Lollar lawsuit

[cjj]

John,
Thanks for the clarification on the difference between obtaining a trademark and registering it. I had forgotten that detail...

[WolfeMacleod]

Greetings. This is my first, and probably my only post on this forum.
As a direct competitor to Lollar, I stand firmly behind him, as do several other pickup makers. I will give time, travel at my own expense, even funding to Lollar's defense if needed.

I realize what I have to say may make me wildly unpopular on this forum, but so be it.

Let me start by saying that I have a clear understanding of the differences between Patent and Trademarks, and what their purpose is. For 14 years, I have researched Trademark law in hopes of getting the Dimarzio Trademark for Cream humbuckers cancelled.

At it's very basic description, Trademark serves to identify the source of the product. Patent serves to protect the operation of the product. Basically, the stuff that makes the product work.
We all know the Patent for the Ric Horseshoe expired decades ago. That Patent is now part of Public Domain.

What John Hall has done, by trademarking the appearance of the Horseshoe pickup, is exactly akin to inventing the wheel, and then trademarking the round shape of the wheel. "Round" is what makes the wheel work.

Functionality Doctrine in Trademark law states, very clearly, that functional properties of a design cannot be protected by Trademark law.
As we all know, the horseshoe design of the original pickups is what made them work. Regardless if Ric attempts to claim non-function to any current design due to non-magnetic horseshoes, there are still at least three functional aspects that will always be present, which I will not discuss here.

Lets look at Functionality Doctrine.

1202.02(a)(ii) Purpose of Functionality Doctrine

The functionality doctrine, which prohibits registration of functional product features, is intended to encourage legitimate competition by maintaining the proper balance between trademark law and patent law. As the Supreme Court explained, in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 164, 34 USPQ2d 1161, 1163 (1995):
The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm's reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. §§154, 173, after which competitors are free to use the innovation. If a product's functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).

In other words, the functionality doctrine ensures that protection for utilitarian product features be properly sought through a limited-duration utility patent, and not through the potentially unlimited protection of a trademark registration. Upon expiration of a utility patent, the invention covered by the patent enters the public domain, and the functional features disclosed in the patent may then be copied by others - thus encouraging advances in product design and manufacture. In TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 34-35, 58 USPQ2d 1001, 1007 (2001), the Supreme Court reiterated this rationale, also noting that the functionality doctrine is not affected by evidence of acquired distinctiveness:

The Lanham Act does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity. The Lanham Act, furthermore, does not protect trade dress in a functional design simply because an investment has been made to encourage the public to associate a particular functional feature with a single manufacturer or seller.
Thus, even where the evidence establishes that consumers have come to associate a functional product feature with a single source, trademark protection will not be granted in light of the public policy reasons just stated. Id.
1202.02(a)(iii) Definitions

1202.02(a)(iii)(A) Functionality

Functional matter cannot be protected as trade dress or a trademark. 15 U.S.C. §§1052(e)(5) and (f), 1091(c), 1064(3), and 1115(b). A feature is functional as a matter of law if it is "essential to the use or purpose of the product or if it affects the cost or quality of the product." TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001); Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995); Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, 214 USPQ 1, 4 n.10 (1982).
While some courts had developed a definition of functionality that focused solely on "competitive need" - thus finding a particular product feature functional only if competitors needed to copy that design in order to compete effectively - the Supreme Court held that this "was incorrect as a comprehensive definition" of functionality. TrafFix, 532 U.S. at 33, 58 USPQ2d at 1006. The Court emphasized that where a product feature meets the traditional functionality definition - that is, it is essential to the use or purpose of the product or affects the cost or quality of the product - then the feature is functional. Id. However, an inquiry into competitive need for the product design or feature at issue may be appropriate in cases where the mark sought to be registered is a color or other matter that does not easily fit within the "utilitarian" definition of functionality. Id. at 1006-07 (stating that inquiring into the issue of "significant non-reputation-related disadvantage" (i.e., competitive need) would be appropriate in cases of "aesthetic functionality," such as Qualitex). See TMEP §§1202.02(a)(iii)(C) and 1202.05 regarding the issues of "aesthetic functionality" and color as a mark.
The determination that a proposed mark is functional constitutes, for public policy reasons, an absolute bar to registration on either the Principal Register or the Supplemental Register - regardless of evidence showing that the proposed mark has acquired distinctiveness. TrafFix, 532 U.S. at 29, 58 USPQ2d at 1006. See also Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422 (Fed. Cir. 2002); In re Controls Corp. of America, 46 USPQ2d 1308, 1311 (TTAB 1998).
See TMEP §§1202.02(a)(v) et seq. regarding evidentiary considerations pertaining to functionality refusals

You cannot convince me that this design is not functional in any way. I know with the original Horseshoe pickups, the design was purely functional. If you took away the magnetized horseshoes, the pickup would not work. As I stated above, even with "fake" horseshows, there are at least three other functional properties to them. It is my feeling that either John Hall does not understand how pickups work, or that he's trying to pull the wool over someone's eyes.

