Dimarzio's defending their double cream

LeftyF2003

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The only Dimarzio pickup I own has double blacks (1991 Fred bridge pickup). I never got why they were allowed to patent that. That's like getting a patent on all black tires...
 

CheopisIV

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To DiMarzio: these pickups are not double cream, and your patent doesn't apply here. The bobbins match Pantone PQ-12-0104TCX which is specifically mentioned as acceptable in the letter you sent to our shop last summer. CreamTone greatly appreciates your understanding.
This is what Creamtone states on their website and they are American
Yes sir, that's one of the colors listed on that pic I linked. I think it was a mistake for them to let it slip, but more likely it's an attempt at a sign of acting in good faith.
 

KStopper65

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Yes sir, that's one of the colors listed on that pic I linked. I think it was a mistake for them to let it slip, but more likely it's an attempt at a sign of acting in good faith.
They should send it out to sellers across the US
 

Subterfuge

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Some time ago, I was getting ready to try out a set of Dimarzio 36th Anniversarys. Around the same time, joining MLP, I heard about this story. He's free to make any business decision he wishes, but I always thought it was a bit of a dick move. Since that time I have purchased 2 or more sets of SDs, a set from Rewind, a set from Electric City and at least 3 sets from Sheptone. Hell, i even have a set of Brandonwound P90s. I will probably never purchase any Dimarzio pickups as long as he feels the need to restrict or penalize any other winder from making a pickup of a particular color.
I agree totally .. I would rather burn in Hell eternally than give that dick one penny .. ever
 

Red Planet

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I grew up in the 70s and associated Dimarzios with double cream. Larry applied for the trademark and was granted it. How that makes him a villain I do not understand. If it were my company I would defend it tooth and nail.
 

WolfeMacleod

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After years of getting slapped buy the USPTO regarding Dimarzio's most recent attempt at trademarking cream with blade/rail poles, the USPTO once again slaps the piss out of them after they filed a "we should be able to have this, waaahh!" appeal a few months ago....


United States Patent and Trademark Office (USPTO)



U.S. Application Serial No. 87213400

Mark:


Correspondence Address:
RONALD S BIENSTOCK
SCARINCI HOLLENBECK LLC
1100 VALLEY BROOK AVENUE
PO BOX 790
LYNDHURST, NJ 07071

Applicant: Dimarzio, Inc.

Reference/Docket No. N/A

Correspondence Email Address:
[email protected]




EXAMINING ATTORNEY’S APPEAL BRIEF




Applicant has appealed the final refusal to register the proposed color mark which consists of the “color cream applied to the entire surface of the goods, which are a three-dimensional configuration of an electronic sound pickup for guitars featuring a double coil design” under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127 on the grounds that the color mark is not inherently distinctive and applicant’s claim of acquired distinctiveness under Trademark Act Section 2(f) is insufficient to overcome the refusal.

FACTS



On October 24, 2016, applicant filed an application for “Electronic Sound Pickup for Guitars” for a three-dimensional mark with a color claim and the following description of the mark:

The mark consists of the double design representation of an electronic sound pickup for guitars. A pole piece runs through each of the pickup's coils. The color yellow which resembles the distinctive shade of cream covers the entire facing surface of the good except for the pole pieces.



On February 8, 2017, an Examining Attorney refused registration under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127 on the basis that the applied-for mark consists of a nondistinctive product design or nondistinctive features of a product design. The Examining Attorney also included requirements and conditional refusals regarding the drawing of the mark, the description of the mark, the color claim, the classification of the goods, and additional information.

After an abandonment and petition to revive, applicant filed a response which satisfied some of the requirements but not the drawing and mark description requirement and the associated conditional functionality refusal. In response to a Final Office Action dated February 1, 2018 in which the refusal under Trademark Act Sections 1, 2, and 45 for failure to function as a trademark (based on the unacceptable drawing of applicant’s applied-for three-dimensional mark) was made final, applicant submitted a Request for Reconsideration after Final Action dated July 30, 2018 with a new drawing of the mark as a color mark, not a configuration mark.

The application was reassigned to the current Examining Attorney who issued a new Office Action (September 13, 2018 Office Action)[1] because the applied-for color mark was not inherently distinctive under Trademark Act Sections 1, 2, and 45. Furthermore, applicant’s claim of acquired distinctiveness under Trademark Act Section 2(f) in response to the functionality refusal for the configuration mark was insufficient to support the same claim of acquired distinctiveness as to the color mark. Applicant was also required to provide information and amend the drawing and description of the mark to address the functional elements of the mark which applicant satisfied in its March 12, 2019 Response to Office Action. Unpersuaded by applicant’s arguments against the Trademark Act Sections 1, 2, and 45 refusal and the finding that the Section 2(f) claim was unsupported, the Examining Attorney issued a Subsequent Final Office Action (March 27, 2019 Office Action). Applicant filed an appeal brief on June 1, 2021.

ISSUES

The issues on appeal are whether the refusal based on Trademark Act Sections 1, 2, and 45 and the rejection of the Section 2(f) claim should be affirmed.

