Gibson Guitar Corp.v.Concordia Investment Partners, Inc.

Trademark Trial and Appeal Board

Jun 10, 2009

No. 91156482 (T.T.A.B. Jun. 10, 2009)

Hearing: Mailed:
March 24, 2009 June 10, 2009
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Gibson Guitar Corp.
v.
Concordia Investment Partners, Inc.
________

Opposition Nos. 91156480 and 91156482
against Serial Nos. 76172953 and 76172951
_______

Robert P. Felber, Jr. of Waller Lansden Dortch & Davis, LLP
for Gibson Guitar Corp.

Arthur W. Fisher, III of A.W. Fisher, III P.A. for Concordia
Investment Partners, Inc.
_______

Before Bucher, Holtzman and Walsh, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Concordia Investment Partners, Inc. seeks registration
on the Principal Register of the following marks:
1 2

1 Application Serial No. 76172953 was filed under Section
2(f) of the Act on November 29, 2000 based upon applicant’s
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91156480 and 91156482
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for “guitars” in International Class 15. Applicant also
owns a previously-issued federal trademark registration for
the ML Guitar Body design, seemingly identical to the body
portion of the ‘953 application:
3

claims of first use anywhere and first use in commerce at least
as early as December 31, 1977. “The stippling shown in the
drawing is surface shading and is not intended to indicate color.
The mark consists of a shape of a guitar of solid body type
having a uniquely shaped guitar body and a uniquely shaped
headstock. The dotted lines are merely to show positioning and
are not claimed as a part of the mark.”

2 Application Serial No. 76172951 was filed under Section
2(f) of the Act on November 29, 2000 based upon applicant’s
claims of first use anywhere and first use in commerce at least
as early as December 31, 1977. “The stippling shown in the
drawing is surface shading and is not intended to indicate color.
The mark consists of a uniquely shaped headstock for a guitar
having an upper and a lower pointed projection extending from the
headstock of the guitar. The dotted lines are merely to show
positioning and are not claimed as a part of the mark.”

3 Registration No. 3185157 issued on December 19, 2006 under
the provisions of Section 2(f). Applicant also claimed ownership
of Registration No. 2588629.
Opposition Nos. 91156480 and 91156482
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Also, as claimed in applicant’s Registration No.
3185157, the following three-dimensional design for electric
guitar bodies is owned, in part, by applicant, in connection
with The ML Trust:
4
Consequently, the focus of these proceedings has been
on the split headstock design – not the shape of the guitar
body.
In filing these oppositions, Gibson Guitar
Corp. alleges that for many years prior to any
date that applicant can rely upon it has
adopted and continuously used a similar split
headstock design as a trademark for its
guitars.

4 Registration No. 2588629 issued to Washburn International
Inc. for “stringed musical instruments, namely electric guitars
and electric basses” in International Class 15 on July 2, 2002
under the provisions of Section 2(f) of the Act. “The mark
consists of the outline of the body of a guitar, the shape of
which is in solid lines. The dotted lines are not part of the
mark and merely depict the thickness of the guitar body.”
Section 8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged. The Assignment records of the United States Patent
and Trademark Office show that as of December 1, 2004, this
registration was assigned to applicant, Concordia Investment
Partners, Inc., in trust by the ML Trust and The ML Trust ITF
Armadillo Distribution Enterprises, Inc., Concordia Investment
Partners, Inc., and Washburn International, Inc.
Opposition Nos. 91156480 and 91156482
- 4 -
Specifically, opposer alleges that through its
predecessors in interest it first used this split-shaped
headstock design in 1957 and has continuously used this
design. Opposer alleges that applicant’s applied-for
designs, when used in connection with the identified goods
so resemble its headstock design as to be likely to cause
confusion, to cause mistake or to deceive, under Section
2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
In its answers, applicant denied all the essential
allegations of the notices of opposition.
Although these two proceedings were consolidated
sua sponte by the Board with Opposition No. 91170847 (the
“Dove Wing Peg Head” design) on March 14, 2008, given the
differences in the marks involved in the two proceedings, we
have decided it will be clearer to issue two separate
opinions.
I. The Record
In addition to the pleadings and the files of the
involved applications, the records also include the trial
transcript of David H. Berryman, president of Gibson Guitar,
Corp., taken on March 15, 2007 (“2007 Berryman Test.”) and
again on April 8, 2008 (“2008 Berryman Test.”), along with
the related exhibits; opposer’s notice of reliance, filed on
April 14, 2008, making of record certain of applicant’s
Opposition Nos. 91156480 and 91156482
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responses to opposer’s requests for admissions and
responses to interrogatories. Applicant filed a notice of
reliance on June 13, 2008, making of record certain of
opposer’s responses to requests for admissions and
responses to interrogatories, a third-party registration,
and a trademark assignment abstract from a third party to
applicant. Although applicant indicated it would be
filing a discovery deposition of applicant’s witness,
Elliot Rubinson, and specifically noticed the taking of his
testimony deposition, the record appears to contain
transcripts of neither.
Both parties filed briefs, and opposer filed reply
briefs. Only applicant was represented at a hearing before
this panel of the Board on March 24, 2009.
II. Factual Findings
Opposer has been in business since 1894 making fretted
instruments. 2007 Berryman Test. at 6 – 7. During the
height of the 1950’s era automobile tailfins and the launch
of the Russian satellite, Sputnik, Gibson introduced several
radical and modernistic electric guitars such as the
Flying V and the Explorer/Futura. A design patent for the
lightening-bolt shaped body of the Explorer/Futura model
issued in January 1958, having a new split-shaped headstock
Opposition Nos. 91156480 and 91156482
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that Gibson had first unveiled at a trade show in 1957.
(2008 Berryman Test., at 14-17, Ex. 0-121):

