Gibson Guitar Corp.

Trademark Trial and Appeal Board

Dec 19, 2001

No. 75513342 (T.T.A.B. Dec. 19, 2001)

12/19/01

Paper No. 11
EJS

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gibson Guitar Corp.
________

Serial No. 75/513,342
_______

Lucian Wayne Beavers and Martha B. Allard of Waddey &
Patterson for Gibson Guitar Corp.

Barbara A. Gaynor, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney)
_______

Before Seeherman, Wendel and Drost, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Gibson Guitar Corp. has appealed from the final
refusal of the Trademark Examining Attorney to register the
design of a guitar body, shown below, for “stringed musical
instruments, namely guitars.”1 Applicant has described the
mark as comprising “a fanciful design of the body of a

1 Application Serial No. 75/513,342, filed July 6, 1998, and
asserting first use and first use in commerce on December 31,
1934.

THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.

Ser. No. 75/513,342
2
guitar” and has stated that “the matter shown by the dotted
lines is not a part of the mark and serves only to show the
position of the mark on the goods.”

Registration has been refused pursuant to Section
2(e)(5)of the Trademark Act, 15 U.S.C. 1052(e)(5), on the
ground that the applied-for mark is de jure functional, and
pursuant to Sections 1, 2 and 45 of the Trademark Act, 15
U.S.C. 1051, 1052 and 1127, on the ground that, if the
product design is not de jure functional, it does not
function as a mark, but is merely a configuration which has
not acquired distinctiveness.2

2 Initially applicant claimed that the configuration was
inherently distinctive; however, during the prosecution of this
application the Supreme Court held that a product configuration
could not be inherently distinctive. Wal-Mart Stores, Inc. v.
Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000).
Applicant has not pursued this argument in the appeal and,
accordingly, the question of inherent distinctiveness is not
before us in this appeal.
Ser. No. 75/513,342
3
Applicant and the Examining Attorney have filed appeal
briefs, but applicant did not file a reply brief, and did
not request an oral hearing.
We turn first to the issue of whether the guitar
configuration is de jure functional. A product feature is
functional and cannot serve as a trademark if it is
essential to the use or purpose of the article or it
affects the cost or quality of the article. A functional
feature is one the exclusive use of which would put
competitors at a significant non-reputation-related
disadvantage. Qualitex Co. v. Jacobson Products Co., 514
U.S. 159, 34 USPQ2d 1161 (1995), quoted in TrafFix Devices
Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d
1001, 1006 (2001).
In In re Morton-Norwich Products, Inc., 671 F.2d 1332,
213 USPQ 9 (CCPA 1982), the Court set forth four factors to
be considered in determining whether a product design in de
jure functional: (1) the existence of a utility patent
that discloses the utilitarian advantages of the design; 2)
advertising materials in which the originator of the design
touts the design’s utilitarian advantages; 3) the
availability to competitors of alternative designs; and 4)
facts indicating that the design results from a
Ser. No. 75/513,342
4
comparatively simple or cheap method of manufacturing the
product.
In this case, applicant has stated that there is no
utility patent, nor is there any evidence that its guitar
configuration results from a simpler or cheaper method of
manufacture. Accordingly, these factors do not weigh in
our decision.3
With respect to the second factor, applicant’s
advertising materials tout the functional advantages of its
guitar shape. Specifically, the advertisement for
applicant’s Epiphone guitar, submitted as Exhibits B and E
to applicant’s response filed on September 27, 1999,
includes the following copy:
The new Epiphone Advanced Jumbo (AJ)
acoustics are different from any other
ordinary dreadnought guitar. Our AJ
body shape not only looks more like a
bell, but also rings like a bell. The
more rounded upper bout produces
sweeter highs while the broader waist
and wider lower bout creates more
powerful lows. Combined with a solid
Sitka spruce top, mahogany back and
sides, reverse-belly rosewood bridge
and AJ scalloped top bracing, this
unique body shape creates a sound which
is much more balanced and less “muddy”

3 The Examining Attorney characterizes the absence of a utility
patent as a factor which weighs in applicant’s favor. We
disagree. Although the existence of a utility patent could weigh
against applicant in terms of showing that the configuration is
de jure functional, the absence of such a patent simply has no
weight in our analysis.
Ser. No. 75/513,342
5
than other ordinary dreadnought
acoustics.

