Gibson Guitar Corp.

Trademark Trial and Appeal Board

Mar 31, 2005

No. 76230196 (T.T.A.B. Mar. 31, 2005)

Mailed:
March 31, 2005
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gibson Guitar Corp.
________

Serial No. 76230196
_______

Lucian Wayne Beavers and Edward D. Lanquist, Jr. of Waddey
& Patterson, P.C. for Gibson Guitar Corp.

Matthew J. Pappas, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Hohein and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Gibson Guitar Corp. seeks registration on the
Principal Register of the mark L P for goods identified in
the application as “stringed musical instruments – namely,
electric guitars,” in International Class 15.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register applicant’s mark based upon Section 2(d) of the

1 Application Serial No. 76230196 was filed by Gibson Guitar
Corp. on March 26, 2001 based upon applicant’s allegation of a
bona fide intention to use this mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76230196
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Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
Attorney has taken the position that applicant’s mark, when
used in connection with electric guitars, so resembles the
six marks shown below in registrations owned by the same
party,2 as to be likely to cause confusion, to cause
mistake or to deceive:

for “percussion musical instruments,”
in International Class 15;
Reg. No. 0880477 issued on November
11, 1969, section 8 affidavit
accepted and section 15 affidavit
acknowledged; second renewal in
1999; the word “Percussion” is
disclaimed apart from the mark as
shown;

for “percussion musical instruments,
bags for musical instrument
equipment,” in International Class
15;
Reg. No. 1292158 issued on August
28, 1984, section 8 affidavit
accepted and section 15 affidavit
acknowledged; renewal in 2003;

for “hand percussion instruments,” in
International Class 15;
Reg. No. 2329912 issued on March
14, 2000; the words “Music
Collection” are disclaimed apart
from the mark as shown;

2 The prosecution history of this case reveals that this case
was suspended for a period of time while applicant sought to
negotiate a consent agreement with registrant, although
ultimately it was not successful in this effort.
Serial No. 76230196
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LP ASPIRE
for “percussion instruments, namely,
congas, bongos, timbales, drums,
cowbells, blocks, tambourines,
chimes, bells, triangles, shekeres,
guiros, shakers, maracas, claves,
castanets, whistles, cymbals, gongs,
sticks, beaters; mounts, brackets,
stands, percussion tables for use
therewith; bags and carrying cases
for carrying and storing musical
instruments,” in International Class
15;
Reg. No. 2386372 issued on Sept 12,
2000;

for “percussion instruments, namely,
congas, bongos, timbales, drums,
cowbells, blocks, tambourines,
chimes, bells, triangles, shekeres,
guiros, shakers, maracas, claves,
castanets, whistles, cymbals, gongs,
sticks, and beaters, mounts,
brackets, stands, and fitted bags and
fitted cases all for use with
percussion instruments, and
percussion tables,” in International
Class 15;
Reg. No. 2391247 issued on October
3, 2000; and

for “musical instruments, namely,
percussion instruments,” in
International Class 15.
Reg. No. 2557301 issued on April 2,
2002.

