In the same way that Rock and Roll will never die (according to Neil Young) it would appear that battles over the protection of trade dress embodied in the shape of guitars will likewise never die. In the latest installment of guitar body trade dress disputes, Gibson Brands, Inc.’s application for trade dress protection for its ES-339 guitar body shape, shown below, has been opposed by 15 guitar manufacturers on the basis that the body shape is generic and has not acquired distinctiveness.

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Gibson’s attempt to obtain registered protection for its ES-339 guitar line goes back to 1993, when its predecessor, Gibson Guitar Corp., applied to register the trade dress protection of the body shape of Gibson’s ES-335 line. According to Gibson’s advertising material, the ES-335 had essentially the same body shape as the ES-339 but was slightly larger and heavier than the ES-339.

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During prosecution of the application for registration of the ES-335, the Trademark Examiner refused registration of the ES-335 body configuration for two reasons: (1) the ES-335 body shape allegedly was not inherently distinctive because it “comprised the standard characteristics of an electronic guitar such as a broad based body, narrow mid-section, and overall curvilinear design,” and the changes Gibson made to these standard features were of the sort regularly made by guitar manufacturers; and (2) Gibson allegedly had not presented evidence of acquired distinctiveness other than a long use of the ES-335 configuration. Gibson chose not to challenge the refusal and instead amended its application to the Supplemental Register, where its application matured to registration in 1996. In January of 2014, Gibson planted the seed for this latest guitar battle when it filed a new application for its ES-339 configuration, claiming that the ES-339 model acquired distinctiveness as a result of “continuous and exclusive use for over 50 years” in combination with the existing registration for ES-335 on the Supplemental Register since 1996. Without objection from the Examiner, the application proceeded to publication and is now opposed by 15 of Gibson’s competitors, specifically Armadillo Enterprises, Collings Guitars, Cordoba Music Group, Ed Roman Enterprises, E.S.P. Shibuya Enterprises, James Trussart Guitars, John Hornby Skewes & Co. Ltd., JS Technologies, Inc., Premier Builders Guild, Peavey Electronics, Sadowsky Guitars, Schecter Guitar Research, U.S. Music Corporation, Warwick, and Westheimer Corporation.

In support of their claim that the ES-339 body shape is generic, the opposers provided an impressive list of dozens of guitar manufacturers who allegedly made, marketed and sold guitars with a body shape allegedly identical or substantially similar to the ES-339 starting as early as the 1960s and continuing until this day. The opposers alleged that such “rampant use by third parties for more than half a century” as well as Gibson’s failure to treat the ES-339 guitar body shape as a trademark preclude the ES-339 configuration from functioning as a source identifier. The opposers further claimed that because relevant consumers are confronted with numerous uses of identical or substantially similar shapes by third parties, ES-339 could not have acquired distinctiveness.

This is not the first time the TTAB will consider whether the configuration of a guitar body acts as a source identifier and therefore merits registration on the Principal Register.  Recent TTAB decisions suggest that Gibson may face an uphill climb in registering its configuration. The TTAB decision in Stuart Spector Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549 (TTAB 2009) appears particularly informative because another major guitar manufacturer sought registration of the trade dress for its guitar body configurations, as shown below, and faced opposition from a group of other guitar manufacturers who claimed that Fender’s configurations were generic and had not acquired distinctiveness.

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While all three of Fender’s configurations were used in commerce since the 1950s, the trademark applications were not filed until 2003. In the meantime, according to the opposers, a cavalcade of other parties made and sold, in mass, guitars with identical or substantially similar body shapes without any objections from Fender. The TTAB held that due to the “rampant third-party use” of nearly identical marks since at least the 1970s and Fender’s failure to police its marks, the applied for configurations became so common in the industry that they no longer could identify a source. In fact, one of the configurations Fender sought to register was depicted as a generic electric guitar in a dictionary.

Although Fender presented extensive evidence in support of its claim of acquired distinctiveness, including evidence of long use, substantial sales volumes and advertising expenditures, media exposure, licensing, testimonies and surveys regarding the recognition of the mark, and evidence of intentional copying, the TTAB was not persuaded. It held that despite the iconic status of Fender guitars, Fender was not able to show that consumers with varying degrees of knowledge would or could identify the source of a particular guitar based solely on the outline of the body configurations.

In order to prevail in this opposition, Gibson will ultimately need to establish that the relevant consumers who encounter the outline of Gibson’s ES-339 shape, as it is depicted on the trademark application, associate this outline with a single source rather than a generic guitar body. This could be a challenging hurdle to overcome because the relevant consumer base would not appear to be limited to professional guitar players but also includes less sophisticated amateurs as well as students learning how to play guitar.