Description of Mark: The mark consists of a configuration of a rectangular metal guitar pickup with left and right side metal coverings over magnetic electronics for electronically transmitting sound to the amplification system.




If Rickenbacker is allowed to keep this Trademark, it sets very dangerous ground for other companies, such as Gibson, to Trademark designs such as the "dual configuration" design of a humbucker.

John Hall is abusing the system.

[aceonbass]

Mr.Macleod, thank you for confirming that this will probably be your only post here.

[Clint]

Please stay, it's just starting to get interesting.

[WolfeMacleod]

Please stay, it's just starting to get interesting.

I'd be happy to stay. I hope I am able to clear the air about what is and what is not allowed under Trademark law.

There is some very good reading about Trademark Law in the TMEP Chapter 1200. located here: http://www.t-tlaw.com/TMEP-1200.htm

Read the entire section regarding Functionality Doctrine here: http://www.t-tlaw.com/TMEP-1200.htm#_T120202a

I have no problem with Rickenbacker guitars - I think they're great guitars. I do have problems when people abuse the system to get what they want.

[cjj]

No reason not to stay. Good open discussions are always welcome.

As long as people don't start getting rude, offensive, or disrespectful (or otherwise violating the few forum rules (viewtopic.php?f=25&t=391087)), things should be fine...

[8mileshigher]

Mr.Macleod, thank you for confirming that this will probably be your only post here.

Dane, great post !

[cassius987]

I've stayed out of this because it's not really my cuppa, but honestly, the idea that RIC protecting the way something looks prevents somebody else from designing something with the same function but a different appearance just sounds utterly wrong.

[WolfeMacleod]

I've stayed out of this because it's not really my cuppa, but honestly, the idea that RIC protecting the way something looks prevents somebody else from designing something with the same function but a different appearance just sounds utterly wrong.

To quote John Hall...

You're one of the few people who actually understand this and gets it!

But keep in mind, that by trying to protect the way it looks, they are also trying to protect the way it works as well.
And that protection ran out decades ago.

[Clint]

And just how different does the appearance need to be? Would changing the mounting ring's footprint/design be enough?

[aceonbass]

but honestly, the idea that RIC protecting the way something looks prevents somebody else from designing something with the same function but a different appearance just sounds utterly wrong.

Have you seen the Lollar HS? It doesn't have a different appearance. It looks the same, and that's the core of the trade mark issue. Besides that, anyone, especially Lollar, could have filed a challenge to the trade mark in the federal courts any time in the last several years and didn't. So it's kinda like the way Gibson, Fender, and others lost many of their trade mark rights, but in reverse. Lollar, and Hipshot for that matter, should have made a product that was functionally interchangeable, but didn't. They both make products that LOOKED exactly, or kinda like what they were replacing in order to sell them to people who they knew wouldn't buy them unless they LOOKED like what they were replacing. That LOOK is the basis of the trade mark. In the case of Lollar's pickup, it's made to look like an original HS and fit RIC's surround. In the case of Hipshot's bridge, it's made to cover the same footprint when it didn't have to. The offending parties just take all that for granted, and even though it stares you in he face, I think it just doesn't occur to most people.

[WolfeMacleod]

but honestly, the idea that RIC protecting the way something looks prevents somebody else from designing something with the same function but a different appearance just sounds utterly wrong.

Have you seen the Lollar HS? It doesn't have a different appearance. It looks the same,........That LOOK is the basis of the trade mark. In the case of Lollar's pickup, it's made to look like an original HS and fit RIC's surround..

Coming from an extensive background in pickup design, I can tell you that that "look" is exactly why the Horseshoe pickups work the way they do. If you take off the horseshoes and change the appearance, you reduce its output and tonal qualities by severely altering the way the shape of the magnetic field surrounds the strings. Yes, even with non-magnetic, decorative shoes. Remove a magnetic shoe, and it no longer functions properly at all.

