TTAB strikes a bad chord for Fender's guitar shape applications

United States of America
In Spector Designs Ltd v Fender Musical Instruments Corp (Opposition 91161403, March 25 2009), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has highlighted the importance of substantially exclusive use in showing that a product configuration functions as a trademark. In consolidated proceedings that lasted over five years and involved 17 different opponents, the TTAB held that three iconic electric guitar shapes created by Fender Musical Instruments Corp were generic and, alternatively, had not acquired distinctiveness, despite over 50 years of continuous use.
Fender, one of the world’s leading guitar manufacturers, produces a number of highly popular guitars. In 2003, apparently as part of a licensing programme, Fender sought to register three guitar shapes that it had been using since the 1950s. Fender claimed that the shapes had acquired distinctiveness through over 50 years of use and provided evidence supporting that claim. To protect their ability to sell these and similar designs, 17 manufacturers and retailers of competing guitars opposed the registration of the designs, alleging that the product configurations were generic, or in the alternative, had not acquired secondary meaning.
The TTAB agreed that the designs were generic. When considering product design, the TTAB recalled that “genericness may be found where the design is, at a minimum, so common in the industry that it cannot be said to identify a particular source”. In this case, there was extensive testimony that numerous competitors had been using identical or nearly identical product design configurations for over 30 years. In fact, one of the designs was so common that when one looks up the word 'guitar' in the Random House Dictionary of the English Language, there is actually a picture of that design. 
It was also shown that Fender:
  • knew of its competitors’ use of identical or similar designs and did nothing to stop it; and
  • did not include the guitar shapes in its trademark notice statements until after 2003, when it filed the applications at issue. 
In telling contrast, Fender had policed its rights in its other marks, including its uniquely shaped guitar heads, which it has successfully registered as trademarks. Based on this, the TTAB inferred that Fender and its “predecessors themselves did not view [the product designs] as trademarks”. 
The widespread use of the designs by competitors also increased the concern that allowing Fender to claim exclusive rights in these designs would deprive consumers “of the benefits of competition with regard to the utilitarian and aesthetic purposes that product design ordinarily serves”.
Generic terms and designs are by definition incapable of functioning as trademarks. Therefore, the TTAB did not have to consider whether the designs had acquired secondary meaning. Nevertheless, in a separate analysis, the TTAB also determined that even if the product configurations were not generic, they had not acquired distinctiveness despite over five decades of use. 
Under Wal-Mart Stores Inc v Samara Brothers Inc (529 US 205 (2000)), product configurations are never inherently distinctive and may be registered as trademarks only upon a showing of acquired distinctiveness. To establish acquired distinctiveness, Fender submitted substantial direct evidence (ie, a survey and consumer statements) and indirect evidence (ie, decades of use, sales volume, advertising expenditures, media exposure, licensing and intentional copying). Despite this, the TTAB concluded that Fender had failed to prove that the “primary significance of the product configuration in the minds of the consumers is not the product but the source of that product”.
In finding that the product configurations had not acquired distinctiveness, the TTAB again focused on the non-exclusivity of use of the guitar shapes. The TTAB also found it significant that Fender had failed to put forth any 'look for' advertising - that is, advertising that “directs the potential consumer in no uncertain terms to look for a certain feature to know that it is from that source”. Although Fender had expended substantial amounts to advertise guitars with the shapes at issue, it never directed consumers to think of those shapes as anything other than features of the guitars. In fact, the TTAB indicated that “advertising that touts a product feature for its desirable qualities and not primarily as a way to distinguish the producer’s brand [...] directly undermines” a finding of secondary meaning. In all, Fender’s evidence was considered to be insufficient to overcome the fact that its use of the configurations was not substantially exclusive for more than 30 years. As a result, the TTAB sustained the oppositions - a decision that may have a significant impact on Fender’s ongoing licensing programme, which apparently includes the guitar shapes. 
This case demonstrates the difficulty of protecting product configurations as trademarks and the benefit of using 'look for' advertising for such marks. More importantly, it highlights the need for consistent policing of all marks. Given the decision’s heavy reliance on third-party use of the designs, an early identification of the designs as trademarks and development of a consistent enforcement programme may have avoided this genericide.

Marlene J Williams & Jeffrey H Larson, Knobbe Martens Olson & Bear LLP, San Francisco and Irvine

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