OBJECTIONS

  1. Untimely Evidence
Applicant has submitted new evidence with its appeal brief. Specifically, applicant attempts to include evidence of a May 2021 article about applicant’s trademark. The record in an application should be complete prior to the filing of an appeal. 37 C.F.R. §2.142(d); TBMP §§1203.02(e), 1207.01; TMEP §710.01(c). Because applicant’s new evidence was untimely submitted during an appeal, the trademark Examining Attorney objects to this evidence and requests that the Board disregard it. See In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1596 (TTAB 2014); TBMP §§1203.02(e), 1207.01; TMEP §710.01(c).

  1. Format and Length of Brief
Applicant’s brief, excluding cover page and attachments, consist of 16 pages of single-spaced text. However, all submissions to the Trademark Trial and Appeal Board must be double spaced. 37 C.F.R. §2.126(a)(1); TBMP §1203.01. The Examining Attorney therefore objects to the formatting of the brief. Moreover, Trademark Rule 2.142(b)(2) states that “Without prior leave of the Trademark Trial and Appeal Board, a brief shall not exceed twenty-five pages in length in its entirety, including the table of contents, index of cases, description of the record, statement of the issues, recitation of the facts, argument, and summary.” 37 C.F.R. § 2.142(b)(2); TBMP §1203.01. The Examining Attorney notes that the body of the brief contains 8,416 words[2]. Assuming that an average page of double-spaced, 12-point text contains 250 words[3], it appears that if properly formatted, applicant’s brief would extend to nearly 34 pages. Even if the font size were reduced to 11 points, the total number of pages would still be well over the 25 page limit set by the Rule. There is no indication that applicant either sought or received leave of the Board to disregard this guideline. The Examining Attorney therefore also objects to the length of applicant’s brief.

To the extent that references are made to applicant’s brief within the following statement, the Examining Attorney makes these references in the alternative, in the event the Board overrules the Examining Attorney’s objections. Such references should not be interpreted as acceptance of the brief or any other form of concession.

ARGUMENTS

  1. SECTIONS 1, 2, AND 45 REFUSAL


Registration was refused because the applied-for color mark, consisting of one color used on all of the surfaces of a product, was not inherently distinctive. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 166, 34 USPQ2d 1161, 1164 (1995); TMEP §1202.05(a). Color marks are never inherently distinctive and such marks are registrable only on the Supplemental Register or on the Principal Register with sufficient proof of acquired distinctiveness. See In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1018 n.4 (TTAB 2017) (citing TMEP §1202.05(a)).

In this case, applicant seeks registration for the color cream applied to applicant’s goods. The applied-for mark fails to function as a trademark because it consists solely of a color used on applicant’s goods. When used in this manner, purchasers will not perceive the color cream as identifying applicant alone as the source of the goods; rather, purchasers will perceive the color as a non-source identifying feature of the goods because they are accustomed to encountering these types of goods offered in a variety of colors, including cream (see Sweetwater Sound evidence attached to the September 2018 Office Action).

Where the use of color is common in a particular field or industry, customers are more accustomed to recognizing color as a product feature that may enhance the attractiveness of the goods. See, e.g., In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1025 (TTAB 2017). For that reason, an applicant in such a case has a difficult burden demonstrating that purchasers recognize a color as distinctive of applicant’s goods. See In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d at 1025; TMEP §1202.05(a).

Applicant did not argue against this refusal but instead claimed acquired distinctiveness under Trademark Act Section 2(f) to overcome it. Applicant's Section 2(f) claim was not supported by competent and sufficient evidence and thus the Trademark Act Sections 1, 2, and 45 refusal was maintained, made final, and should be affirmed.

  1. SECTION 2(f) ACQUIRED DISTINCTIVENESS IS NOT SUPPORTED


An applicant bears the burden of proving that a mark has acquired distinctiveness under Trademark Act Section 2(f). In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015); TMEP §1212.01. “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.” In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422. For a color mark, an applicant must establish that the purchasing public has come to view the proposed mark as an indicator of origin. See TMEP §1212.

The burden of proving that a color mark has acquired distinctiveness is substantial. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985). Allegations of sales and advertising expenditures do not per se establish that a term has acquired significance as a mark. See TMEP §1212.06(b). The ultimate test in determining acquisition of distinctiveness under Section 2(f) is not applicant’s efforts, but applicant’s success in educating the public to associate the claimed mark with a single source. Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1856 (TTAB 2017); TMEP §1212.06(b).

As a preliminary matter, applicant claims in its dates of use that it has used the color cream as a trademark since at least 1979. However, a mere statement of long-time use of the color mark is not sufficient; an applicant must provide evidence demonstrating that the color mark has acquired source-indicating significance in the minds of consumers. TMEP §1202.05(a); TMEP §1212.06.

Furthermore, many of applicant’s arguments rest on the idea that applicant’s mark is a color mark with a configuration component. For example, on page 3 of applicant’s Brief, applicant argues that it “specifically makes claim only to a specific distinctive shade of cream that only Applicant sells in these configurations” and on page 4 of applicant’s Brief, applicant “is attempting to register a color specifically as applied to that product configuration.”[4] When applicant amended the drawing of the mark to show the functional matters in dotted lines and included the statement that the “broken lines depicting the overall shapes of the pickup, indicating placement of the mark on the goods and are not part of the mark”, applicant confirmed that this application is for a color mark and that the configuration of the underlying goods is not part of the mark. Applicant’s arguments throughout this prosecution improperly conflate the color of the goods with the configuration of the goods. The broken or dotted lines inform the viewer where and how color is used on the product while at the same time making it clear that the shape of the product is not claimed as part of the mark. 37 C.F.R. §2.52(b)(4); TMEP §807.08. Thus any arguments or evidence about the configuration of the goods is irrelevant.

