Gibson Guitar Corp.v.First Act, Incorporated

Trademark Trial and Appeal Board

Feb 17, 2009

No. 91162183 (T.T.A.B. Feb. 17, 2009)

Mailed: February 17, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Gibson Guitar Corp.
v.
First Act, Incorporated
_______

Opposition Nos. 91162183 and 911636601
_______

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

Ronald S. Bienstock of Bienstock & Michael for First Act,
Incorporated.
_______

Before Walters, Grendel and Taylor, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Gibson Guitar Corp. filed its oppositions to the
applications of First Act, Incorporated to register the
standard character marks STUDIO SERIES2 and FIRST ACT STUDIO

1 These two opposition proceedings were consolidated by the Board’s
order of March 17, 2005.

2 Opposition No. 91162183 to Application Serial No. 76512512, filed May
8, 2003, based upon use of the mark in commerce, alleging dates of first
use and first use in commerce as of July 2002 for the goods in each
class.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition Nos. 91162183 & 91163660
2
SERIES3 for “guitar amplifiers,” in International Class 9,
“musical goods and instruments, namely, guitars; guitar
straps, guitar picks, and guitar cases,” in International
Class 15, and “instructional material, namely, books and
sheet music featuring the field of music,” in International
Class 16. Each application includes a disclaimer of SERIES
apart from the mark as a whole.
As grounds for each opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously used mark “STUDIO” for a
series of guitars and for guitar amplifiers as to be likely
to cause confusion, under Section 2(d) of the Trademark Act.
Applicant, in its answers, denies the salient
allegations of the claim.
The Record
The record consists of the pleadings; the file of the
involved applications; and the testimony depositions, with
accompanying exhibits, by opposer of Paul Huber, Michael
Fuller and Gary Wineroth, independent guitar store owners
and Gibson dealers; David H. Berryman, opposer’s president;
Scott Riley, opposer’s product marketing and sales support;
and Don Barnes and Paul D. Johnson, opposer’s dealer

3 Opposition No. 91163660 to Application Serial No. 76512777, filed May
8, 2003, based upon use of the mark in commerce, alleging dates of first
use and first use in commerce as of July 2002 for the goods in each
class.

Opposition Nos. 91162183 & 91163660
3
relationship managers. The record also includes various
specified responses of opposer to applicant’s
interrogatories and requests for admissions, made of record
by applicant’s notice of reliance; and the testimony
deposition by applicant of Mark Izen, applicant’s president
and CEO, with accompanying exhibits. Both parties filed
briefs on the case.
Factual Findings
Opposer was founded in 1894 and manufactures and sells
guitars, guitar amplifiers and musical instrument
accessories. Opposer’s Epiphone division was founded under
a different name in 1863 and became Epiphone in 1910.
Epiphone has always manufactured and sold string
instruments.
In 1952, guitarist Les Paul developed an electric
guitar with a distinctive cutaway shape that has been
manufactured by opposer since that date and it is known as a
Les Paul guitar. Opposer’s best selling group of
instruments is its Les Paul guitar series, which includes a
number of different models, e.g., “Custom Flame Top,” “Gold
Top,” “Double Cutaway,” and “Studio.”
In 1983, opposer introduced its Les Paul Studio guitar,
which is an unbound Les Paul guitar, i.e., it has no binding
on the top of the instrument body or on the fingerboard
itself. The model name, i.e., STUDIO, appears in script on
Opposition Nos. 91162183 & 91163660
4
the guitar’s truss rod cover, which is at the end of the
guitar neck and which is a usual place for a mark to appear
on a guitar.4 STUDIO model guitars have been in continuous
production since 1983. Epiphone also began manufacturing
and selling a Les Paul Studio model guitar in 1998, and
continues to manufacture and sell this model; and opposer’s
custom division also manufactures and sells a Les Paul
Studio custom model guitar.
In 1998, opposer began manufacturing and selling, and
continues to manufacture and sell, a STUDIO series of guitar
amplifiers. These are entry and intermediate level
amplifiers and are identified as the Studio Mini, Studio 10
and Studio 10 Bass. The STUDIO marks appear on the
amplifier control panels. Since 2002, opposer has sold its
STUDIO amplifiers as part of a “player pack,” which contains
a guitar, amplifier and accessories.
Opposer has approximately 500 retail partners
throughout the United States that carry its Gibson and
Epiphone guitar and amplifier lines, including the STUDIO
models. Opposer promotes its products, including its STUDIO
models, through catalogs, brochures, magazine advertising,
and through its website. Opposer’s dealers also advertise

4 The truss rod is the opening or adjustment mechanism that is used to
adjust the neck itself and the curvature of the neck. It runs under the
fingerboard for the entire length of the neck and it can be adjusted for
environmental conditions and for the forward pressure applied with the
six strings.