This copy clearly indicates that the particular features of
the applicant’s configuration—the rounded upper bout, the
broader waist, and the wider lower bout, provide certain
acoustical advantages in terms of the sounds the guitar
makes. “This unique body shape creates a sound which is
much more balanced and less ‘muddy’ than other ordinary
dreadnought acoustics.”
We are not persuaded by applicant’s argument that this
advertisement does not tout the functional features of the
guitar shape, but is merely puffery. Even if one cannot
ascertain with specificity the sound of “sweeter highs”,
“more powerful lows”, and a balanced and less muddy sound,
the clear import of the advertisement is that the shape of
the guitar is what produces a better musical sound.
With respect to the third factor, the availability of
alternative designs, it is not clear, after TrafFix Devices
Inc. v. Marketing Displays Inc., supra, whether the
availability of alternatives weighs as a factor in
applicant’s favor. In TrafFix the Court said that there is
no need to engage in speculation about other design
possibilities because the functionality of, in that case,
the spring design,
Ser. No. 75/513,342
6
“means that competitors need not
explore whether other spring
juxtapositions might be used. The
dual-spring design is not an arbitrary
flourish in the configuration of MDI’s
product; it is the reason the device
works. Other designs need not be
attempted.
58 USPQ2d at 1007

Even assuming the availability of alternative designs
remains a factor in determining whether a configuration is
de jure functional, applicant has not shown that there are
alternative guitar shapes which can produce the same sound
as applicant’s configuration. On the contrary, the
evidence indicates that the specific shape of applicant’s
guitar is necessary for such sound. In particular, the
literature for the Santa Cruz Guitar Company’s “Vintage
Jumbo Model,” which appears identical in shape to the
configuration sought to be registered, states that:
“Round shouldered dreadnoughts have a
unique sound,” enthused Santa Cruz
president Richard Hoover. “Their deep,
rich, bass and sweet, strong treble
really shine in chord-oriented styles
like country, folk and blues.”
www.santacruzguitar.com

In view of the foregoing, we find that applicant’s
configuration is de jure functional.
Although this finding means that applicant’s
configuration is prohibited from registration by Section
2(e)(5) of the Act, in the interest of rendering a complete
Ser. No. 75/513,342
7
opinion we now turn to the question of whether, assuming
arguendo the configuration is not functional, it has
acquired distinctiveness as a trademark.
It is applicant’s burden to prove acquired
distinctiveness. Yamaha International Corporation v.
Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed.
Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122
USPQ 372 (CCPA 1959). In general, the more descriptive the
term, the greater the evidence necessary to demonstrate
acquired distinctiveness. See Yamaha International
Corporation v. Hoshino Gakki Co., Ltd., supra. The same is
true when the proposed mark is a configuration. Id.
In this case, applicant’s evidentiary burden is high.
The record shows that applicant’s guitar configuration is
extremely similar to those used by other guitar
manufacturers. In fact, in the first Office action the
Examining Attorney considered the configuration to be the
same as the dreadnought shape; the differences which
applicant pointed out in its response to that action are
relatively minor, having to do with a slightly rounder
shoulder, broader waist and wider lower bout. See Exhibit
C to the September 27, 1999 response.4 Although guitar

4 Applicant also claims that the neck of the guitar intersects
the applied-for shape at a different angle from the dreadnought,
Ser. No. 75/513,342
8
collectors and aficionados may well be aware of these
differences, the determination of acquired distinctiveness
must be made on the basis of casual guitar purchasers as
well. Applicant’s identification of goods is for guitars
per se. These would include inexpensive guitars which
might be purchased by people who wish to learn guitar as a
hobby, or by parents for their young children. Such casual
purchasers are not likely to note the differences between
applicant’s guitar configuration and those of others, let
alone recognize the overall configuration as a trademark
without significant education on the part of applicant.
We turn then to an examination of the evidence of
acquired distinctiveness provided by applicant.
Applicant has been using the configuration sought to
be registered since 1934, a period of 66 years. Although
this is a long period of time, the number of guitars sold
during this period is relatively small. For the first time
in its brief, applicant states that “over 100,000 guitars
embodying the shape have been sold in the United States….”
Brief, p. 7.5 Based on this figure, an average of only 1600

but this is not apparent from the drawing, and in any event the
neck is not claimed as a feature of the mark.
5 Although this “evidence” was not timely submitted prior to the
filing of the notice of appeal, see Trademark Rule 2.142(d), in
her brief the Examining Attorney has treated this information as
though it were of record, and we will therefore do the same.