According to Mr. Berryman, opposer’s president,
originals of these “innovative” and “famous” split
headstock guitars are quite rare, and hence are each worth
hundreds of thousands of dollars. Some of these Korina
Opposition Nos. 91156480 and 91156482
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Explorers had six-on-a-side tuners while others had the
split headstock with three-plus-three tuners. Variations
on these modernistic instruments have been displayed at
The Smithsonian Museum and the Rock and Roll Hall of Fame,
as well as at ongoing guitar trade shows. (Id. 20-27).
During this first run in the late-50’s, however, very few
of these guitars were manufactured and even fewer were
sold during this time frame. After 1959, instruments
having a split headstock quickly disappeared from Gibson’s
catalogues. Nonetheless, opposer contends that they have
been reissued intermittently, and Gibson has continually
offered custom electric guitars having a split headstock.
(Id. at 22-23). According to testimony in the record,
famous performing artists and musicians, including heavy
metal artists, have publicly played Gibson guitars having
the split headstock. (Id. at 30). Then beginning in
1998, Gibson again introduced the split headstock on
several guitars into its regular price listing. (Id. at
22, 70).
Applicant’s predecessor-in-interest, Dean Guitars,
began using a V-shaped headstock on the well-known Dean ML
electric guitars in 1977. As shown in
the ‘953 drawing, the Dean ML’s body
Opposition Nos. 91156480 and 91156482
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shape resembles the V-shaped tailpiece of a Gibson Flying V
combined with the upper half of a Gibson Explorer/Futura
body.
III. Preliminary matters
Applicant attempted to introduce into evidence by
notice of reliance a settlement agreement between opposer
and a third-party, Washburn International, Inc. Opposer
has objected to the introduction of this agreement via
notice of reliance.
We agree with opposer that the categories of materials
that may be submitted under a notice of reliance are quite
limited. For example, under 37 CFR § 2.120(j)(3)(ii), a
party that has obtained documents from another party in
response to document production requests may not make the
produced documents of record by notice of reliance alone.
Evidence not obtained and filed in compliance with this and
other sections of the Trademark Rules will not be
considered. Cf. Trademark Rule 2.123(l), 37 C.F.R.
§ 2.123(l).
An exception applies to produced documents, for
example, to the extent that they are admissible by notice of
reliance under the provisions of Trademark Rule 2.122(e) –
“Printed publications and official records,” 37 C.F.R.
§ 2.122(e). This rule provides that the parties may
Opposition Nos. 91156480 and 91156482
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introduce through a notice of reliance printed publications,
such as books and periodicals, routinely available to the
general public in libraries or of general circulation among
relevant members of the public, and official records. This
third-party agreement is inappropriate for submission under
a notice of reliance inasmuch as it does not qualify as a
printed publication or official record.
However, applicant’s counsel also introduced this
settlement agreement into the record during his cross-
examination of opposer’s president, Mr. Berryman. Mr.
Berryman had discussed Washburn’s use of a similar split
headstock in his direct testimony, and opposer’s counsel did
not specifically object to this line of inquiry or the
introduction of the agreement into the record during the
cross-examination of Mr. Berryman.
Finally, in response to admissions proffered by
applicant, opposer did admit to a settlement agreement with
Washburn for a similarly-designed headstock. Accordingly,
we consider the contents of this settlement agreement to be
of record, as well as similar evidence introduced into the
record, including extant registrations for similar shapes of
guitar bodies and headstocks to which applicant herein has
an ownership interest.
Opposition Nos. 91156480 and 91156482
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IV. Analysis
Initially, in order to avoid any possible confusion, we
observe that the record shows the term “V-shaped” is used to
describe several distinct features of electric guitar: (1)
headstocks, (2) bodies, tails or tailpieces, (3) necks, and
(4) pickups. In some cases, the same instrument may have
two or more of these features. However, one should be
careful not to confuse the V-shaped guitar body with the V-
shaped or split headstock.
For example, as to V-shaped bodies, the record shows
that opposer introduced its “Flying V” guitar in 1958. See
also U.S. Trademark Registration No. 2051790. This was
clearly a reference to the body, inasmuch as most “Flying V”
electric guitars in the late-1950’s did not have a V-shaped
headstock. See expired Design Patent 181,167.5
During the early decades of electric guitars, while
many features of competitors’ guitars were copied, and
especially the body shapes, there was indeed a history of
cutting headstocks in such a manner as to signify origin

