreciated!

IP lawyer here. As Joel said, it's a trademark issue, not a copyright issue. Trademark covers branding and brand names. The search you want to run on the USPTO website is: CM:gibson AND IC:015 AND LD:true

If you do that, it will show you all of the registrations for the word "gibson" in Class 15 for musical instruments that are still live and not dead or otherwise abandoned.

You'll find that Gibson Inc. does indeed still own various registrations for GIBSON that cover banjos. In particular, US Reg. No. 1545311, which has been registered since 1989.

Overall, it seems like Gibson's strategy is to not take action if someone is using the trademark to replace something like a neck on what was originally a Gibson banjo. Yes, people put "Gibson" branded necks on other banjos but they're probably too small for Gibson to know or care. But if someone started selling Gibson branded banjos on a larger scale, they could expect to get a cease and desist letter from Gibson about it.

As far as the MASTERTONE trademark, it sounds like Gold Tone may have paid Gibson something for it. But maybe not. If a trademark is abandoned with no intent to reuse, someone else can come in and take it. Non-use for 3 years creates a presumption of abandonment. Gold Tone didn't file their trademark application for MASTERTONE until 2020, which was quite a while after Gibson stopped using the mark (I think).

Gold Tone did have to file a consent agreement they had entered into with Potter Violin Company, who owns a registration for MASTERTONE with regard to violins and violas. But once they did that, the application was approved. Unless Gibson had filed an opposition, it was going to be allowed to register. Gibson didn't oppose, so Gold Tone got the trademark.

Below is a link to an old story about this on the Bluegrass Today website. Although the story provides a reasonable explanation of how this happened, the author appears to have a confused understanding of copyrights and trademarks. As Joel Hooks pointed out, "Mastertone" is protected by a trademark, not a copyright.

Gold Tone And Mastertone
 

quote:

---

Originally posted by tomd7

IP lawyer here.  . . .
Overall, it seems like Gibson's strategy is to not take action if someone is using the trademark to replace something like a neck on what was originally a Gibson banjo. Yes, people put "Gibson" branded necks on other banjos but they're probably too small for Gibson to know or care. But if someone started selling Gibson branded banjos on a larger scale, they could expect to get a cease and desist letter from Gibson about it.

---

Not an IP lawyer here, but a retired marketing copywriter who had to deal with trademarks and brand identity programs, and I want to say I believe your assessment is correct.

Luthiers and home workshop builders have been making "Gibson" conversion and replacement necks for at least 60 years now and even whole Gibson copy banjos (many now available for resale in the Hangout Classifieds) and to the best of my knowledge, Gibson has never gone after any of those people. Plenty of "Gibson" necks also available for sale. And elsewhere online you can buy "Gisbson" pearl script to put in your own banjo neck. These sellers are also left alone. I believe Gibson is more concerned about Asian counterfeiters.

Seeing as Gibson hasn't made a banjo in over 15 years, I don't think Gibson copy banjos bother them -- as long as new ones don't end up in retail stores represented as Gibson.

Yeah the statement: "Gibson hadn’t made them for quite a long time, and the name wasn’t copyrighted, at least with reference to banjos." is wrong.

The trademark wasn't registered, it's true. But Gibson could've easily claimed longstanding common law trademark rights to the MASTERTONE mark, if it had wanted to do so. It meets all the factors to establish common law rights nationwide due to the length of time in use, high recognition level in the relevant market, and nationwide sales. Based on these rights, Gibson could've opposed Gold Tone's application and probably won and killed the application. Even after it registered, Gibson could've filed a cancellation on the same basis. The fact that Gibson didn't indicates Gibson doesn't care and doesn't plan to use the name again.

Old Hickory I completely agree. I think if Gold Tone, Deering, or Stelling started a "Gibson" line of banjos, Gibson would send them a letter pretty quickly.

quote:

---

Originally posted by Joel Hooks

Gold Tone did not "buy" Mastertone, they filed for a trademark. . . .
Evidently Gold Tone was able to file because Gibson had not trademarked Mastertone. Gold Tone took advantage of that low hanging fruit instead of sticking to their own name and brands.

---

Yes.

Gold Tone did not "buy" Mastertone, they simply claimed it.

Wrinkle in the story is that Potter Violins (just a few miles from me!) did own the "Mastertone" trademark for its violas. Gold Tone came to some arrangement with Potter (details of which are not public) that allowed them to also trademark the name specifically for banjos, guitars, mandolins, and ukuleles. 

Curious about the details, I asked Google if Potter had intervened in Gold Tone's registration, and learned this:

The sequence of events unfolded as follows:

• Initial USPTO Refusal: When Gold Tone attempted to register the "Mastertone" trademark for fretted stringed instruments, the USPTO issued a non-final refusal in March 2020. This refusal was based on a likelihood of confusion with an existing live trademark for "MASTERTONE" owned by The Potter Violin Company (which they had registered in 2006 for stringed instruments like violas).