Although applicant’s evidence attached to the November 6, 2017 Response may show the goods in the color cream, none of the evidence mentions the color cream as a source of the goods or even mentions the color cream at all except to say “these pickups are available in double crème or black & creme bobbins” and “The PAF is available in double creme or black & creme coils” (page 57). Applicant’s pickup chart (page 62) shows that applicant offers the goods in a wide variety of colors such as green, pink, red, and black and that “creme” is merely one of the “standard colors” offered. The “Dealer Declarations” and “Consumer Declarations” (which are virtually identical in form) only discuss the configuration of the goods, not the color as a source-identifying trademark.

Applicant’s website attached to the September 13, 2018 Office Action notably did not refer to the color cream or demonstrate that the color is recognized by consumers as a source-identifying trademark. There was no “look for” reference to highlight the color as a mark or source identifying matter. Instead, applicant used wording to indicate the source of the goods, e.g., D Activator-X™ or Super 3™. Applicant’s customers are permitted to choose whatever color they want for the goods, e.g., red, yellow, neon green. The cream color is merely one of the many options but is not singled out as applicant’s trademark. See “Color Options” on applicant’s website as well as the following:

My local music store had the pickup model that I wanted, but it was in a color that doesn't go with my guitar. I bought it anyway. Can I exchange it for the color I want?



If your DiMarzio® single-coil-size pickup has a replaceable plastic cover, you can order a replacement cover in the color you want. However, in all other cases, "right model, wrong color" does not qualify for a free exchange, which is intended only for performance issues.



Thus, there was no evidence on applicant’s own website that consumers see the use of the color cream as identifying applicant as the source of the goods. Instead, applicant’s website demonstrated that consumers can choose various colors for the pickups and do so in order to match or complement the guitar.

Applicant’s various Exhibits attached to its March 12, 2019 Response consists of the following: cease and desist efforts to police its trademarks; identical dealer declarations; long use; ownership of a prior registration for different marks; advertising which show the goods in that color but do not actually include any “look for” advertising or reference to the color cream at all (e.g., the color cream is not a thematic color that points back to applicant and the advertisements do not mention cream as a feature associated with applicant). Contrary to applicant’s inaccurate assertions that the Examining Attorney uses the incorrect standard of fame or argues that the mark is generic, the Examining Attorney analyzed the mark under current case law and found that applicant did not support its Section 2(f) claim with competent evidence to overcome the Trademark Act Sections 1, 2, and 45 refusal for the reasons stated below.

Declarations are Unsupportive

Applicant included in Exhibit A (TSDR pages 13-27) “several declarations from six musical instrument dealers who attest to the fact that the Mark is a distinctive feature of Applicant’s goods.” First, the declarations indicate that the mark the dealers are attesting their beliefs about is “a three-dimensional configuration of an electronic sound pickup for guitars featuring a double coil design in a distinctive shade of cream.” The mark applied for here, however, is not a configuration mark featuring color but merely a color mark. While color is mentioned, it is only secondary and mentioned after the configuration of the double coil design rather than alone. In other words, these declarants focus on the three dimensional configuration, but do not refer to the color alone as a trademark. As such, the declarations are unsupportive.

Second, as explained in TMEP §1212.06(c):



Affidavits or declarations that assert recognition of the mark as a source indicator are relevant in establishing acquired distinctiveness. However, the value of the affidavits or declarations depends on the statements made and the identity of the affiant or declarant. See In re Chem. Dynamics Inc., 839 F.2d 1569, 1571, 5 USPQ2d 1828, 1830 (Fed. Cir. 1988) (finding conclusionary declaration from applicant’s vice-president insufficient without the factual basis for the declarant’s belief that the design had become distinctive). Proof of distinctiveness also requires more than proof of the existence of a relatively small number of people who associate a mark with the applicant. See In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988) ("Because these affidavits were sought and collected by applicant from ten customers who have dealt with applicant for many years, the evidence is not altogether persuasive on the issue of how the average customer for paints perceives the words ‘PAINT PRODUCTS CO.’ in conjunction with paints and coatings."); see also Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB 2010) (finding sixteen declarations of little persuasive value, as they were nearly identical in wording and only one of the declarants was described as an end consumer)...



In this case, applicant’s declarations do not include a single demonstration of how the average customer for guitar pickups would recognize the color cream (without any other wording or reference to configuration) as a source-identifying mark in conjunction with guitar pickups. Of the “millions of consumers” who have encountered applicant’s goods (page 4 of applicant’s Brief), applicant obtained not a single declaration. The six musical instrument dealer declarations are of little persuasive value as they are identical in wording with only the blanks filled out for the name and dates or years. It appears that the dealers were provided with boilerplate language and asked to sign the declarations rather than provide declarations in their own words and thus are not persuasive. Applicant’s submission of these declarations is insufficient to support a Section 2(f) claim and applicant has submitted no other acceptable affidavits, declarations, or evidence from the purchasing public to support the claim.