5 Although this issue is not before us, apart from the V
shaped body of the “Flying V,” a V-shaped tailpiece appears not
to be a proprietary feature belonging exclusively to opposer.
Applicant’s own Registration No. 3185157 (and partial ownership
of Registration No. 2588629) suggest that distinctive variations
on guitar bodies continue to coexist among the major players in
this industry. See, e.g., the similarities in the Dean ML
tailpiece as compared with the tailpiece of the Gibson Flying V
and of the Gibson Futura.
Opposition Nos. 91156480 and 91156482
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with a particular manufacturer.6 However, in the present
case, in the absence of a registration, before we can
establish priority on opposer’s part to the split-shaped
headstock, we must ensure that opposer has established a
distinctive mark.
At oral argument, applicant’s attorney made much of the
varying descriptions of the split or “V” shaped headstocks.
We should clarify that in our analysis herein, we do not
find it necessary or helpful to make fine distinctions of
language between “split,” “split-V” or simply “V” in
describing this headstock shape.
We also do not view applicant’s arguments based on
opposer’s having entered into a settlement agreement with
Washburn International, Inc. as amounting to a defensive
argument of estoppel. Rather, applicant seems to be using
it to show that opposer has made a considered business
judgment about the strength of its alleged rights in a split
shaped guitar headstock. We agree that all of this evidence
is relevant to the question of the distinctiveness of
opposer’s claimed mark consisting of a split-shaped peg

6 “Tell Tchaikovsky the News: Trade Dress Rights in Musical
Instruments,” by Robert M. Kunstadt and Ilaria Maggioni, 94 TMR
1271, 1276-78 (2004); Yamaha International Corp. v. Hoshino Gakki
Co., Ltd., 231 USPQ 926, 933-34 (TTAB 1986); aff’d at 840 F.2d
1572, 6 USPQ2d 1001, 1010 (Fed. Cir. 1988); see also this Board’s
opinion in decision on the Dove Wing headstock design, Opposition
No. 91170847.

Opposition Nos. 91156480 and 91156482
- 12 -
head. This question is vital to opposer’s position as
plaintiff herein. By contrast, as to applicant’s/
defendant’s alleged marks involved herein, as well as the
several earlier-issued registrations of which applicant is a
full or partial owner, the United States Patent and
Trademark Office has made repeated determinations that
applicant and its predecessors-in-interest have established
acquired distinctiveness in the features depicted in these
several drawings, including the V-shaped headstock.
For example, we turn
our attention to
Registration No. 2797456,
as shown to the right.
This § 2(f) registration
is also owned, in part, by
applicant.
7
Under the rule of Otto Roth, a plaintiff asserting a
common law mark in the context of a likelihood of confusion

7 Registration No. 2797456 issued to Washburn International
Inc. on December 23, 2003 under the provisions of Section 2(f) of
the Act. The mark is described as the outline of the headstock
of a guitar, the shape of which is in solid lines. The dotted
lines are not part of the mark and merely depict the location of
the string posts. The Assignment records of the United States
Patent and Trademark Office show that as of December 1, 2004,
this registration was assigned to applicant, Concordia Investment
Partners, Inc., in trust by the ML Trust and The ML Trust ITF
Armadillo Distribution Enterprises, Inc., Concordia Investment
Partners, Inc., and Washburn International, Inc.

