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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.

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Your guess is wrong. I know people deep inside both organizations who assure me that no such agreement exists. Since Gibson hasn't made a banjo in sixteen years, there currently isn't any need.

Gibson left the barn door open and Gold Tone took advantage of the situation. 

mikehalloran so, if I import from China 1000 necks that will fit a Gibson Les Paul, only I put “Joe” on the peghead, Gibson will sue me for NOT putting “Gibson” on the peghead?

And if I import 1000 Les Paul necks from China that say “Gibson” on the peghead, Gibson will give me their blessing as long as I say that they are only to replace broken Les Paul necks?

In this hypothetical example, I, the importer, am in no way associated with Gibson.

Joel Hooks Gibson has some trade dress (i.e., product design) protection on the Les Paul shape, so that affects the answer to your question. If trade dress were not an issue, and they were just generic necks that happened to fit a Les Paul body, then you would be more likely to get sued for Example 2 than Example 1. Gibson doesn't own the manner in which a neck connects to an instrument body. So if that's all you're copying, you're fine. Gibson does own their trademark, so using it on 1000 necks would be an issue if they knew about it.

quote:

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Originally posted by tomd7

Joel Hooks Gibson has some trade dress (i.e., product design) protection on the Les Paul shape, so that affects the answer to your question. If trade dress were not an issue, and they were just generic necks that happened to fit a Les Paul body, then you would be more likely to get sued for Example 2 than Example 1. Gibson doesn't own the manner in which a neck connects to an instrument body. So if that's all you're copying, you're fine. Gibson does own their trademark, so using it on 1000 necks would be an issue if they knew about it.

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Yes, that is exactly my point, evidently Mike misunderstood my original post. 

quote:

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Originally posted by tomd7

Joel Hooks Gibson has some trade dress (i.e., product design) protection on the Les Paul shape, so that affects the answer to your question. If trade dress were not an issue, and they were just generic necks that happened to fit a Les Paul body, then you would be more likely to get sued for Example 2 than Example 1. Gibson doesn't own the manner in which a neck connects to an instrument body. So if that's all you're copying, you're fine. Gibson does own their trademark, so using it on 1000 necks would be an issue if they knew about it.

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Several years back Gibson wrote letters (not sure they were cease and desist, but maybe something similar) to many of the top mandolin makers threatening them over their F-5 mandolins saying that even the shape of the body was at issue, among other claims.  The mandolin makers that I know disputed their claims, but did agree to change the shape of their truss rod covers and no longer use the flower pot headstock inlay.  I think that is correct.

BanjoLink Thanks, John. I had heard many years ago that Gibson sent some kind of cease and desist letter to Steve Huber. I can't recall if it were for the Gibson script or an inlay design he was using.

I'm fairly certain Jimmy Cox never made a counterfeit part.

Ken just a fyi, trademarks are awarded in catagorys I beleve catagory 15 is musical instruments, and covers all instruments banjos pianos violas etc, Potter legally owned the trademark and every mastertone Gibson made was a violation

I sure do miss Jimmy Cox.
I first saw him on TV playing with Charlie Gilliam and Smokey Green on the Ken McKenzie Show out of Portland in the early 60s.

desert rose That's not entirely correct. Ownership of one trademark in a class doesn't necessarily block someone else from using the same mark for different goods that are included in the same class. You're right that trademarks are registered in a class, but you have to choose the goods or services within that class that you want to cover. This decision is made when you file the application. One registration in Class 15 for banjos does not necessarily cover everything else that's in Class 15 as well. Every Mastertone that Gibson made was not a violation of Potter's mark. The USPTO allowed both MASTERTONE trademarks to register because it determined that consumers are not likely to confuse a mark used on a viola with a mark used on a banjo. There's a 13 factor test (DuPont test in the Federal Circuit) to assess likelihood of confusion. The touchstone is always consumer confusion.

As another example, I often work with video game companies and register a lot of trademarks in Class 9, which covers downloadable video games (online video games are a different class, Class 41). Class 9 also covers all other forms of downloadable software plus some weird things like eyeglasses. Registering a trademark in Class 9 for a video game title does not give the owner rights over eyeglasses. It doesn't even give rights over software of unrelated types such as word processing software. That's because the USPTO has determined that consumers aren't likely to believe that the same or similar marks used on both types of goods indicates they originate from the same source.

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Originally posted by steve davis

I'm fairly certain Jimmy Cox never made a counterfeit part.

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Aftermarket parts labeled as OEM are counterfeit. This is not a debate. There really isn't a lot of nuance in this situation.