Opposition Nos. 91162183 & 91163660
5
opposer’s products, including its STUDIO models. Opposer
provided annual sales figures since the mid-1990s for its
STUDIO guitars and amplifiers and, suffice it to say, these
sales have been and remain significant.
Opposer’s witnesses who are its employees, Mssrs.
Johnson, Barnes and Riley, report that they each speak to
dealers on a daily basis and, in conversation, dealers will
refer to the STUDIO model guitar as either “the Les Paul
Studio guitar” or as simply “the Studio guitar”; and that,
in the latter case, it is obvious from the context of the
conversation to which guitar model the dealer is referring.
Opposer’s witnesses who are Gibson dealers, Mssrs. Fuller,
Huber and Wineroth, report that they each refer to the Les
Paul Studio guitar as simply the Studio guitar because it is
the model they carry; and that customers use both monikers
when speaking to them about the guitar, noting, again, that
the context indicates that the customer is referring to the
Les Paul Studio guitar.5

5 In its brief, applicant characterizes opposer’s dealer and employee
testimony as “inadmissible hearsay” and argues it is unduly biased.
This objection will not be heard because it was not raised during the
taking of the testimony. In any event, the dealer and employee
statements about which applicant complains are statements about what was
said directly to the testifying individual, not whether what was said to
them was true. As such, these statements are not hearsay. Applicant
also contends that opposer’s dealer and employee testimony is biased and
inconsistent. We do not find this testimony to be inconsistent, nor is
there any evidence of bias. Moreover, claims of bias and inconsistency
go to the probative value of the evidence. The probative value of all
of the record evidence has been considered in reaching our decision
herein.

Opposition Nos. 91162183 & 91163660
6
Applicant, founded in 1995, manufactures and sells a
variety of musical instruments, including guitars, and
guitar amplifiers and accessories. Applicant has a retail
store in Boston and carries several lines of musical
instruments. Applicant has a custom shop, known as its
STUDIO FOR ARTISTS,6 wherein applicant custom-makes guitars
in Massachusetts for professional artists. Applicant
manufactures its FIRST ACT STUDIO SERIES/STUDIO SERIES
guitars in Asia and has been distributing them in the United
States since 2002 through mass merchandisers such as Wal-
Mart. On at least one of its guitar models, the term FIRST
ACT appears on the guitar headstock and STUDIO SERIES
appears on the truss rod cover.
Applicant advertises its guitars on its website and,
nationally, via television and radio and at concerts.
Applicant submitted confidential sales figures which are not
discussed herein.
Neither party is aware of any actual confusion. Other
than applicant, opposer’s president, Mr. Berryman, is aware
of only one third-party, Fender, who has used STUDIO in
connection with guitars, and that was for a limited time
only.7 Of opposer’s dealer witnesses, Mssrs. Fuller and

6 Applicant owns a registration of this mark, No. 3211718, for “musical
instruments” with a disclaimer of “FOR ARTISTS.”

7 On cross examination, applicant’s counsel showed opposer’s witnesses
purported printouts from Internet websites. These documents were
unauthenticated and without proper foundation and the witnesses, while
Opposition Nos. 91162183 & 91163660
7
Wineroth stated that neither is aware of any other guitar
manufacturer that uses the term STUDIO in connection with a
guitar model; however, Mr. Huber stated he believes that
Hamer has a guitar model that includes the term Studio, but
that, when a customer asks him for a Studio guitar, it is
unlikely that he or she means a Hamer guitar because Hamer
guitars are less popular than the Les Paul Studio guitar.
Regarding the significance of the term STUDIO in the
guitar field, opposer’s dealer Mr. Huber stated that in
addition to a retail guitar business, his business is also a
“music studio.” Opposer’s president, Mr. Berryman stated
that, in a historic context, “studio” may connote the place
where music is taught; and that in the modern context of a
“recording studio,” musicians bring their own instruments,
so there is no such thing as “a studio guitar” that would be
available and used only in a recording studio.
Analysis
Standing
The record establishes that opposer and applicant are
competitors and that both use the term STUDIO in connection
with, at least, electric guitars and guitar amplifiers.
Clearly, opposer is not a mere intermeddler. Therefore, we