Prior Registrations Do not Support Section 2(f) Claim

Applicant refers to its prior registrations in Exhibit B (TSDR pages 28-41) to argue against the refusal for this color mark, but “trademark rights are not static.” In re Thunderbird Prods. Corp., 406 F.2d 1389, 1391, 160 USPQ 730, 732 (C.C.P.A. 1969). Eligibility for registration must be determined on the basis of the facts and evidence in the record at the time registration is sought, which includes during examination and any related appeal. In re Chippendales USA Inc., 622 F.3d 1346, 1354, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010). In any event, applicant’s prior registrations for the configuration of the goods or motifs have nothing to do with the color mark application here.

Advertising Evidence Does not Support Section 2(f) Claim

With respect to applicant’s advertising evidence (applicant’s Exhibits C, D, and E, TSDR pages 42-121), the evidence does not support the Section 2(f) claim for this color mark. The advertisements may show applicant’s goods in cream but do not show applicant’s promotion of the color cream as a source-identifying trademark.

Merely showing the photographs of the goods in color in advertisements is not enough to establish acquired distinctiveness. In cases involving color, it is crucial to prove distinctiveness to promote the color as a source-identifying mark. The evidence submitted by applicant does not show that consumers know that when they see the color cream on guitar pickups, those cream-colored goods originate from applicant alone. Therefore, the evidence currently of record is insufficient and inadequate to establish acquired distinctiveness.

Applicant argues that there is no requirement that its advertising implement “look for” features. This is true; however the Examining Attorney merely pointed out that (1) the existence of such could have supported the claim, and (2) the lack of “look for” features or similar instruction indicated that applicant did not attempt to educate the public that the color cream is a source-identifier to applicant alone. See In re Chevron Intellectual Prop. Group LLC, 96 USPQ2d 2026, 2031 (TTAB 2010) (finding evidence of acquired distinctiveness deficient in part because of the lack of advertisements promoting recognition of pole spanner design as a service mark). Just as in Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB 2010) finding absence of "look for" advertisements damaging to attempt to demonstrate acquired distinctiveness of proposed configuration mark, the absence of "look for" advertisements featuring applicant’s goods but not highlighting the color at all is damaging to applicant’s Section 2(f) claim.

Applicant discussed Exhibits F-G (TSDR pages 122-150) and claimed that Gibson’s advertisements include the wording DOUBLE CERAM to describe applicant’s goods. Applicant goes on to explain the history behind applicant’s double coil, double cream pickups. The reference to applicant’s goods on page 133 states:

Hamer commissioned DiMarzio to product humbuckers to its own specs. These almost always came with a cream bobbin on the bridge pickup and a zebra (cream/black) bobbin on the neck pickup. These were used on virtually all two-humbucker Hamers up to ’82. Single-coil pickups used on the Prototypes were also DiMarzios. From ’82 until the early ‘90s Hamer used “Hamer Slammers” – black-bobbined humbuckers with “Hamer” stamped on the bottom plate. These, too, were made by DiMarzio.



It is clear that the article refers to applicant’s goods by the name DiMarzio and that the color scheme (cream/black or cream or black) merely describes the color that these goods came in but does not indicate that the color cream alone is a source-identifying trademark of applicant alone. The article about the Pandemonium Humbucker (Exhibit F, TSDR page 137) makes a reference to applicant’s “double cream bobbins” but this single reference is insufficient to show that the purchasing public has come to associate the color cream on pickups with applicant alone or that the color is applicant’s signature color. In Exhibit G, TSDR page 147, the Ace Frehley page includes text highlighting the “Trademark Ace headstock inlay” but the reference to applicant’s goods focuses on the design rather than the color: “Three custom-wound DiMarzio double-cream humbucking pickups.” The “look for” reference focuses on the custom winding or the configuration while the color is merely mentioned in passing, just as it is with the “matched flamed maple top” and “cherry sunburst finish”. The only references to cream in applicant’s advertising are informational, not source-identifying, while other pages do not mention cream color at all.

No Substantial Exclusivity of Use

The Examining Attorney's evidence showed that applicant's use of the cream color on guitar pickups is not substantially exclusive.[5] Put another way, third party use of the same color on the same goods calls into question the ability of the color to identify a single source.

The evidence attached to the September 13, 2018 Office Action demonstrated that several other pickup manufactures offer cream pickups.

https://www.kieselguitars.com/products/C22B-1

Upgrade your pickups coils to cream.



https://www.sweetwater.com/store/detail/Lil78C--seymour-duncan-custom-shop-little-78-humbucking-strat-pickup-cream?mrkgcl=28&mrkgadid=3248788027&rkg_id=0&product_id=Lil78C&campaigntype=shopping&campaign=aaShopping - Core - Guitars&adgroup=Guitars - Guitar Accessories&placement=google&adpos=1o3&creative=226299461162&device=c&matchtype=&network=g&gclid=EAIaIQobChMIzt3259613QIV0pCfCh09GAMNEAkYAyABEgJEIfD_BwE

Seymour Duncan Custom Shop Little '78 Humbucking Strat Pickup – Cream



https://www.ebay.com/i/271294725574?chn=ps

Dragonfire Crusader Humbucker Pickup Set- Invader Type- Bridge & Neck- Cream!



