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Looks like some of us need to get more creative, Martin trademarked the paddle. http://www.martinguitar.com/news/articles.php?id=170

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Joe Breault
Merrimack, NH
Perpetual novice

I hope that this is directed more at mass producers. I can't picture C.F. Martin going after a small builder for building a couple (or maybe a hundred) guitars with similar headstocks. Maybe a guy like David Webber who is cranking out 100 or so guitars a year with the help of CNC, but even then I would like to think that they wouldn't do such a thing to a small builder. But these days....who knows. Money, money, money.

They are kidding themselves. One of the things you have to show in order to protect a trademark is that you were the first to use that design and that you made a good faith effort to protect your work and stop others from using it from the day you originated the design. Clearly, Martin has not made an effort to stop others from using the headstock shape since it first used it. My guess is that the first time Martin tries to stop another builder or company from using the headstock, it will lose in court if the other builder decides to fight back. Martin has a 161 year history of not protecting the shape .... now they are going to try to trademark it?

And lets not forget that the Martin headstock shape has not remained constant over the years. The late 1960s and 1970s had a pronounced curve on the top. It's harder to protect a trademark when the "owner" does not use it consistently.

It is similar to another fight a few years ago when Fender tried to stop others from using the Telecaster and Stratocaster body shapes. They did not do enough to protect the shapes over the years, so they lost their case on the body shapes.

Remember that anyone can trademark anything. The real issue does not get solved until the trademark owner tries to enforce it or someone challenges the trademark. In reality, another company could have filed a trademark on the headstock shape and forced Martin into a legal fight to challenge it.

Jim

They really should not be able to patent simple shapes like this. There is a reason they have not tried to do so in 161 years. Likely because they would lose in court.

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http://goatrockukulele.com

Yeah, but just the fact that they claim the TM now means any luthier using their headstock shape will have to think seriously about if they want to get embroiled in a court battle at all, even if they think they will ultimately win. The up front cost of going to court to prove that Martin didn't protect their headstock shape all these years is prohibitive enough to make most luthiers (big and small) redesign their headstock shape to something similar (derivative) but unmistakably different.

Dave F.

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Cambrian Guitars

"There goes Mister Tic-Tac out the back with some bric-brac from the knick-knack rack"

All a small builder will have to do is make one small change. Look at the case of Fender...it holds trademarks for its headstock shapes. USA Custom Guitars makes necks with the Fender headstock shape but they leave a very small bump on one side. That's all it takes.

All a small builder would have to do is put a small v-shaped notch in the top and he or she would have a new headstock shape.

There is a company in China who is building Martin knockoffs, complete with the Martin name and Martin logo on the headstock. Martin can't stop them because the company never filed trademarks on its name and logo in China or in many other countries. My guess is that this is aimed at that Chinese company.

Jim

I suspect that the new patent laws have something to do with this. You no longer have to prove you were first to use, just first to patent, as I understand it. Which isn't very well, but I did hear some discussion on the radio.

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Waddy

Photobucket Build Album Library

Sound Clips of most of my guitars

I always thought it was a boring design any way

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member of the guild of professional dilettantes

Looks to me like an old west gun fight. Martin is in the street and has stared their stare just waiting to see if everyone else blinks and walks away..

Same here. I guess it works for them, being an old factory builder, but I certainly prefer something more complex for my own work.

But if what Waddy says is true, then I'm going to go out and patent the wheel. I mean, nobody's ever done that before, have they?

I really hate patents.

The paddle shape has been out there forever...I doubt that even 1 in 100 guitarists could be shown a silhouette of the paddle shape and have it instantly recognizable as Martin. They may guess "acoustic" if anything. Beyond that, are there really builders that are trying to pass their guitars off as Martins? After all that time and expense of building a handmade, boutique guitar, I'm now going to try to make it look like a factory guitar? IMHO, the paddle's popular precisely because it doesn't really have any distinguishing features.

I personally don't think they have a leg to stand on with their paddle shape, though now that they've registered the clock is ticking for someone to contest it (3 or 5 years if I remember right). After that, it becomes VERY hard to contest it. Their logo, on the other hand, has had the benefit of common law trademark from the moment they used it in whatever area they market and do business in (i.e. the entire USA), and would continue to have that protection so long as they defend it. I don't see that registering the trademark gets them anything to combat the Chinese forgeries....nothing they didn't already have, at any rate.

So I'm going to disagree and say that this is a tool to combat the small builders. I think the game plan is to wait until the period has expired with the idea that no small luthier has the time or resources to contest it. After that, cease and desist letters start going out. Just my opinion. I have Martins and I like Martins, but after 100+ years this just seems like a completely bizarre and looney move with very little upside potential.

Anyhow, it's just my opinion.

Todd correctly notes that this is a trademark issue, not a patent issue. They are subject to completely different laws.

"Assuming that a trademark qualifies for protection, rights to a trademark can be acquired in one of two ways: (1) by being the first to use the mark in commerce; or (2) by being the first to register the mark with the U.S. Patent and Trademark Office ("PTO"). 15 U.S.C. � 1127(a)."

It's interesting to me that only recently has Martin applied for protection under the trademark laws. Martin will have had to argue that the headstock shape is distinctive - that is, it must be capable of identifying the source of a particular good. However, as has been noted above, there have been many guitars built with that same shape.