Applicant and the Trademark Examining Attorney
submitted briefs. Applicant did not request an oral
hearing.
Serial No. 76230196
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Applicant argues that when its LP mark is used in
connection with guitars, it does not create a likelihood of
confusion with registrant’s use of its LP derivative marks
in connection with percussion instruments for a variety of
reasons:
• The goods are not sufficiently similar to support
finding a likelihood of confusion.
• LP on guitars means LES PAUL to guitar purchasers,
while LP on drums means LATIN PERCUSSION to purchasers
of percussion instruments such as drums.
• Because of these different associations, the marks are
sufficiently different to allow applicant’s mark LP to
register in connection with electric guitars while
registrant’s LP formative marks are registered in
connection with percussion instruments.
• There have been thirty-four years of contemporaneous
use without actual confusion.
• There is no likelihood of confusion with the
registered marks because registrant’s products are
always otherwise branded as LATIN PERCUSSION while
applicant’s products are branded as LES PAUL.
Serial No. 76230196
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By contrast, the Trademark Examining Attorney takes
the position that the dominant portions of the marks are
identical; that “the dominant letters LP … have come to be
recognized by consumers as indicative of registrant’s
family of marks in the music industry”; that as used,
applicant’s typed drawing could be presented in any style
of lettering, including ones most similar to registrant’s
designs; that the goods themselves and the channels of
trade are closely related; and that a bold assertion by
applicant’s president that based on his personal knowledge,
“no consumer has been confused” despite thirty four years
of concurrent use, is not definitive in this limited, ex
parte context.
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant
to the factors bearing upon the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Serial No. 76230196
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Accordingly, we turn first to the du Pont factor
focusing on the relatedness of applicant’s goods to the
goods in the cited registrations.
The Trademark Examining Attorney argues that
applicant’s guitars are closely related to registrant’s
percussion instruments. The record contains third-party
registrations and webpages demonstrating that both of these
types of musical instruments are manufactured and marketed
by entities utilizing a single trademark to indicate the
source of both types of goods.3 Hence, the Trademark
Examining Attorney concludes “ … it is highly likely that
purchasers of musical instruments, upon seeing highly
similar marks used on and in connection with closely-
related goods, would believe that the goods emanate from
the same source.” Trademark Examining Attorney’s appeal
brief, pp. 6 – 7.
By contrast, applicant argues that its goods “are not
sufficiently similar” (applicant’s brief, p. 12) to
registrant’s goods to support a likelihood of confusion in
this case:

3 Copies of the webpages were attached to the Office action
of May 20, 2002 and the third-party registrations were attached
to the Office actions of May 20, 2002 and October 7, 2004
(denying applicant’s request for reconsideration of the final
refusal).
Serial No. 76230196
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The examiner said that others sell
drums and guitars making the goods
sufficiently similar to create a likelihood
of confusion. The examining attorney uses
the “emanation rule.” However, the
“emanation rule” creates a per se rule that
any goods and services that could emanate
from the same source are related for the
purposes of §2(d). Such a finding creating
a per se rule is improper. See, e.g.,
Information Resources Inc. v. X*Press
Information Services, 6 USPQ2d 1034, 1038
(TTAB 1988) [regarding computer hardware and
computer software]; Hi-Country Foods Corp.
v. Hi Country Beef Jerky, 4 USPQ2d 1169,
1171 (TTAB 1987) [regarding food]; In re
British Bulldog, Ltd., 224 USPQ 854, 855-56
(TTAB 1984) [regarding clothes]. Therefore,
to find the goods similar because others
make both goods is improper. To be honest,
emanation may be a proper approach is [sic]
many instances. However, where the marks
have been used in connection with the goods
for such a long period of time confusion-
free, the analysis is improper. Therefore,
the combination of the extended concurrent
use without confusion combined with the
differences in marks and goods justifies a
reversal of the refusal to register.

There are a number of reasons why we disagree with
applicant on this point.
First, the Trademark Examining Attorney has properly
placed into the record third-party registrations that are
based on use in commerce. Although they are not evidence
that the marks shown therein are in use on a commercial
scale or that the public is familiar with them, they do
have probative value to the extent that they may serve to
Serial No. 76230196
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suggest that such goods are of a type which may emanate
from a single source. See In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785-86 (TTAB 1993). Applicant argues that
this “emanation rule” creates an “impermissible per se
rule.” We disagree. An example of an impermissible per se
rule in this case would be if the Trademark Examining
Attorney, in his attempt to justify the relatedness of
these respective goods, had merely concluded ‘that electric
guitars and percussion instruments are related because both
are classified in International Class 15.’ By contrast,
under Albert Trostel, supra, these third-party
registrations have probative value for the very purpose the
Trademark Examining Attorney placed them into the record –
namely, they suggest that these respective goods are of a
type that may emanate from a single source.
Second, in addition to the third-party registrations,
the Trademark Examining Attorney has made of record pages
taken from various websites. These materials show marks
that are in use on a commercial scale for guitars and
drums.4