https://reverb.com/item/3243869-guitar-madness-g-m-hot-shred-platinum-bridge-pickup-cream?gclid=EAIaIQobChMI252Xlt-13QIVBkSGCh1kqgXREAkYEyABEgLL7PD_BwE&gclsrc=aw.ds&pla=1

Guitar Madness G.M. Hot Shred Platinum Bridge Pickup Cream



https://reverb.com/item/13000410-yamaha-sg-200-vintage-cream-humbucker-1970-s-80-s?gclid=EAIaIQobChMI252Xlt-13QIVBkSGCh1kqgXREAkYISABEgKBcPD_BwE&gclsrc=aw.ds&pla=1

Yamaha SG-200 Vintage Cream Humbucker 1970’s/80’s



https://www.kieselguitars.com/group/classic-humbucker-pickups

Kiesel Guitars humbuckers are available in cream or black, as well as cream/black zebra, and with cream or black bezels.



https://www.amazon.com/Yibuy-Single-Magnetic-Humbucker-Electric/dp/B072FRHXCT

Yibuy 48/50/52mm Cream Color Four Wire Single Coil Magnetic Pickup to Humbucker for Electric Guitar Set of 3



https://www.guitarfetish.com/KP--Cream-Neodymium-Single-Pickup-True-Vintage-Sparkle--Kwikplug-Ready_p_23255.html

KP - Cream Neodymium Single Pickup- True Vintage Sparkle - Kwikplug™ Ready



https://www.guitarcenter.com/Bill-Lawrence/L500XL-Hot-Humbucker-Electric-Guitar-Pickup-Cream-1274115065204.gc?cntry=us&source=4WWRWXGP&adlclid=ADL-e330b904-0c87-4d00-97d5-c32108317621&kwid=produc[email protected]ADL4GC-adTypePLA

Bill Lawrence L500XL Hot Humbucker Electric Guitar Pickup Cream



https://guitar-compare.com/wp-content/uploads/2017/11/1979_Ibanez_Leaflet_Cimar.pdf

The cream-colored coils are wound for very high output and the high power ferrite magnet and adjustable polepieces assure you of brightness and balance.



This evidence contradicts applicant’s claim that the color cream has come to identify a single source of guitar pickups. See Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 1403, 222 USPQ 939, 940-41 (Fed. Cir. 1984) (“When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking under such circumstances.”); TMEP §1212.05(b).

The evidence attached to the March 27, 2019 Office Action further demonstrated that applicant does not have exclusive use of the color cream on pickups. The Examining Attorney attached evidence of ten other instances of cream colored guitar pickups sold by third parties.

https://www.amazon.com/Seymour-Duncan-SP90-1B-Guitar-Pickup/dp/B0002F5206

The original P-90 has been Gibson's most popular single-coil pickup since its creation in 1937. Now Duncan has re-created every vintage detail of this classic, including the original's gutsy sound. Creme color.



https://reverb.com/item/9782-seymour-duncan-custom-double-cream-double-cream

Duncan Custom Double Cream Pickup in good working shape

Brand: Seymour Duncan



https://www.ginoguitars.com/en/ox4-pickups-handwound-paf-humbucker-set-aged-cr-p-293.html

OX4 Pickups Handwound PAF Humbucker Set Aged Double Cream



https://www.themusiczoo.com/products/bare-knuckle-black-dog-bridge-humbucker-pickup-double-cream

Bare Knuckle Black Dog Bridge Humbucker Pickup (Double Cream)



https://www.mylespaul.com/threads/fs-corsa-manalishi-peter-green-humbucker-neck-pickup-double-cream-oop.405916/

This is an early Larry Corsa Manalishi PAF style humbucker neck pickup. This pickup was hand made and built to replicate the tone of Peter Green. As such, it is wound out-of-phase to achieve the honking, nasal style tone in the in-between position on a Les Paul as heard on the early Fleetwood Mac albums. It has double cream bobbins, braided single conductor leads and is lightly aged / relic'd.



https://www.guitarfetish.com/Humbucker-Equipped-HSS-Guard-Vintage-Cream-3-Ply-White-Pickguard_p_1922.html

What's sexier on a white, black or sunburst Strat® than vintage "Aged Cream" pickups on a classic 3-ply white pickguard?



https://www.wizz-pickups.net/product-page/wizz-premium-clone-paf-pickup-set-new

Cellulose acetate butyrate bobbins in light cream color (matched to unopened 1959 double cream P.A.F. pickups)



https://www.traditionguitars.com/Parts.html

Tradition PAF humbuckers - $60.00 Each or $100 Set. Available in covered nickel, gold, satin nickel and uncovered double black, double cream and Zebra.



http://www.celentanopickups.com/humbuckers/

authentic butyrate bobbins reproduction of an old 50’s PAF49.2mm <=> 1.94″ available in : Double black , double cream , zebra & reverse feel and smell like the original.



https://www.guitarplayer.com/gear/geppetto-guitars-introduces-the-camelot-humbucker

Geppetto Guitars introduces its new humbucker pickup, The Camelot, a vintage-style, scatterwound, humbucking pickup. …Camelot’s are available with a nickel cover, aged-nickel cover or uncovered in either double black, double cream, zebra or reverse zebra.