reading what appeared thereon, stated they had no familiarity with the
information contained therein. Thus, these exhibits do not establish
any third-party use of STUDIO.

Opposition Nos. 91162183 & 91163660
8
conclude that opposer has standing. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).
Distinctiveness and Priority
Opposer has established continuous use of STUDIO in
connection with guitars since 1983 and in connection with
guitar amplifiers since 1998. Applicant has established use
of its marks in connection with guitars since 2002.
Applicant provided no evidence about its first use of its
goods in International Classes 9 and 16; thus, the
applications’ filing date of May 8, 2003, is the earliest
date upon which applicant may rely for these goods.
However, applicant contends that opposer has used the
term STUDIO only as a model designation, not as a trademark
and that STUDIO has not acquired distinctiveness as a mark
for opposer. Applicant also contends that STUDIO is not
used separate and apart from LES PAUL for guitars or from
other terminology for amplifiers. Thus, before we can
address the question of priority, we must determine whether
opposer’s asserted mark, STUDIO, is inherently distinctive
in connection with guitars and guitar amplifiers or, if not,
whether and when it acquired distinctiveness.
Opposer contends that STUDIO is inherently distinctive
in connection with guitars and amplifiers; that STUDIO “is
used to delineate a particular model of Les Paul guitars and
Gibson amplifiers” (Brief, p. 12); and that, while STUDIO
Opposition Nos. 91162183 & 91163660
9
may be “evocative of an idealized setting – a recording
studio – in which Gibson’s guitars and amplifiers might be
used” (Reply p. 2), it is at most suggestive in connection
with guitars and amplifiers.
Applicant lists various model names used in connection
with opposer’s Les Paul line of guitars, e.g., “Custom Flame
Top,” “Gold Top,” and “Double Cutaway.”, and its amplifiers,
e.g., STUDIO, STUDIO 10, STUDIO MINI. Applicant concludes
that, because these terms identify guitar or amplifier
“models,” these designations do not function as trademarks.
Applicant states that “the term Studio is but one of a host
of designations used by Opposer to describe the attributes
of a particular model of guitar [or amplifier]” and that
“Opposer has never used the term ‘Studio’ on amplifiers by
itself, without a suffix.” (Brief, p. 9.)
As purported evidence of opposer’s lack of intent to
use STUDIO as a mark, applicant notes that, in its catalogs,
opposer uses the registration symbol in connection with the
mark LES PAUL, but does not use a “tm” symbol in connection
with STUDIO or other “model designations.” Applicant argues
that this is further evidence that these terms are non-
distinctive model designations. Finally, applicant states
that the fact that STUDIO refers to a certain type of guitar
or amplifier, i.e., entry level, is also evidence that
STUDIO does not function as a trademark.
Opposition Nos. 91162183 & 91163660
10
We agree with opposer that STUDIO is an inherently
distinctive mark. We also find that it is used as a mark
separate and apart from LES PAUL for guitars. While STUDIO
may indicate a particular model of opposer’s Les Paul line
of guitars, it is used by itself in a usual place for a mark
to be placed, on the truss rod cover of the guitar, which is
the same as applicant’s placement of STUDIO SERIES on its
guitars. As such, STUDIO is likely to be perceived by
prospective purchasers as a mark for opposer’s guitars.
Similarly, use of STUDIO followed by style or grade
designations on the control panel of amplifiers, i.e.,
STUDIO 10 and STUDIO MINI, is clearly trademark use and is
likely to be so perceived by prospective purchasers. Thus,
applicant’s contention that opposer uses STUDIO only as a
style designation is not well-taken. See In re Berman Bros.
Harlem Furniture Inc., 26 USPQ2d 1514 (TTAB 1993) citing
Eastman Kodak Co. v Bell & Howell Document Management
Products Inc., 23 USPQ2d 1878 (TTAB 1992) (matter may
function as both a model designation and a trademark
depending on how the matter is used on goods in commerce and
how it will be perceived by purchasers). Moreover, it is
well established that a business may use more than one
trademark to identify its goods. In re Howard Leight
Industries, LLC, 80 USPQ2d 1507 (TTAB 2006).
Opposition Nos. 91162183 & 91163660
11
Applicant suggests that because opposer owns many
federally registered trademarks, but does not own a federal
registration for STUDIO, opposer has a lack of intention to
use this term as a mark. We do not draw this negative
inference from this fact or from the fact that it does not
use a “TM” beside STUDIO on its guitars and amplifiers. In
the United States, there is no requirement that a business
register its mark to establish trademark rights. Moreover,
the use of the “TM” is merely one factor to be considered.
To the extent that applicant argues that STUDIO is
merely descriptive in connection with guitars and
amplifiers, we disagree. Rather, we agree with opposer’s
statement that while STUDIO may be “evocative of an
idealized setting – a recording studio – in which Gibson’s
guitars and amplifiers might be used” (Reply p. 2), it is at
most suggestive in connection with guitars and amplifiers.
Even if we had found that STUDIO is merely descriptive, this
would apply equally to applicant’s use of the term in its
marks.
We conclude that STUDIO is an inherently distinctive
mark of opposer that is used in connection with guitars and
amplifiers.8 Therefore, we also find that opposer has

