messenger
Well-known member
Still stupid IMO that someone can trademark a color.
Mailman1971
Moderator
Just make a humbucker in a slightly 'off white' color.
Call it the Jizzbucker. Then see if Dimarzio will chase that.
PS....I just put a copyright on "Jizzbucker" so dont none of you bastards try to steal it!!
Call it the Jizzbucker. Then see if Dimarzio will chase that.
PS....I just put a copyright on "Jizzbucker" so dont none of you bastards try to steal it!!
rottingcorpse
Well-known member
Mailman1971":1nfndngs said:PS....I just put a copyright on "Jizzbucker" so dont none of you bastards try to steal it!!
I named my "pet" sheep Jizzbucker long before your patent. And stay out of her barn you weirdo.
Doughboy
Member
Mailman1971":1bzjb843 said:Just make a humbucker in a slightly 'off white' color.
Call it the Jizzbucker. Then see if Dimarzio will chase that.
PS....I just put a copyright on "Jizzbucker" so dont none of you bastards try to steal it!!
This would probably work. Dimarzio has registered cream double coil pickups.
Make an eggshell off white humbucker, registered it & you're fine & you can go after anyone who infringes on your patent/registration.
Chubtone
Well-known member
What exactly constitutes "cream" in terms of color? Who is to say what is double cream and what is double off white or double aged white or double parchment or double vanilla?
I have always had a negative view of DiMarzio because of this lame trademark of something Gibson did. Why didn't they trademark zebra and double black pickups at the same time?
I have always had a negative view of DiMarzio because of this lame trademark of something Gibson did. Why didn't they trademark zebra and double black pickups at the same time?
Mailman1971
Moderator
Dammit you said her name was JIZZBUCKET!!! Not Bucker!!rottingcorpse":17jsiphq said:Mailman1971":17jsiphq said:PS....I just put a copyright on "Jizzbucker" so dont none of you bastards try to steal it!!
I named my "pet" sheep Jizzbucker long before your patent. And stay out of her barn you weirdo.
Chris6870
Well-known member
Fender makes an "aged white" humbucker.
W
WolfeMacleod
New member
Alright, guys, I'm glad I found this.
First of all I would like to point out that this is a TRADEMARK, not a PATENT. Patents expire, and trademarks are perpetual.
I am not the person being sued. I have never been threatened by Dimarzio, and I think I know why.
Over the last 18 years, I've done a MOUNTAIN of research into this trademark, and all color trademarks in general. I have done my homework and have given this information to the person being sued... and all other pickup makers I know, as well.
Much of my research can be seen here: http://www.wolfetone/com/trademark
If you take the time to read some of these documents, you will understand that Dimarzio's trademark is "aesthetically functional" and therefore cannot be protected by legal means, and should never have been registered in the first place, according to many IP attorneys and law professors I have spoken with.
The Doctrine of Aesthetic Functionality in trademark law can be read here: http://www.bitlaw.com/source/tmep/1202_02_a_vi.html
In the United States, the “functionality” doctrine exists to stop a party from obtaining exclusive trade dress or trademark rights in the functional features of a product or its packaging. The doctrine developed as a way to preserve the division between what trademark law protects and areas that are better protected by patent or copyright law. Thus, the functionality doctrine serves to prevent trademark owners from inhibiting legitimate competition
The "regular" functionality doctrine can be read here: http://www.bitlaw.com/source/tmep/1202_02_a_ii.html
Trade dress functionality can be read here: https://mpep.uspto.gov/RDMS/TMEP/print?version=Apr2013&href=TMEP-1200d1e873.html
Here are a few case history examples.
Aromatique vs. Gold Seal with snippets from the rulings: http://openjurist.org/28/f3d/863/aromatique-inc-v-gold-seal-inc
The use of red or green or red and green cords on the package of a product intended for sale in connection with the Christmas season, however, is clearly not protectable because such colors are traditionally used for products relating to Christmas and are therefore neither distinctive nor nonfunctional........
