Starting in the 1950s, Leo Fender and the Fender Music Instrument Corp. ("Fender") helped pioneer the sound of the modern electric guitar. From soulful blues to hard rock to reverb-laden surf, Fender guitars have made their mark. The names FENDER, STRATOCASTER and TELECASTER are arguably famous trademarks, known both to musicians and the general public. However, when Fender sought trademark protection for the design of its three main guitar body configurations, it hit a sour note.
In 2003, Fender filed applications to register three marks before the United States Patent and Trademark Office, each representing "a fancifully shaped configuration of the body portion of a guitar." The applications were opposed by a group of no less than seventeen guitar manufacturers and retailers. Opposers claimed Fender's product designs were not registrable since they were generic for guitar bodies and Fender did not have the requisite acquired distinctiveness in the designs to support registration.
Under U.S. precedent, product configurations are not inherently distinctive and may only be registered as trademarks upon a showing of acquired distinctiveness. To demonstrate that a product configuration, like a guitar body, has acquired distinctiveness, one must show that the primary significance of the configuration in the minds of consumers is not the product itself, but the source of that product. The issue is decided on the totality of the evidence, wherein such factors as length of use, exclusivity of use, consumer testimonials, sales and advertising data are relevant to the determination.
Additionally, the Lanham Act precludes registration of generic marks. A mark, whether a word or product design, can become generic if it ceases or fails to serve as a source identifier.
Opposers contended that Fender's alleged marks, the guitar body shapes, had become generic due to industry-wide copying of the designs. Opposers submitted extensive evidence from over one dozen manufacturers demonstrating that the Fender guitar shapes had been copied essentially since the products were first launched. Evidence also indicated that Fender never policed or sought to enforce any alleged trademark in the body designs over the years. Specifically, though Fender often challenged use of word marks or logo designs, it never challenged use of a guitar body shape, even though competitor bodies were virtually indistinguishable from Fender's. Fender's own advertising over the years also demonstrated the shapes were generic. A number of ads explicitly referenced competitor guitars and implored consumers not to be "fooled by imitations" and to seek out "the original." Lastly, though Fender first started marketing guitars in the shapes at issue in the 1950s and by its own admission became aware of widespread copying in the 1970s and beyond, it never claimed a trademark in the shapes until 2003 and 2004.
Opposers also argued the configurations were not registrable since they had not acquired distinctiveness. Here, too, the Board found that Fender failed. One consideration in the measure of acquired distinctiveness is length of and exclusivity of use of an alleged mark. Given industry-wide copying of Fender's body designs for the better part of fifty years, there was no such exclusivity of use. Further, Fender's failures to police its claimed mark over the years and to claim rights in same eroded any distinctiveness that Fender may have achieved. Thus, the applications were refused registration.
Based on this record, the Trademark Trial and Appeal Board found that the product designs had become generic for the goods. The product designs failed to identify Fender as the source of the guitars at issue because over the years consumers have been exposed to a multitude of similar-appearing products in the market. Thus, the shape identified the product generally, and not the source of same. Therefore, registration was refused.
The Fender case demonstrates that when a company believes that a product configuration serves as a source identifier for its goods, the company should consider seeking trademark protection, claiming and enforcing rights from the beginning. Failure to take these steps early can lead to disastrous consequences down the line for potentially iconic designs. Though the burdens can be high and significant effort may be required to demonstrate acquired distinctiveness, the failure to seek protection may result in allowing a unique design to become generic, and the marketing value associated with a product design acting as a source identifier cannot be underestimated.
Vol. 53, June 2010