Again, I refer to Functionality Doctrine, which I quote above.

[cjj]

Yep, it's all about the look. That's all a trademark can be.

As for protecting how it works by protecting how it looks, well, I just can't really see that. A horseshoe magnet doesn't have to look like the RIC horseshoe (original or Re-issue) to work. There are many ways you could make it look different, though I'm not sure just what would suffice to not infringe.

For instance, the Trademark says, "The mark consists of a rectangular metal guitar pickup with left and right side metal coverings over magnetic electronics for electronically transmitting sound to the amplification system." Now, what jumps out at me is the word "rectangular." If you were to make it "bow-tie" shaped, thinner in the middle, or kind of diamond shaped, thinner towards the outer edges, well, it would still work just like the original design in the patent. The rectangular shape is not what makes the pickup work, it's the magnetic field.

But if it wasn't rectangular, it would look different.

And a lot of people probably wouldn't buy it because it didn't look like a RIC pickup.

And that's the whole point here, RIC is protecting their right for their products to be identified by the look...

[WolfeMacleod]

Yep, it's all about the look. That's all a trademark can be.

As for protecting how it works by protecting how it looks, well, I just can't really see that. A horseshoe magnet doesn't have to look like the RIC horseshoe (original or Re-issue) to work. There are many ways you could make it look different, though I'm not sure just what would suffice to not infringe.

For instance, the Trademark says, "The mark consists of a rectangular metal guitar pickup with left and right side metal coverings over magnetic electronics for electronically transmitting sound to the amplification system." Now, what jumps out at me is the word "rectangular." If you were to make it "bow-tie" shaped, thinner in the middle, or kind of diamond shaped, thinner towards the outer edges, well, it would still work just like the original design in the patent. The rectangular shape is not what makes the pickup work, it's the magnetic field.

But if it wasn't rectangular, it would look different.

And a lot of people probably wouldn't buy it because it didn't look like a RIC pickup.

And that's the whole point here, RIC is protecting their right for their products to be identified by the look...

Change the magnet shape and dimension, and you change the magnetic field, as well as the sound it produces. How long have you been designing pickups? For me, it's been 14+ years

Here's something else, regarding your statement that "people probably wouldn't buy them" because it doesn't look original. Perhaps you glossed over it in my quotes above.

While some courts had developed a definition of functionality that focused solely on "competitive need" - thus finding a particular product feature functional only if competitors needed to copy that design in order to compete effectively - the Supreme Court held that this "was incorrect as a comprehensive definition" of functionality. TrafFix, 532 U.S. at 33, 58 USPQ2d at 1006. The Court emphasized that where a product feature meets the traditional functionality definition - that is, it is essential to the use or purpose of the product or affects the cost or quality of the product - then the feature is functional. Id. However, an inquiry into competitive need for the product design or feature at issue may be appropriate in cases where the mark sought to be registered is a color or other matter that does not easily fit within the "utilitarian" definition of functionality.

So, if the design is a direct replacement with matching footprint, requires no modification to the guitar, and retains the original look of the guitar, I would say for certain that, if people would not buy them, that there is a distinct "competitive need" to retain it's original appearance. There is certainly a competitive need to have an item which requires no modification to the instrument it's attached to.


You are missing the point that the the way the pickup looks is directly related to the way it operates.
Round wheel vs. square wheel. Square wheel does not roll.

[cjj]

I've never designed a pickup. I have designed a lot of magnetics for electronic circuits, transformer designs, disk armature motors, etc. The physics that makes 'em work is the same.

The bulk of the magnetic circuit will be contained within the material of the magnet itself. Where it "counts" is where the magnetic field leaves the magnetic material and travels through free space (i.e., at the ends of the horseshoe). The shape between the ends of the magnet, inside the magnetic material, has little to do with the actual magnetic field other than the field strength (a lot less material would give a weaker field), but this can be compensated for in various ways such as varying the thickness or the material used. As long as you keep the ends of the magnets in a similar shape and similar orientation, with a similar field strength, the magnetic field in the air will be the same. It's this field that does all of the "work" in a pickup, not what's contained within the magnetic material. And if the field is the same, the operation will be the same, and the sound will be the same.

And you could design it so that it would still "drop in" and require no modification to the guitar. So, again, it all comes down to looks. And it doesn't have to look the same to work the same and sound the same...