Quote:
Viewed as a whole, Aromatique's asserted trade dress is clearly functional. The dress is not an arbitrary embellishment adopted for purposes of identification and individuality. Instead, the combination of all of the features of the dress, except the size and shape of the label (which may be separately protected trademarks that are not at issue here), are important ingredients in the commercial success of Aromatique's products. Under our definition of functionality in Prufrock, the trade dress is functional and, therefore, may not be protected.......
Quote:
Aromatique has no right under federal trademark laws to exclude others from using the trade dress asserted here.............
Quote:
the marks are invalid so there is nothing to infringe.........If Aromatique lost sales because of competition from Gold Seal, that loss is damnum absque injuria (Loss without injury)
Clearly, we know that cream colored binding, pickguards, and mounting rings are traditional in the guitar industry.
Christian Louboutin: https://www.foley.com/second-circui...ction-of-fashion-color-trademarks-09-05-2012/
The appellate court held that the doctrine of aesthetic functionality is a valid defense in the Second Circuit in cases “where protection of the mark significantly undermines competitors’ ability to compete in the relevant market” (emphasis in original). A mark is aesthetically functional if granting exclusive protection to the feature “would put competitors at a significant non-reputation-related disadvantage,” citing TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32-33 (2001).
John Deere: http://www.bna.com/john-deere-colors-n57982059682/
Deere moved to dismiss the aesthetic functionality counterclaim under Fed. R. Civ. P. 12(b)(6) for failure to state a claim for which the law offers a remedy.
However, the court noted that in 1982, a federal district court determined that “ ‘John Deere green' was aesthetically functional precisely because ‘farmers prefer to match their loaders to their tractor.' ” Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85 (S.D. Iowa 1982); aff'd 721 F.2d 253 (8th Cir. 1983).
Clearly, we know that guitar players are aesthetically-minded people, and that guitars are often seen as works of art.
Mercury Brunswick: http://www.duetsblog.com/2010/08/ar...color-black-functions-but-not-as-a-trademark/
Turning to the present case, the Board determined that "black, when applied to [Mercury’s] outboard marine engines, is de jure functional because of competitive need." British Seagull, 28 USPQ2d at 1199. The color black, as the Board noted, does not make the engines function better as engines. The paint on the external surface of an engine does not affect its mechanical purpose. Rather, the color black exhibits both color compatibility with a wide variety of boat colors and ability to make objects appear smaller. With these advantages for potential customers, the Board found a competitive need for engine manufacturers to use black on outboard engines. Based on this competitive need, the Board determined that the color was de jure functional. This court discerns no error in the Board’s legal reasoning and no clear error in its factual findings.
It cannot be reasonably argued that pickup makers, especially the small pickups makers, do not have a competitive need to be able to make the full color spectrum of humbuckers. If you consider that there are only four basic, commonly accepted colors - black, zebra, cream, and white, you must realize that removing 1/4 of those colors from our production is a serious injury. How serious, you might ask? I cannot speak for others, but I average 4-6 requests per week. If we assume that amounts to 10 extra pickups per week, that = an additional $67,000 in sales per year, which would give great growth possibilities... consider two full-time employees, advertisement, custom tooling, etc. In short, it means growth. In 40 years of aftermarket pickups, only one company other that the original two or three (Duncan, Dimarzio, EMG) has been able to climb out of "smallness" -- everyone else has been kept at bay. In my 18 years, I still employee only one part time assembler....and have never advertised nor bought custom tooling due to funding shortages.
If you feel that the cream color for humbuckers could not be considered functional, think again. In 2005, Dimarzio again attempted to register another color. That registration was refused because guitars have chromed hardware, and some guitars have mirrored pickguards.
You can read those documents here: http://wolfetone.com/trademark/CHROME.pdf
For those who don't want to read the whole thing...
First of all I would like to point out that this is a TRADEMARK, not a PATENT. Patents expire, and trademarks are perpetual.
I am not the person being sued. I have never been threatened by Dimarzio, and I think I know why.
Over the last 18 years, I've done a MOUNTAIN of research into this trademark, and all color trademarks in general. I have done my homework and have given this information to the person being sued... and all other pickup makers I know, as well.