• Coexistence Agreement: Rather than a legal battle or intervention, Gold Tone and Potter Violins reached an amicable agreement. Under this agreement, Gold Tone limited its trademark application strictly to fretted instruments—specifically banjos, guitars, mandolins, and ukuleles—ensuring they would not produce violins or violas that competed with Potter Violins.

• Subsequent Opposition: Once Potter Violins and Gold Tone resolved the issue, the application moved forward, at which point Gibson intervened and filed an official opposition to block Gold Tone. Gibson eventually withdrew its opposition, allowing Gold Tone to successfully secure the "Mastertone" trademark for fretted instruments in August 2021.

In another thread on BHO I suggested the google AI easily and wantonly hallucinaes facts as reality. So I checked with chatGPT. Apparently Gibson DID oppose GoldTone acquiring the trade name and withdrew its opposition a year later. For reasons unknown. So here is a revised timeline which expands upon what Ken just posted.

January 8, 2020 — Gold Tone files for MASTERTONE.
Gold Tone, Inc. filed U.S. Trademark Application Serial No. 88750923 for MASTERTONE, covering musical stringed instruments—specifically banjos, guitars, mandolins and ukuleles.

March 27, 2020 — USPTO refusal.
The USPTO issued a non-final Section 2(d) likelihood-of-confusion refusal. The cited prior registration was MASTERTONE, Registration No. 3,082,482, owned by The Potter Violin Company, covering musical instruments, specifically violas. There was no Gibson MASTERTONE registration cited by the examiner.

2020 — Gold Tone addresses the Potter conflict.
Gold Tone subsequently overcame the Potter-based refusal, with the goods remaining limited to the fretted-string-instrument category of banjos, guitars, mandolins and ukuleles. The available record supports an accommodation between the two parties, although I would be cautious about describing the precise arrangement as a formal “coexistence agreement” unless the actual agreement can be produced.

July 21, 2020 — Application published for opposition.
Gold Tone's MASTERTONE application was published for opposition.

November 18, 2020 — Gibson opposes.
Gibson Brands, Inc. filed TTAB Opposition No. 91266038, challenging Gold Tone's MASTERTONE application.

2021 — Gibson withdraws its opposition.
The Gibson opposition was ultimately withdrawn/resolved without a TTAB decision on the merits, allowing Gold Tone's application to proceed.

Result — Gold Tone obtains federal registration for MASTERTONE in the fretted-instrument field.

Note that Gold Tone seems to be free to make violin-family instruments as long as it does not call them “Mastertone.”

Craftsmen have been making 5 string conversion necks for 4 string Gibson banjos since at least around 1960 when Ralph Stanley had (I believe) Tom Morgan make a 5 string neck for his 4 string Style 5 DeLuxe banjo. Earl Scruggs had a 5 string hearts and flowers neck made for his banjo also "around" 1960 -- perhaps Faulkner?

In any case, the record will show that Gibson has not defended its trademarked brand name or the word MASTERTONE in banjos for over 60 years. They have been more diligent in defending some trademarks in the guitar world, like the Open Book peghead tip design, and perhaps other things.

Since they have never "gone after" anyone for neck copies in over 60 years, I think we need not worry about conversion necks for Gibson banjos. If the do try in future, the 60+ year history of neglect will not be helpful. Gibson didn't even try to do business in offering conversion necks.

That ship has sailed... IMHO

quote:

---

Originally posted by The Old Timer

They have been more diligent in defending some trademarks in the guitar world, like the Open Book peghead tip design, and perhaps other things.

---

Yes to "other things." They have a registered trademark on the bell-shaped truss rod cover! Also several of their electric guitar shapes and model names.

I just now read a story from earlier this year that in Gibson's continuing legal battle against Dean Guitars parent company Armadillo, where Gibson has won on most counts, a jury found the shape of Gibson's "ES" electrics (think Chuck Berry) has been generic since at least 1996. A court refused to overturn the jury's verdict.

About 20 years ago I chatted with Stan Werbin, owner of Elderly Instruments, about a lawsuit that Gibson filed against them. Elderly had posted a Gibson Mastertone replica banjo as for sale on their website. That instrument was was brought to the attention of Gibson's management who insisted Gibson's legal team file a suit against Elderly for offering the "counterfeit" instrument for sale (not sure if that was the exact legal basis for the lawsuit). Elderly did every they could to avoid the legal battle, but, in my opinion, management wanted to make an example of Elderly and continued with the suit. The suit was eventually settled in Gibson's favor and Elderly lost their Gibson dealership, though I believe they have it back now.

Though my knowledge is not comprehensive, It is at least one example of Gibson taking legal action against a company that was offering a Gibson branded banjo that was not manufactured by Gibson.