"Trademark rights can be lost through genericity. Sometimes, trademarks that are originally distinctive can become generic over time, thereby losing its trademark protection. A word will be considered generic when, in the minds of a substantial majority of the public, the word denotes a broad genus or type of product and not a specific source or manufacturer. So, for example, the term "thermos" has become a generic term and is no longer entitled to trademark protection. Although it once denoted a specific manufacturer, the term now stands for the general type of product. Similarly, both "aspirin" and "cellophane" have been held to be generic."

If Martin does not defend its mark, there is the risk that it could lose the ability to stop others from use of the headstock design in its trademark. Since Martin has actually been issued a trademark, the USPTO has already considered the question of it being distinctive. It will be interesting to see how Martin proceeds - they might be signaling a new period of more aggressive behaviour.

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"Building guitars looks hard, but it's actually much harder than it looks." Tom Buck

Doesn't seem right to be able to call a shape a trademark. The same shape and logo maybe seems like a trademark, but you would think a "doofus" logo and the same shape would not be misleading. Seems everyone wants to sue and argue about everything.

When you look at the actual trademark details

http://tarr.uspto.gov/tarr?regser=regis ... est+Status

The only aspect which is registered is the straight line across the top.
Seems fair enough to me.

Sharp eyes will note that the mark was actually registered in 2006. It's been in force for about 5 years.

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"Building guitars looks hard, but it's actually much harder than it looks." Tom Buck

Don't know how they can even begin to initiate action against anyone as long as they are selling their factory seconds necks through the guitar makers connection. Can't have it both ways. Can't sue someone for trademark infringement and sell parts with the trademarked shape to any and all at the same time. Of course you would need to hire lawyers and appear in court to make that case. How much of that type thing can you afford? That's most likely what they are betting on.

Not sure what they are up to, but the way Chris said repeatedly " I'm not kidding" doesn't sound good. Sounds like some of what Harley-Davidson did in the 80's

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Brian

You never know what you are capable of until you actually try.

https://www.howardguitarsdelaware.com/

As I understand it from talking to the trademark attorneys at work, the USPTO only looks to see if someone else has previously filed a trademark application for the same shape. If no one has, the USPTO grants the trademark without judging if the shape is distinctive. At that point, it is up to the trademark holder to enforce its trademark by filing suit against anone who tries to use it.

The issue of distinctive use is addressed in court. In this case, Martin would have to prove that the design is distinctive, is widely recognized as being from Martin, has not become generic, and that the company has acted to protect its trademark since it first began using it.

Jim

Jim, in this case, you are quite correct. I didn't do my homework. The examiner made a small change to the description of the mark during examination, as the PTO record shows, and no other substantive objections were made before registration of the mark. Interestingly, I am personally aware of a trademark case, filed by a client of mine, where we had to produce a document nearly a hundred pages long proving that a product with a certain shape had become well enough known in the industry to be considered distinctive. It involved doing surveys of people in the industry and so on. Since I am not a trademark attorney, I can't say what the difference is between my client's case and the Martin mark.

BTW, if you buy a neck from Martin, part of the cost is an implied license. Should not be an issue.

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"Building guitars looks hard, but it's actually much harder than it looks." Tom Buck

Well said Todd.......maybe Martin's next move is to trademark the shape of the guitar???
Tom

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A person who has never made a mistake has never made anything!!!

If they had thought of it at the time, Martin could have trademarked the dreadnought design.

Jim

Interesting discussion. There are only so many functional shapes you could possibly make for a head stock. I'd hate to see EVERYBODY now trade mark their own shape leaving every one else with nothing to work with less they get sued.

I've had customers ask me to make specific head stocks and even copy body designs (electric bass) I refused to do it not so much for fear of trademark but just because I I feel as though it's ripping off some one else's work.

I'd like to see Martin try this malarkey in Europe!

And Todd's right, the last decent Martin guitars were made in 1969, I haven't heard one I like since.

Colin

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I don't believe in anything, I simply make use of a set of reasonable working hypotheses.

I sincerely doubt that Martin wants to go after small builders, or even production shops. Not only would this be counter-productive and disastrous in terms of PR, but counter to the company's ethics and attitude so far.
But better to ask somebody at Martin directly, rather than conjecturing wildly (and gratuitously I think).

I suspect it has to do with Asian factories putting out cheap copies of Martin models, with the Martin brand name, stamp and so on. Of course anybody who is familiar with Martins won't get fooled, but a lot of others do. Look on eBay and once in a while somebody posts on the UMGF about this. Maybe this patent/trademark thing is a necessary legal tool for Martin to fight in US courts. But what do I know?

OTOH in Antiquity imitation was the highest form of flattery. Any work started by imitating a "classic", then took off from there. Not doing so was considered the pinnacle of hubris and bad manners. It's a nice recipe for continuity, structure and some form of humility.

I use my own design, strongly inspired among others by CFMartin. However, if asked to build a facsimile of a pre-war OM, say, I would go all the way down to the tiniest details, including the correct period peghead shape. It's a classic…

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Laurent Brondel
West Paris, Maine - USA
http://www.laurentbrondel.com/

I had a colleague do a search on Westlaw. As far as we can tell, C.F. Martin and Dreadnought, Inc. (the owner of the mark in question) has not taken anyone to court (in the time period that the database has records) for trademark infringement.

Now, Martin may have written lots of warning letters, etc. so be aware that the public court records have no bearing on or relect in any way on Martin's policies and behaviors.

It also appears, from the published registration, that the mark covers the headstock, not just the top of the headstock, and excludes the neck.

This is not legal advice, just information that is publicly available.

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"Building guitars looks hard, but it's actually much harder than it looks." Tom Buck