Much of my research can be seen here: http://www.wolfetone/com/trademark
If you take the time to read some of these documents, you will understand that Dimarzio's trademark is "aesthetically functional" and therefore cannot be protected by legal means, and should never have been registered in the first place, according to many IP attorneys and law professors I have spoken with.
The Doctrine of Aesthetic Functionality in trademark law can be read here: http://www.bitlaw.com/source/tmep/1202_02_a_vi.html
In the United States, the “functionality” doctrine exists to stop a party from obtaining exclusive trade dress or trademark rights in the functional features of a product or its packaging. The doctrine developed as a way to preserve the division between what trademark law protects and areas that are better protected by patent or copyright law. Thus, the functionality doctrine serves to prevent trademark owners from inhibiting legitimate competition
The "regular" functionality doctrine can be read here: http://www.bitlaw.com/source/tmep/1202_02_a_ii.html
Trade dress functionality can be read here: https://mpep.uspto.gov/RDMS/TMEP/print?version=Apr2013&href=TMEP-1200d1e873.html
Here are a few case history examples.
Aromatique vs. Gold Seal with snippets from the rulings: http://openjurist.org/28/f3d/863/aromatique-inc-v-gold-seal-inc
The use of red or green or red and green cords on the package of a product intended for sale in connection with the Christmas season, however, is clearly not protectable because such colors are traditionally used for products relating to Christmas and are therefore neither distinctive nor nonfunctional........
Quote:
Viewed as a whole, Aromatique's asserted trade dress is clearly functional. The dress is not an arbitrary embellishment adopted for purposes of identification and individuality. Instead, the combination of all of the features of the dress, except the size and shape of the label (which may be separately protected trademarks that are not at issue here), are important ingredients in the commercial success of Aromatique's products. Under our definition of functionality in Prufrock, the trade dress is functional and, therefore, may not be protected.......
Quote:
Aromatique has no right under federal trademark laws to exclude others from using the trade dress asserted here.............
Quote:
the marks are invalid so there is nothing to infringe.........If Aromatique lost sales because of competition from Gold Seal, that loss is damnum absque injuria (Loss without injury)
Clearly, we know that cream colored binding, pickguards, and mounting rings are traditional in the guitar industry.
Christian Louboutin: https://www.foley.com/second-circui...ction-of-fashion-color-trademarks-09-05-2012/
The appellate court held that the doctrine of aesthetic functionality is a valid defense in the Second Circuit in cases “where protection of the mark significantly undermines competitors’ ability to compete in the relevant market” (emphasis in original). A mark is aesthetically functional if granting exclusive protection to the feature “would put competitors at a significant non-reputation-related disadvantage,” citing TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32-33 (2001).
John Deere: http://www.bna.com/john-deere-colors-n57982059682/
Deere moved to dismiss the aesthetic functionality counterclaim under Fed. R. Civ. P. 12(b)(6) for failure to state a claim for which the law offers a remedy.
However, the court noted that in 1982, a federal district court determined that “ ‘John Deere green' was aesthetically functional precisely because ‘farmers prefer to match their loaders to their tractor.' ” Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85 (S.D. Iowa 1982); aff'd 721 F.2d 253 (8th Cir. 1983).
Clearly, we know that guitar players are aesthetically-minded people, and that guitars are often seen as works of art.
Mercury Brunswick: http://www.duetsblog.com/2010/08/ar...color-black-functions-but-not-as-a-trademark/
Turning to the present case, the Board determined that "black, when applied to [Mercury’s] outboard marine engines, is de jure functional because of competitive need." British Seagull, 28 USPQ2d at 1199. The color black, as the Board noted, does not make the engines function better as engines. The paint on the external surface of an engine does not affect its mechanical purpose. Rather, the color black exhibits both color compatibility with a wide variety of boat colors and ability to make objects appear smaller. With these advantages for potential customers, the Board found a competitive need for engine manufacturers to use black on outboard engines. Based on this competitive need, the Board determined that the color was de jure functional. This court discerns no error in the Board’s legal reasoning and no clear error in its factual findings.