Opposition Nos. 91156480 and 91156482
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claim must prove that it has proprietary rights in its
alleged mark and, if such mark is not inherently
distinctive, the plaintiff must prove that its common law
mark functions as a source identifier for the involved goods
or services. See Otto Roth & Company, Inc. v. Universal
Foods Corporation, 209 USPQ 40, 45 (CCPA 1981). See also
Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d
1039, 1041 (Fed. Cir. 1990).
Opposer’s asserted mark is a product design that cannot
be inherently distinctive. Wal Mart Stores v. Samara Bros.,
529 U.S. 205, 54 USPQ2d 1065, 1069-70 (2000). Accordingly,
while applicant has not raised this issue, we are compelled
to inquire into the question of whether opposer has
proprietary rights in its alleged mark under Otto Roth and
its progeny.
The Federal Circuit has stated that a plaintiff may
assert a term that is distinctive of its goods, “whether
inherently or through the acquisition of secondary meaning
or through ‘whatever other type of use may have developed a
trade identity’.” Towers, 16 USPQ2d at 1041, quoting Otto
Roth.
Although opposer assures us that guitars having split
headstocks were available from Gibson between 1960 and 1998
for purchasers who pursued the custom manufacture of such an
Opposition Nos. 91156480 and 91156482
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instrument, guitars having split headstocks did not appear
in price listings during most of this period of thirty-eight
years. Other than several specific reissues or historic
collections, we have no documentary evidence rebutting the
conclusion that there may have been long periods of non-use.
There are no records from which one can determine how many
reissues, derivatives or new, historical replicas were
produced by Gibson between 1960 and 1998, and how many of
those had split-shaped headstocks (versus the more
frequently-occurring “banana,” “hockey stick” or other non-
proprietary shaped peg heads).
Opposer concedes that its modernistic body shapes were
largely unsuccessful in the late 1950’s. Furthermore, it
was only a subset of this handfull of instruments that had
split headstocks. Decades later (e.g., with the popularity
of hard rock musicians and heavy metal bands during the
1970’s and 80’s), by the time these modernistic guitar
shapes (with some having split or V-shaped headstocks) had
gained cult status, the split headstock seems to have lost
its identity as a source indicator. On this record, opposer
cannot claim continuous and exclusive use of this feature by
the time of the mid 1970’s. Very soon after its design
patents expired in 1975, other manufacturers were apparently
producing more split headstock electric guitars than was
Opposition Nos. 91156480 and 91156482
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opposer. In fact, opposer does not seem to contest the
factual record that Dean Guitars began using a V-shaped
headstock on the well-known Dean ML electric guitar in
1977. Opposer has failed to bring to our attention any
actions it took during this critical time frame to assert
exclusivity in a split headstock.
In the decades following Gibson’s initial release of
what may well have been as few as dozens of split headstock
guitars in 1957-60, this record shows only undocumented
claims of unknowable numbers of custom orders over a period
of many years. The record does establish opposer’s clear
reissue of split headstock guitars in 1998 under Gibson’s
Historic Collection, Designer Series – instruments such as
the “1957 Futura.” This collection continues to be listed
in Gibson catalogues to the present. However, this is forty
years after guitars having a split headstock last appeared
regularly on Gibson’s price lists, and twenty years after
applicant’s predecessor-in-interest had clearly adopted the
split headstock on a number of very popular Dean
instruments. The record also shows that a variety of other
manufacturers during this interim period offered replication
of V-shaped or split headstocks on new guitars and as
components of replacement guitar necks.
Opposition Nos. 91156480 and 91156482
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Much as there has been no evidence during these
opposition proceedings of acquired distinctiveness for the
split headstock on the part of opposer (e.g., in the way of
sales figures, promotional expenditures, surveys, etc.),
opposer has not challenged applicant’s claims of acquired
distinctiveness for substantially the same shaped peg head.
In any case, applicant’s claims herein of acquired
distinctiveness have been accepted by the Trademark
Examining Attorney, and this arguable impediment of
applicant’s involved marks does not appear as a basis for
Gibson’s oppositions herein.
To the extent that opposer has failed to demonstrate a
protectible interest in the split headstock design, we do
not need to reach the issue of likelihood of confusion
herein.
Decision: The oppositions are hereby dismissed, and
registrations will issue to applicant in due course.