4 Gretsch Musical Instruments: Home of that Great Gretsch
Sound! http://www.gretsch.com/intro.html
Yamaha Musical Products: [two of five product groups:
“Guitars and Electric Basses” and “Drum Sets and Percussions”]
http://www.yamaha.com
Serial No. 76230196
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As a final observation on the relatedness of electric
guitars and percussion instruments, in addition to the
probative evidence drawn from the third-party registrations
and several webpages, it is common knowledge that any rock
band needs, at a minimum, a guitar and a set of drums.
Furthermore, as to the du Pont factor focusing on the
similarity of established, likely-to-continue trade
channels, the record demonstrates that guitars and
percussion instruments are sold through the same channels
of trade, and that both products would be sold to the same
class of ordinary consumers.
We turn next to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound and connotation. All
six of the marks in the cited registrations contain the
letters “LP” as their dominant elements.5 Moreover, we

Although being sold under a separate product mark,
applicant’s own website has a link under the heading “Drums” to
the “Slingerland Drums.”
http://www.gibson.com/products/instindex/index.html
5 Although the Trademark Examining Attorney argues that
consumers have come to recognize the letters “LP” as “indicative
of registrant’s family of marks in the music industry,” simply
using a series of similar marks does not of itself establish the
existence of a family, and the Trademark Examining Attorney has
not met the burden of demonstrating a family of marks. J & J
Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d
1889 (Fed. Cir. 1991). Thus, in reaching our conclusion on
likelihood of confusion, we have not treated the registered
marks as being part of a family.
Serial No. 76230196
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agree with the Trademark Examining Attorney that Reg. Nos.
1292158 and 2391247 are the most similar to applicant’s
mark, consisting of just the letters LP on a background
circular “carrier” device. Because they are the most
similar, we have chosen to focus primarily on these two
marks in assessing the likelihood of confusion herein. A
circle background is one of the most common and ordinary
background designs used in trademarks, and as such, has no
real trademark significance. Accordingly, applicant’s mark
is not only identical to these registered marks in sound
and connotation, but it is extremely similar in
appearance.6 Hence, when compared in their entireties, we
find that applicant’s mark creates a similar overall
commercial impression to the marks in the cited
registrations.7

6 We should also note that as a consequence of applicant’s
mark having been depicted as a standard character drawing, it
may be displayed in any reasonable format, including having it
appear within a circle background as shown in several of the
cited registrations. See INB National Bank v. Metrohost Inc.,
22 USPQ2d 1585, 1588 (TTAB 1992), citing Phillips Petroleum Co.
v. C. J. Webb, Inc. 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971).
“[T]he argument concerning a difference in type style is
not viable where one party asserts rights in no particular
display. By presenting its mark merely in a typed drawing,
a difference cannot legally be asserted by that party….
Thus, … the displays must be considered the same.”
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed.
Cir. 1983). (italics in original).
7 In limiting our discussion to Registration Nos. 1292158 and
2391247, we do not mean to imply that there is no likelihood of
Serial No. 76230196
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Moreover, as to connotation, we disagree with
applicant’s argument that the mark LP has different
connotations when applied to these different goods. Apart
from any arguable associations with, or abbreviations for,
“Les Paul” or “Latin Percussion,” LP appears to be totally
arbitrary as applied to musical instruments. Accordingly,
this is clearly not a case where the term intrinsically has
a different connotation as applied to the respective
goods.8
On a related du Pont factor – the number and nature of
similar marks in use on similar goods – we also point out
that, based upon the record before us, we must consider LP
to be a strong mark. This is because there is no evidence
of third-party use or registration of LP marks for similar
goods.
A critical part of applicant’s argument that confusion
is not likely herein is that in the real world, there are
different associations connected with each of these
respective marks. Specifically, applicant argues