Bob Smakula

quote:

---

Originally posted by tomd7

Gibson could've opposed Gold Tone's application and probably won and killed the application. Even after it registered, Gibson could've filed a cancellation on the same basis. The fact that Gibson didn't indicates Gibson doesn't care and doesn't plan to use the name again.

---

Except Gibson (as corporate owner) did put "Mastertone" on some new Epiphone banjos and an Epiphone F5 style mandolin in 2024! And Gold Tone has nothing about it! 

Old Hickory If I had to guess, there is likely an agreement in place between Gold Tone and Gibson that allows certain usages on both sides. That's usually how a trademark opposition is resolved like the one Gibson filed here.

I bought a '29 tb-2 in '98 and took it to Jimmy Cox for a double conversion.
I asked him to put his COX logo in the peghead and a couple of inlay changes and he said (at that time) that Gibson demanded that any new neck on an old Gibson had to be a copy of what would have come on the banjo from Gibson so mine had to have their pattern on it.
I decided on the FE and it had to have the Mastertone block,too.

I don't think they have that power,anymore.

quote:

---

Originally posted by steve davis

I bought a '29 tb-2 in '98 and took it to Jimmy Cox for a double conversion.
I asked him to put his COX logo in the peghead and a couple of inlay changes and he said (at that time) that Gibson demanded that any new neck on an old Gibson had to be a copy of what would have come on the banjo from Gibson so mine had to have their pattern on it.
I decided on the FE and it had to have the Mastertone block,too.

I don't think they have that power,anymore.

---

It was pretty much the opposite. Gibson didn't want anyone but themselves using their logos and inlays. They were actually sending out cease and desist letters demanding luthiers to stop using their logos and inlays in conversions. 
 

Also, they can't and never would stop anyone from putting their own name and inlay in a neck regardless of what pot it was going to be mounted to. 

I believe what Jimmy Cox told me in 19998.

quote:

---

Originally posted by steve davis

I believe what Jimmy Cox told me in 19998.

---

So let's unpack the logic here. 

How would Gibson enforce this demand?  Would this demand extend to importing a large number of "conversion necks"?

What power would Gibson have over you putting whatever non trademarked name (or your own trademarked name) on your own property or stuff you build?

Has there ever, at any time in history, been a civil case where a company sued a marker of unauthorized aftermarket parts that did NOT have the OEM name on it?

Sounds like someone was telling you whatever it took to get you to agree to their counterfeit parts.

quote:

---

Originally posted by Joel Hooks

A similar thing was done with Deering, they discovered that Galaxy went out of business and sold their assets at auction, the Vega trademark being abandoned, Deering filed for a new trademark of the name Vega.

---

You were wrong the last time you posted that, too.

Deering acquired the name from Galaxy but that was just the beginning. There's a lot more to it than that. I've been urging Greg for years to tell the complete story — I've heard it but in bits and pieces over the last 30 years.

Yes, you've posted docs etc. but your understanding is not as complete as you think.

quote:

---

Originally posted by tomd7

Old Hickory If I had to guess, there is likely an agreement in place between Gold Tone and Gibson that allows certain usages on both sides. That's usually how a trademark opposition is resolved like the one Gibson filed here.

---

Again, I'm no lawyer. I'd assume that Gold Tone, owning the registration, held most of the cards in any negotiation. So I would guess the allowance of certain usages was one-way, with Gold Tone allowing Gibson to put Mastertone on the limited number of Epiphone models and Gold Tone being free to use Mastertone as much as it wants (within the limits of its agreement with Potter).

To that end, Gold Tone has issued several more Mastertone banjos since then while Gibson/Epiphone has issued nothing else.

By the way, I played the "gold" Epiphone at the Gibson showroom in Nasville in 2024. The feel was great, the sound OK, the fit and assembly atrocious. Also, a magnet sticks to the tone ring.

quote:

---

Originally posted by Joel Hooks

quote:

---

Originally posted by steve davis

I believe what Jimmy Cox told me in 19998.

---

So let's unpack the logic here. 

How would Gibson enforce this demand?  Would this demand extend to importing a large number of "conversion necks"?

What power would Gibson have over you putting whatever non trademarked name (or your own trademarked name) on your own property or stuff you build?

Has there ever, at any time in history, been a civil case where a company sued a marker of unauthorized aftermarket parts that did NOT have the OEM name on it?

Sounds like someone was telling you whatever it took to get you to agree to their counterfeit parts.

 

---

Oh hell yes. Gibson and Fender do this. They lose more often than they win but, when they win, it's important.

Several years ago, there was a lengthy discussion on BHO about the lawsuit between Gibson and Elderly Instruments. The issue of “trade dress” was a big part of that discussion. Trade dress is an aspect of a trademark. In the Elderly case, it related specifically to the fingerboard and headstock inlay patterns used on the Gibson copy banjos they were offering for sale. My recollection of that discussion is that the court had ruled that Gibson had no trademark protection for the pre-war inlay patterns as trade dress because they had abandoned their use when they resumed production of banjos after World War II.