Rickenbacker Forum, Amplifier, Bass and Guitar Register
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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.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
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.Clint wrote:Please stay, it's just starting to get interesting.
aceonbass wrote:Mr.Macleod, thank you for confirming that this will probably be your only post here.
To quote John Hall...cassius987 wrote: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.
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.You're one of the few people who actually understand this and gets it!
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.cassius987 wrote: 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.
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.aceonbass wrote: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..cassius987 wrote: 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.
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+ yearscjj wrote: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...
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.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.