confusion between applicant’s mark and the remaining cited
registrations. On the contrary, we find that these marks are
also confusingly similar.
8 Contra In re British Bulldog, Ltd., 224 USPQ 854, 856 (TTAB
1984): “‘PLAYERS’ for shoes implies a fit, style, color, and
durability adapted to outdoor activities. ‘PLAYERS’ for men’s
underwear implies something else, primarily indoors in nature.”
Serial No. 76230196
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strenuously that LP means LES PAUL for guitar purchasers,
while LP means LATIN PERCUSSION for purchasers of
percussion instruments.
In this context, it behooves us to determine from the
record whether, as used in connection with guitars, the
letters “LP” would be viewed as being interchangeable with
LES PAUL.
In the reference work Gibson Les Paul Book, we note
the following entries:
“Gibson catalog 1981 (left) On display are
the LP XRI and XRII, which were rather
unexciting models devised by one of Gibson’s
regional sales teams…”; and

LP XRI/XRII/XRIII
LPXRI 1981-1982 ‘XR-I’ on truss-rod cover …
LPXRII 1981-1982 ‘XR-II’ on truss-rod cover …
LPXRIII 1982 ‘XR-III’ on truss-rod cover …

From the publication Gibson Guitars: Les Paul Models
(1970), we see the following types of usage of LES PAUL and
LP:
LES PAUL CUSTOM—High Impedence [sic]
… The LP-Custom is popular with rock groups …
LES PAUL PERSONAL—Low Impedence [sic]
[no use of “LP Personal” in write up]
Serial No. 76230196
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LES PAUL PROFESSIONAL—Low Impedence [sic]
The Les Paul Professional has many of the same
exciting features found on the LP Personal: ….
LES PAUL BASS—Low Impedence [sic]
The frequency response, range of harmonics and
crisp, clear tones of the LP Bass will exceed
that of any electric guitar on the market to
date.
LP-12 AMPLIFIER
Gibson’s new Les Paul Amplifier is specially
designed … Those who have heard the LP-12 call
it the “Monster” … and with good reason…
From a number of copies of actual invoices, we note
the following types of usage of LP:
6/21/2000 L&M Music (CHATTANOOGA, TN)
Product No. Model Description
ENS-HSCH1 LP STD HCSB CH HDWE …9

1/9/2001 Griggs Music, Inc. (DAVENPORT, IA)
Product No. Model Description
ENC-HSGH1 LP Cust Flametop HCSB GOLD HDW …10

The following table of the annual production of LP
guitars over a period of more than a dozen years, taken
from Gibson Electronics: The Classic Years, shows the LP
letters (like the SG term) as a model designation:

9 Elsewhere in the record, it is clear this is a technical,
abbreviated designation for “Les Paul Standard Heritage Cherry
Sunburst with Chrome Hardware.”
10 Elsewhere in the record, it is clear this is a technical,
abbreviated designation for “Les Paul Custom Flametop Heritage
Cherry Sunburst with Gold Hardware.”
Serial No. 76230196
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Model 1954 1955 1956 1957 1958 1959 1960 1961 1962 1963 1964 1965
LP CUSTOM 94 355 489 283 256 246 189 * - - - -
SG/LP CUSTOM - - - - - - 513* 298 264 130 236

In various documents that applicant placed into the
record, short blurbs about each of the different guitars
within a collection invariably use a guitar designation
(e.g., LES PAUL CUSTOM) in bold, upper case letters. Below,
following the descriptive paragraphs, the literature
enumerates, in much smaller print, the various colors and
other listed features available on the particular model
(e.g., LP Custom Ebony Finish, LP Custom White Finish, LP
Custom Heritage Cherry Sunburst Finish, etc.); or show LP
as a model designation:
LES PAUL CUSTOM: Model LP Custom …
LES PAUL CUSTOM LITE: Model LP Custom Lite …
LES PAUL STANDARD: Model LP Standard …
LES PAUL STUDIO: Model LP Studio …
LES PAUL REISSUE GOLD TOP: Model LP Reissue Gold Top …
LES PAUL REISSUE: Model LP Reissue …
LES PAUL JUNIOR DOUBLE CUTAWAY: Model LP Jr. DC …