https://reverb.com/item/19605022-gibson-dirty-fingers-double-cream-coil-tap-humbucking-pickup-1970-s-80-s

Double cream coils

Brand: Gibson

Model: Dirty Fingers double CREAM coil tap humbucking pickup

Finish: Cream



https://aws2.gibson.com/News-Lifestyle/Features/en-us/Bucking-the-Hum-and-Making-His.aspx

In addition to these constructional variables, another purely cosmetic variable has sent many collectors in search of the rare and ultra-rare examples: when Gibson ran short of black plastic coil formers, or “bobbins,” it bought in cream stock, so double-cream and black-and-cream PAFs—dubbed “zebra stripes”—can also be found beneath some pickups’ metal covers.



https://www.pafhumbucker.com/paf-pickups-bobbins.html

The two Butyrate plastic bobbins in each P.A.F. humbucking electric guitar pickup are unique in both cosmetics, material and dimensions to the vintage P.A.F. pickup. Although not originally intended as a cosmetic feature, the look of the P.A.F. bobbin has become a important detail in authenticating a vintage P.A.F.. The color has even affected the price of vintage P.A.F. pickups, with Double Cream P.A.F. pickup fetching the highest price on the vintage market due to scarcity and association with famous players.



Because many parties offer cream colored pickups, the mark does not appear to be distinctive of the goods.

Although each of applicant’s nearly 300 pages of attachments were carefully reviewed and did show evidence of applicant’s use of the color cream (as well as cream and black) on its goods, the evidence of record does not support the finding that applicant’s use of the color cream on pickups is unique, or that applicant promoted the color alone as a source-identifier, or that consumers immediately recognize cream colored pickups as originating from applicant alone. In other words, applicant may have used the color for a significant time, but this length of use is largely irrelevant because many other parties offered the same type of goods using the same color on the goods. This is not an argument-driven issue but a fact-based one.

Applicant has not shown any success in educating the consuming public to associate the proposed mark (the color cream on its own with no other wording, design, or configuration) with a single source (applicant). Applicant’s evidence shows no consumer recognition of applicant as the exclusive provider of cream colored pickups and, in fact, the evidence of record demonstrates that applicant is not the exclusive provider of cream colored pickups. Based on the fact that third parties commonly use the applied-for color on their pickups, applicant logically and factually cannot claim exclusive use. Again, the key consideration here is that applicant’s use of the color on its pickups is not substantially exclusive and applicant’s evidence is insufficient to show secondary meaning or acquired distinctiveness.

Applicant claims that “the correct issue is whether the Applicant has exclusively been using the Mark on exposed double coil pickups” (March 12, 2019 Response), but the identification of goods confirms that applicant’s goods are “Electronic sound pickup for guitars” not “Electronic double coil sound pickup for guitars”. Applicant’s various objections and distinctions between 12-pole piece pickup configurations and rail configurations and single coil designs are irrelevant when (1) this application is for a color mark not a configuration mark and (2) applicant has applied for the mark as used on all types of electronic sound pickups for guitars regardless of configuration. A color mark must be shown to have acquired source-indicating significance in the minds of consumers on the applied for goods which, here, encompass all electronic sound pickup for guitars such as those featured in the evidence of record.

Guitar components in cream colors are sought after by guitar owners attempting to match other cream colored guitar components. As the evidence of record confirms, several third party manufacturers offer guitar pickups in a variety of colors in order to allow guitar owners to select pickups that match the guitar and its components. Applicant itself offers cream or black, as well as cream/black zebra color, all green, all pink, all yellow, all purple, etc. pickups. See applicant’s website attached to the September 13, 2018 Office Action. The cream color is not identified on applicant’s website as a source identifying color but rather just one of many colors that applicant offers its pickups in. The March 27, 2019 Office Action discussed additional websites demonstrating that pickups are offered in cream colors by parties other than applicant (including discussions that the cream color is for purposes of matching the guitar color or vintage look). See March 27, 2019 Office Action for detailed URLs and relevant text. These websites show that many parties offer cream colored pickups and that the color mark applied for here does not appear to be distinctive of the goods through applicant’s “substantially exclusive and continuous use of the mark in commerce”. Applicant’s evidence only shows that applicant used the color cream (sometimes alone, sometimes in combination with other colors) but does not show that applicant ever promoted the color or attempted to associate the color as a trademark pointing to applicant exclusively. Although applicant appears to have used cream on its pickups for a lengthy time, the evidence of record does not establish that applicant’s use is substantially exclusive or that relevant consumers associate that color in applicant alone as required by Trademark Act Section 2(f).

V. CONCLUSION

Applicant failed to establish that the purchasing public has come to view the proposed color mark as an indicator of origin in applicant alone or that applicant’s use is substantially exclusive. For the reasons specified above, the Trademark Act Sections 1, 2 and 45 Refusal and the finding that applicant's Trademark Act Section 2(f) claim was insufficient should be affirmed.