8 Applicant’s argument that, because of alleged third-party uses of
STUDIO in marks for guitars, opposer’s use of STUDIO cannot be
considered use as an inherently distinctive mark is not persuasive. We
consider applicant’s allegations of third-party use more appropriate in
determining the strength of opposer’s mark in the context of our
determination of likelihood of confusion.
Opposition Nos. 91162183 & 91163660
12
established its priority through its use of STUDIO in
connection with guitars and amplifiers since long before
applicant’s 2002 first use date and its 2003 filing date.
See, e.g., Eastman Kodak Co. v. Bell Howell Document
Management Products Co., 994 F.2d 1569, 26 USPQ2d 1912 (Fed.
Cir. 1993); and NASDAQ Stock Market Inc. v. Antarctica
S.r.l., 69 USPQ2d 1718 (TTAB 1998).
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also
Opposition Nos. 91162183 & 91163660
13
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein.
Considering first, the parties’ goods, we note that
applicant’s and opposer’s guitars and amplifiers are
identical. Applicant’s identification in the application of
“guitars” encompasses all types of guitars and, thus, its
argument that the parties’ guitars are different because
applicant uses its mark on acoustic and semi-hollow body
guitars, whereas opposer uses STUDIO on a solid body
electric guitar is not well taken. Although there is no
specific evidence regarding the relationship, if any,
between opposer’s guitars and amplifiers and applicant’s
music books and sheet music, these goods are clearly
complementary to guitars and are likely to be used together.
We find these goods are sufficiently related to guitars
that, if identified by similar marks, confusion as to source
is likely.
Regarding the trade channels and classes of purchasers,
we must presume that the goods of the applicant and opposer
are sold in all of the normal channels of trade to all of
the usual purchasers for goods and services of the type
identified. See Canadian Imperial Bank v. Wells Fargo, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Clearly, the
general public is the ultimate purchaser of all of these
goods and the trade channels for applicant’s guitars and
Opposition Nos. 91162183 & 91163660
14
amplifiers, which are not limited as identified in the
application, are the same as those of opposer. The fact
that opposer may currently sell these goods only through
mass merchants is not determinative. The trade channels of
applicant’s music books and sheet music are likely to at
least overlap those of opposer’s guitars.
Considering, next, the marks, opposer contends that the
marks are substantially similar, noting that applicant uses
its mark so as to emphasize the STUDIO portion of the mark,
and that SERIES is a merely descriptive word and FIRST ACT
is applicant’s house mark. Applicant argues that the marks
are dissimilar and distinguished by applicant’s addition of
FIRST ACT to one of its marks and SERIES to both of its
marks.
Applicant contends, essentially, that STUDIO is weak
and it alleges that several third-party competitors use the
term “Studio” as model designations to identify guitar
amplifiers. Opposer responds that there is no competent
evidence of record in this regard and, in any event, that
any such use is “de minimus.” As previously noted, the
exhibits that applicant’s counsel showed to opposer’s
witnesses during cross examination were not only without
foundation and unauthenticated, but the witnesses were not
familiar with the alleged “uses” contained therein. Thus,
applicant has not established third-party uses of STUDIO in
Opposition Nos. 91162183 & 91163660
15
connection with guitars or amplifiers. Mr. Berryman’s
admission of an earlier use by Fender that has not continued
and Mr. Huber’s statement that one other guitar-maker,
Hamer, may use “Studio” in connection with guitars does not
lead us to conclude that STUDIO is weak in connection with
guitars and amplifiers. While the record establishes that