While the record does indicate that the letters “LP”
made an appearance on the headstock of the “Artist” series
guitars (1979 – 1981),11 we disagree with applicant’s
contention that this minimal usage of the LP designation as
a trademark on the guitar peg heads of one guitar series

11 Gibson Guitars: 100 years of an American icon: Artist
(1979 – 1981), Active electronics, “LP” on the peghead.
Serial No. 76230196
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for less than two years12 “has helped to associate the LP
acronym with Gibson Guitar’s famous LES PAUL guitars.”
(applicant’s response of December 17, 2001).
Similarly, while the declaration submitted by
applicant states that applicant has been using the LP
designation “on hangtags since April 2001,” no such
hangtags appear to have been made of record. Moreover, to
the extent that the designation is being used on the
hangtags in the manner of a model designation – similar to
that on price lists, invoices, printed literature and
elsewhere in the documents of record, as seen supra – this
would not help to associate the LP designation with the LES
PAUL trademark.
Therefore, having carefully reviewed all the evidence
of record, we cannot conclude that consumers, seeing LP
used in connection with guitars in the manner shown in the
documents of record, would immediately understand it to
mean “Les Paul.”
Fame is not a relevant factor in this case.
Generally, the du Pont “fame factor” focuses on the fame of
the registrant’s cited mark(s) – a factor about which we

12 We also note that this particular image (as specifically
referenced in the declaration) is not legible in the photocopied
images contained in the evidence of record.
Serial No. 76230196
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have no evidence herein. On the other hand, to the extent
that applicant’s LES PAUL mark can be considered “famous,”
that is not relevant to our determination where the mark
that applicant seeks to register is LP, and the facts of
the case do not support the conclusion that the designation
LP will be perceived by prospective purchasers of electric
guitars as being interchangeable with the LES PAUL mark.
Applicant also argues that the du Pont factor focusing
on the length of time during and conditions under which
there has been contemporaneous usage without evidence of
actual confusion is supportive of its position that
confusion is not likely. Again, we disagree. This
application is based on intent-to-use, not use. To the
extent that applicant may have used the LP term as a model
designation or as an abbreviation, it does not support the
conclusion that there have been thirty-four years of use of
applicant’s LP designation as a trademark contemporaneously
with registrant’s cited LP marks.
Applicant also argues that registrant’s products
always include the name LATIN PERCUSSION while applicant’s
products always include the name LES PAUL. However, in
determining likelihood of confusion, we must consider
applicant’s mark as shown in the drawing of its application
Serial No. 76230196
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compared with registrant’s marks as shown in its
registrations. This is because a registration gives the
registrant the prima facie right to use the marks as shown
on its registration. Applicant’s corollary argument that
there is no confusion under real world “marketing
conditions” suffers the very same weakness, in that there
is no requirement that applicant-turned-registrant must use
its house mark, LES PAUL, with its LP designation or that
registrant must use its house mark, LATIN PERCUSSION, with
its various product trademarks as registered.
In summary, we find that the marks, and particularly
applicant’s mark and the marks in Registration Nos. 1292158
and 2391247, are substantially identical as to overall
commercial impression, that LP appears to be a strong mark
in the field of musical instruments, that the goods are
closely related, and will move through the same channels of
trade to the same classes of consumers.
Finally, to the extent there is any doubt on the issue
of likelihood of confusion, we follow the well-established
principle that such doubt must be resolved in favor of the
registrant and prior user. In re Mayco Mfg., 192 USPQ 573,
576 (TTAB 1976).
Serial No. 76230196
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Decision: The refusal to register applicant’s mark
under Section 2(d) is hereby affirmed.