Ser. No. 75/513,342
9
guitars were sold each year during that period. On its
face, this does not seem to be a significant number of
guitars sold each year, and applicant has given us no
information which would indicate the contrary, e.g., the
relative position between applicant’s sales of this
configuration and sales of other configurations. Moreover,
of this 100,000 figure, approximately 10,000 of the guitars
were sold since 1999 through applicant’s Epiphone division.
Thus, in the 64 years between 1934 and 1998, the average
number of this shaped guitar sold each year was even less
than 1600. As for the sales of 10,000 in a two-year
period, again there is no evidence to show whether this is
a large number of sales of guitars vis-à-vis the sales of
other companies.
With respect to applicant’s advertising, the material
made of record by applicant is an advertisement for the
Epiphone Advanced Jumbo guitars (Exhibit B); and a 1999
Epiphone catalog which, as applicant indicates, shows
guitars with the applied-for configuration at pages 23-25.
Page 23 is the same advertisement as Exhibit B, while
similar language to that quoted supra is repeated on page
24. Although the copy does point out that the “body shape
not only looks more like a bell, but also rings like a
bell,” because the copy goes on to point out the advantages
Ser. No. 75/513,342
10
of this shape in creating better tones, consumers are not
likely to regard this language as indicating that the shape
is a source-indicator, but as a functional feature.
Applicant has also submitted, as Exhibit F, a calendar
in which, for the month of October, a guitar with the
configuration at issue is pictured next to a nude woman,
who is shown from the rear. Applicant asserts that this
photograph “emphasizes the round curvaceous shape of the
guitar…” Response filed September 27, 1999. However, we
are not persuaded that consumers would understand from this
picture that the guitar configuration is meant to be a
source-identifier. There is no language accompanying the
picture to this effect, and this photograph appears in a
calendar featuring nude or scantily-dressed women with
guitars. The photographs are more likely to be seen as
using the women’s bodies to draw attention to the guitars,
rather than to the particular guitar configuration. For
example, the December photograph is taken from above,
thereby distorting the picture of the woman to emphasize
her breasts. We do not think that consumers are likely to
see that the pictured guitar has a breast shape. Even in
the October photograph of the configuration at issue, one
would not be aware of the specific features which applicant
claims are unique to this guitar, such as the round
Ser. No. 75/513,342
11
shoulder, from the picture of the woman, whose hair covers
much of her back, such that one couldn’t clearly say
whether her shoulders are more like the rounded shoulders
of applicant’s configuration, or the flat shoulder design
of the dreadnought guitar.
Moreover, even if the advertising materials could be
said to indicate to the public the particular shape of
applicant’s guitar configuration, applicant has provided no
evidence of the amount or distribution of such materials.
Thus, we cannot determine what kind of exposure, and hence
impact, these materials have had.
Finally, applicant points to Chapter 3, called “The
Round-Shoulder Jumbos,” in a book entitled Gibson’s
Fabulous Flat-Top Guitars, An Illustrated History & Guide.6
Exhibit A. From our reading of this chapter, this book
appears to be a history of the Gibson Guitar Company, and
the various guitars which it introduced. Applicant asserts
that the fame of the guitar, the fact that it is “so unique
and well known,” is shown by its being the subject of an
entire chapter. Applicant states that the guitar
configuration sought to be registered is commonly referred

6 By Eldon Whitford, David Vinopal, & Dan Erlewine. Applicant’s
submission does not indicate the copyright date.
Ser. No. 75/513,342
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to as the Gibson “Round Shoulder Jumbo” or “Advanced
Jumbo.”
There is no evidence as to what exposure this book has
had to the consuming public. Certainly the information
reflected in the chapter which is of record, providing
minute details as to the measurements, bridges, necks,
braces, etc. of each guitar model which Gibson introduced,
including several paragraphs written about a guitar of
which only three were made, indicates that this book was
not written for the casual purchaser, but for collectors
and those with a deep interest in the history of guitars
and the Gibson Guitar Company. As such, we cannot conclude
that purchasers in general would recognize the
configuration as a trademark because of this book.
Moreover, although the chapter is entitled “The Round-
Shoulder Jumbos, throughout the chapter the guitars are not
referred to by this term, but as “Jumbos,” “Advanced
Jumbos” or “AJs.” Indeed, there are very few references in
the chapter even to the fact that the guitars have rounded
shoulders. The first reference we note is on page 48,
although the chapter begins on page 18. The references to
round shoulders in the chapter are minimal, and are buried
in the rest of the text. In fact, references to the colors
of the woods and the changes to the shape of the necks are
Ser. No. 75/513,342
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given far greater prominence. As a result, readers of the
chapter are unlikely to regard the round-shouldered shape
as unique, or to consider the round shoulders to be a
source-identifying feature. We would also point out that
the configuration sought to be registered is for the
overall shape of the body, not just for the rounded
shoulders.
As noted previously, given the similarity of
applicant’s configuration to that of other guitars,
applicant has a heavy burden to demonstrate acquired
distinctiveness. We find that applicant has failed to meet
this burden, and that the evidence submitted by applicant
is insufficient to demonstrate that the configuration has
acquired distinctiveness, such that consumers would regard
it to be a trademark. Thus, even if the configuration were
not functional, applicant would not be entitled to
registration.
Decision: The refusal to register is affirmed on the
ground that the configuration is de jure functional and,
even if it were not functional, it does not function as a
trademark.