Respectfully submitted,





/Ms. Tasneem Hussain/

Trademark Examining Attorney

Law Office 118

[email protected] (preferred)

571.272.8273







Michael W. Baird

Managing Attorney

Law Office 118

571-272-9487

[email protected]
 

KStopper65

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After years of getting slapped buy the USPTO regarding Dimarzio's most recent attempt at trademarking cream with blade/rail poles, the USPTO once again slaps the piss out of them after they filed a "we should be able to have this, waaahh!" appeal a few months ago....


United States Patent and Trademark Office (USPTO)



U.S. Application Serial No. 87213400

Mark:

Correspondence Address:
RONALD S BIENSTOCK
SCARINCI HOLLENBECK LLC
1100 VALLEY BROOK AVENUE
PO BOX 790
LYNDHURST, NJ 07071
Applicant: Dimarzio, Inc.
Reference/Docket No. N/A

Correspondence Email Address:
[email protected]





EXAMINING ATTORNEY’S APPEAL BRIEF




Applicant has appealed the final refusal to register the proposed color mark which consists of the “color cream applied to the entire surface of the goods, which are a three-dimensional configuration of an electronic sound pickup for guitars featuring a double coil design” under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127 on the grounds that the color mark is not inherently distinctive and applicant’s claim of acquired distinctiveness under Trademark Act Section 2(f) is insufficient to overcome the refusal.

FACTS



On October 24, 2016, applicant filed an application for “Electronic Sound Pickup for Guitars” for a three-dimensional mark with a color claim and the following description of the mark:

The mark consists of the double design representation of an electronic sound pickup for guitars. A pole piece runs through each of the pickup's coils. The color yellow which resembles the distinctive shade of cream covers the entire facing surface of the good except for the pole pieces.



On February 8, 2017, an Examining Attorney refused registration under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127 on the basis that the applied-for mark consists of a nondistinctive product design or nondistinctive features of a product design. The Examining Attorney also included requirements and conditional refusals regarding the drawing of the mark, the description of the mark, the color claim, the classification of the goods, and additional information.

After an abandonment and petition to revive, applicant filed a response which satisfied some of the requirements but not the drawing and mark description requirement and the associated conditional functionality refusal. In response to a Final Office Action dated February 1, 2018 in which the refusal under Trademark Act Sections 1, 2, and 45 for failure to function as a trademark (based on the unacceptable drawing of applicant’s applied-for three-dimensional mark) was made final, applicant submitted a Request for Reconsideration after Final Action dated July 30, 2018 with a new drawing of the mark as a color mark, not a configuration mark.

The application was reassigned to the current Examining Attorney who issued a new Office Action (September 13, 2018 Office Action)[1] because the applied-for color mark was not inherently distinctive under Trademark Act Sections 1, 2, and 45. Furthermore, applicant’s claim of acquired distinctiveness under Trademark Act Section 2(f) in response to the functionality refusal for the configuration mark was insufficient to support the same claim of acquired distinctiveness as to the color mark. Applicant was also required to provide information and amend the drawing and description of the mark to address the functional elements of the mark which applicant satisfied in its March 12, 2019 Response to Office Action. Unpersuaded by applicant’s arguments against the Trademark Act Sections 1, 2, and 45 refusal and the finding that the Section 2(f) claim was unsupported, the Examining Attorney issued a Subsequent Final Office Action (March 27, 2019 Office Action). Applicant filed an appeal brief on June 1, 2021.

ISSUES

The issues on appeal are whether the refusal based on Trademark Act Sections 1, 2, and 45 and the rejection of the Section 2(f) claim should be affirmed.

OBJECTIONS

  1. Untimely Evidence
Applicant has submitted new evidence with its appeal brief. Specifically, applicant attempts to include evidence of a May 2021 article about applicant’s trademark. The record in an application should be complete prior to the filing of an appeal. 37 C.F.R. §2.142(d); TBMP §§1203.02(e), 1207.01; TMEP §710.01(c). Because applicant’s new evidence was untimely submitted during an appeal, the trademark Examining Attorney objects to this evidence and requests that the Board disregard it. See In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1596 (TTAB 2014); TBMP §§1203.02(e), 1207.01; TMEP §710.01(c).

  1. Format and Length of Brief
Applicant’s brief, excluding cover page and attachments, consist of 16 pages of single-spaced text. However, all submissions to the Trademark Trial and Appeal Board must be double spaced. 37 C.F.R. §2.126(a)(1); TBMP §1203.01. The Examining Attorney therefore objects to the formatting of the brief. Moreover, Trademark Rule 2.142(b)(2) states that “Without prior leave of the Trademark Trial and Appeal Board, a brief shall not exceed twenty-five pages in length in its entirety, including the table of contents, index of cases, description of the record, statement of the issues, recitation of the facts, argument, and summary.” 37 C.F.R. § 2.142(b)(2); TBMP §1203.01. The Examining Attorney notes that the body of the brief contains 8,416 words[2]. Assuming that an average page of double-spaced, 12-point text contains 250 words[3], it appears that if properly formatted, applicant’s brief would extend to nearly 34 pages. Even if the font size were reduced to 11 points, the total number of pages would still be well over the 25 page limit set by the Rule. There is no indication that applicant either sought or received leave of the Board to disregard this guideline. The Examining Attorney therefore also objects to the length of applicant’s brief.

To the extent that references are made to applicant’s brief within the following statement, the Examining Attorney makes these references in the alternative, in the event the Board overrules the Examining Attorney’s objections. Such references should not be interpreted as acceptance of the brief or any other form of concession.