It cannot be reasonably argued that pickup makers, especially the small pickups makers, do not have a competitive need to be able to make the full color spectrum of humbuckers. If you consider that there are only four basic, commonly accepted colors - black, zebra, cream, and white, you must realize that removing 1/4 of those colors from our production is a serious injury. How serious, you might ask? I cannot speak for others, but I average 4-6 requests per week. If we assume that amounts to 10 extra pickups per week, that = an additional $67,000 in sales per year, which would give great growth possibilities... consider two full-time employees, advertisement, custom tooling, etc. In short, it means growth. In 40 years of aftermarket pickups, only one company other that the original two or three (Duncan, Dimarzio, EMG) has been able to climb out of "smallness" -- everyone else has been kept at bay. In my 18 years, I still employee only one part time assembler....and have never advertised nor bought custom tooling due to funding shortages.
If you feel that the cream color for humbuckers could not be considered functional, think again. In 2005, Dimarzio again attempted to register another color. That registration was refused because guitars have chromed hardware, and some guitars have mirrored pickguards.
You can read those documents here: http://wolfetone.com/trademark/CHROME.pdf
For those who don't want to read the whole thing...
W
WolfeMacleod
New member
This is only the tip of the iceberg, so to speak. If you want to see more of the iceberg -- a lot more -- read the documents I posted on my website above.
If we examine the various color trademarks that survive and are non-functional, we begind to notice a pattern.
UPS's brown truck trademark. You don't see UPS driving around in blue, white, or any other color truck.
Tiffany Blue color for packaging.... you don't see Tiffany using any other color but blue. Do you?
Fiskarks orange handles scissors... it's pretty rare to find a Fiskars scissor with another colored handle, unless it's old.
Ownes-Corning Pink insulation trademark -- you don't see thier insulation in any color but pink.
In each of these color trademarks, the color is deemed not functional. It has no aesthetic value because it it not combined with any other product to make a "whole" and other manufacturers have access to a MUCH wider color palette that the guitar industry.
In Dimarzio's own literature and website, they state that the standard color for humbuckers is black. In fact, they make a wide range of colors.
If their trademark is for cream, don't you think that their standard color should also be cream?
If we examine the various color trademarks that survive and are non-functional, we begind to notice a pattern.
UPS's brown truck trademark. You don't see UPS driving around in blue, white, or any other color truck.
Tiffany Blue color for packaging.... you don't see Tiffany using any other color but blue. Do you?
Fiskarks orange handles scissors... it's pretty rare to find a Fiskars scissor with another colored handle, unless it's old.
Ownes-Corning Pink insulation trademark -- you don't see thier insulation in any color but pink.
In each of these color trademarks, the color is deemed not functional. It has no aesthetic value because it it not combined with any other product to make a "whole" and other manufacturers have access to a MUCH wider color palette that the guitar industry.
In Dimarzio's own literature and website, they state that the standard color for humbuckers is black. In fact, they make a wide range of colors.
If their trademark is for cream, don't you think that their standard color should also be cream?
M
milkchickenbomb
New member
Mailman1971":p8v3ti93 said:Just make a humbucker in a slightly 'off white' color.
Call it the Jizzbucker. Then see if Dimarzio will chase that.
PS....I just put a copyright on "Jizzbucker" so dont none of you bastards try to steal it!!
Damn, does that mean my trademark application for "cumbucker" will get rejected?
D
Deleted member 13074
Guest
Excellent info, Wolfe, and much appreciated for putting it into the public domain.
It puts into words the gut feeling that the situation creates.
The law is on the whole based on sensibility and fairness. I hope to see such in the outcome.
It's a pity there has to be a fight to get there, although as was the case with Fender and the
Stratocaster shape, it is heartening to see the smaller builders collaborating on their defense.
Kudos to you for that.
It puts into words the gut feeling that the situation creates.
The law is on the whole based on sensibility and fairness. I hope to see such in the outcome.