STUDIO is not an entirely arbitrary mark in connection with
guitars and amplifiers because it may be perceived by some
as suggesting a recording or music studio, the connection is
tenuous and thus the mark is only slightly suggestive.
Also with respect to the strength of opposer’s mark, we
note that opposer contends that its mark is famous and,
thus, entitled to a broad scope of protection. However, we
agree with applicant that opposer has provided no evidence
to even suggest that STUDIO may be a famous mark in
connection with guitars and amplifiers.
To determine whether the marks are confusingly similar,
we must consider the appearance, sound, connotation and
commercial impression of each mark. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). While we must
base our determination on a comparison of the marks in their
entireties, we are guided, equally, by the well established
principle that, in articulating reasons for reaching a
conclusion on the issue of confusion, “there is nothing
Opposition Nos. 91162183 & 91163660
16
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of
the marks in their entireties.” In re National Data Corp.,
732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
We find that STUDIO is the dominant portion of
applicant’s mark STUDIO SERIES. Not only is STUDIO the
first word in the mark, but it is followed by the merely
descriptive and disclaimed word SERIES. See In re Dixie
Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed.
Cir. 1997). As such, we find the marks to be substantially
similar in sound, appearance, connotation and commercial
impression. Moreover, by merely adding SERIES to opposer’s
entire mark, STUDIO, purchasers familiar with opposer’s mark
and goods are likely to believe that applicant’s STUDIO
SERIES products are part of opposer’s line of STUDIO
products.
We also find applicant’s mark, FIRST ACT STUDIO SERIES,
to be sufficiently similar to opposer’s mark STUDIO in
sound, appearance, connotation and commercial impression
that, if used on identical and related goods, confusion as
to source is likely. Applicant has merely added its house
mark, FIRST ACT, to the confusingly similar mark STUDIO
SERIES. Based on the facts in this case, the mere addition
of a house mark is insufficient to distinguish the marks.
Opposition Nos. 91162183 & 91163660
17
See New England Fish Company v. The Hervin Company, 511 F.2d
562, 184 USPQ 817 (CCPA 1974); and Knight Textile Corp. v.
Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005). Unlike
the situations in the cited cases, STUDIO is neither a weak
nor very suggestive mark in connection with guitars,
amplifiers and related goods, nor is there evidence of
significant third-party use or registration. Thus,
purchasers are not likely to distinguish these marks based
on other elements in the marks.
Finally, applicant argues that there have been no
incidents of actual confusion and opposer concurs. However,
the record does not indicate the extent to which
opportunities have existed for any such confusion to occur.
To the contrary, to date, applicant has sold its products
through mass merchants and its one store in Boston, whereas,
opposer’s goods are sold through licensed dealers who are
music stores. Therefore, we do not find the lack of actual
confusion to be determinative.
In conclusion, when we consider the record and the
relevant likelihood of confusion factors, and all of the
parties’ arguments relating thereto, including those
arguments not specifically addressed herein, we conclude
that in view of the substantial similarity in the commercial
impressions of applicant’s marks, STUDIO SERIES and FIRST
ACT STUDIO SERIES, and opposer’s mark, STUDIO, their
Opposition Nos. 91162183 & 91163660
18
contemporaneous use on the identical and related goods
involved in these oppositions is likely to cause confusion
as to the source or sponsorship of such goods.
Decision: The opposition in each application is
sustained.