It's a pity there has to be a fight to get there, although as was the case with Fender and the
Stratocaster shape, it is heartening to see the smaller builders collaborating on their defense.
Kudos to you for that.
W
WolfeMacleod
New member
Sick Squid":13wv31lj said:
It is, I agree. We're stronger together when we work as a force. The worst thing about it though, is that even with all of us combined, we may not be able to undertake such an effort without getting the rest of the community involved.
I know there are plenty of people who side with Dimarzio on this, but the point of trademark law is not to hinder legitimate competition, but to bolster it instead. In order for some people to understand the pervasive need for it to be freed, they really need to be on this side of the fence. It's one of, if not the, most damaging things in the industry.
rsm
Well-known member
Have trademarks been removed or rescinded by courts in the past? If one was to call it double off-white, would that infringe the trademark?
moltenmetalburn
Active member
shred4Him":3v2xi1ru said:
Magnets change the sound in ANY pickup. Opinion does not invalidate science. The magnetism is ENTIRELY responsible for the inductance happening. Each magnet has different magnetism specs.
They are wrong no matter how excellent their pickups may be.
cardinal
Well-known member
^ the point isn't that magnets don't matter. The point is that you can't judge a pickup solely by the magnet that's in it.
Given a particular pickup construction (windings, wire type, shape/thickness of the bobbin, pole pieces, whether it uses things like Dimarzio's extra slug pieces ("virtual vintage") or gaps between the poles and the magnet ("air" technology), yes: changing the magnet can have pretty predictable results.
But without really knowing those construction features, knowing only the magnet type isn't particuarly helpful in guessing what the pickup will sound like.
Given a particular pickup construction (windings, wire type, shape/thickness of the bobbin, pole pieces, whether it uses things like Dimarzio's extra slug pieces ("virtual vintage") or gaps between the poles and the magnet ("air" technology), yes: changing the magnet can have pretty predictable results.
But without really knowing those construction features, knowing only the magnet type isn't particuarly helpful in guessing what the pickup will sound like.
W
WolfeMacleod
New member
rsm":31sw3ep5 said:
The trademark has nothing do to with the "name" or words "double cream" -- it's all about the actual color, as applied to a humbucker.
If you've read any of the link I've posted, you'll see that trademarks, especially those of color, are frequently invalidated.
John Deere is a notable case.
As is Mercury Brunswick
and Good Humor Ice Cream (white trucks and uniforms)
and Aromatique (potpourri packaging)
and Florists’ Transworld Delivery, Inc (black boxes for flower arrangements)
And the Klondike bar's "blue" packaging (because it was psychologically suggestive that ice cream was colder)
Christian Louboutin's red-shoe sole trademark was severely limited to it's scope.
There are hundreds of color trademarks that have been invalidated for exactly the same reasons that Dimarzio's should be.
maddnotez
Banned
Well-known member
WolfeMacleod":7r8hrz2t said:
This is exactly why the small builders have nothing to worry about.
I have no skin in this game although I do own a Dimarzio and have enjoyed it BUT I think the scare tactic is lame and I would rather see the small guys make a great living from what they do VS. The big sharks trying to take them out.
Best of luck to all involved and it seems there is nothing to worry about. I do not know much about Law but this one seems like a no brainer.
W
WolfeMacleod
New member
Couple interesting things I came across today.
January 1977 ad for Mighty Might. I've gone through a stack of 70's Guitar Players and so far have found zero Dimarzio ads prior to 1977. I have a gap of 1966 though. but should get some soon.
See the Bill Lawrence reissue insert? Did Larry blatantly lie to the USPTO?
January 1977 ad for Mighty Might. I've gone through a stack of 70's Guitar Players and so far have found zero Dimarzio ads prior to 1977. I have a gap of 1966 though. but should get some soon.
See the Bill Lawrence reissue insert? Did Larry blatantly lie to the USPTO?
W
WolfeMacleod
New member
Maxon pickups. Early 70's.
O
Orionsbelt456
Member
Sounds like cruddy news for dimarzio. I mean, just keep it the way it is and dont get money hungry