ARGUMENTS

  1. SECTIONS 1, 2, AND 45 REFUSAL


Registration was refused because the applied-for color mark, consisting of one color used on all of the surfaces of a product, was not inherently distinctive. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 166, 34 USPQ2d 1161, 1164 (1995); TMEP §1202.05(a). Color marks are never inherently distinctive and such marks are registrable only on the Supplemental Register or on the Principal Register with sufficient proof of acquired distinctiveness. See In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1018 n.4 (TTAB 2017) (citing TMEP §1202.05(a)).

In this case, applicant seeks registration for the color cream applied to applicant’s goods. The applied-for mark fails to function as a trademark because it consists solely of a color used on applicant’s goods. When used in this manner, purchasers will not perceive the color cream as identifying applicant alone as the source of the goods; rather, purchasers will perceive the color as a non-source identifying feature of the goods because they are accustomed to encountering these types of goods offered in a variety of colors, including cream (see Sweetwater Sound evidence attached to the September 2018 Office Action).

Where the use of color is common in a particular field or industry, customers are more accustomed to recognizing color as a product feature that may enhance the attractiveness of the goods. See, e.g., In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1025 (TTAB 2017). For that reason, an applicant in such a case has a difficult burden demonstrating that purchasers recognize a color as distinctive of applicant’s goods. See In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d at 1025; TMEP §1202.05(a).

Applicant did not argue against this refusal but instead claimed acquired distinctiveness under Trademark Act Section 2(f) to overcome it. Applicant's Section 2(f) claim was not supported by competent and sufficient evidence and thus the Trademark Act Sections 1, 2, and 45 refusal was maintained, made final, and should be affirmed.

  1. SECTION 2(f) ACQUIRED DISTINCTIVENESS IS NOT SUPPORTED


An applicant bears the burden of proving that a mark has acquired distinctiveness under Trademark Act Section 2(f). In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015); TMEP §1212.01. “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.” In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422. For a color mark, an applicant must establish that the purchasing public has come to view the proposed mark as an indicator of origin. See TMEP §1212.

The burden of proving that a color mark has acquired distinctiveness is substantial. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985). Allegations of sales and advertising expenditures do not per se establish that a term has acquired significance as a mark. See TMEP §1212.06(b). The ultimate test in determining acquisition of distinctiveness under Section 2(f) is not applicant’s efforts, but applicant’s success in educating the public to associate the claimed mark with a single source. Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1856 (TTAB 2017); TMEP §1212.06(b).

As a preliminary matter, applicant claims in its dates of use that it has used the color cream as a trademark since at least 1979. However, a mere statement of long-time use of the color mark is not sufficient; an applicant must provide evidence demonstrating that the color mark has acquired source-indicating significance in the minds of consumers. TMEP §1202.05(a); TMEP §1212.06.

Furthermore, many of applicant’s arguments rest on the idea that applicant’s mark is a color mark with a configuration component. For example, on page 3 of applicant’s Brief, applicant argues that it “specifically makes claim only to a specific distinctive shade of cream that only Applicant sells in these configurations” and on page 4 of applicant’s Brief, applicant “is attempting to register a color specifically as applied to that product configuration.”[4] When applicant amended the drawing of the mark to show the functional matters in dotted lines and included the statement that the “broken lines depicting the overall shapes of the pickup, indicating placement of the mark on the goods and are not part of the mark”, applicant confirmed that this application is for a color mark and that the configuration of the underlying goods is not part of the mark. Applicant’s arguments throughout this prosecution improperly conflate the color of the goods with the configuration of the goods. The broken or dotted lines inform the viewer where and how color is used on the product while at the same time making it clear that the shape of the product is not claimed as part of the mark. 37 C.F.R. §2.52(b)(4); TMEP §807.08. Thus any arguments or evidence about the configuration of the goods is irrelevant.

Although applicant’s evidence attached to the November 6, 2017 Response may show the goods in the color cream, none of the evidence mentions the color cream as a source of the goods or even mentions the color cream at all except to say “these pickups are available in double crème or black & creme bobbins” and “The PAF is available in double creme or black & creme coils” (page 57). Applicant’s pickup chart (page 62) shows that applicant offers the goods in a wide variety of colors such as green, pink, red, and black and that “creme” is merely one of the “standard colors” offered. The “Dealer Declarations” and “Consumer Declarations” (which are virtually identical in form) only discuss the configuration of the goods, not the color as a source-identifying trademark.

Applicant’s website attached to the September 13, 2018 Office Action notably did not refer to the color cream or demonstrate that the color is recognized by consumers as a source-identifying trademark. There was no “look for” reference to highlight the color as a mark or source identifying matter. Instead, applicant used wording to indicate the source of the goods, e.g., D Activator-X™ or Super 3™. Applicant’s customers are permitted to choose whatever color they want for the goods, e.g., red, yellow, neon green. The cream color is merely one of the many options but is not singled out as applicant’s trademark. See “Color Options” on applicant’s website as well as the following:

My local music store had the pickup model that I wanted, but it was in a color that doesn't go with my guitar. I bought it anyway. Can I exchange it for the color I want?



If your DiMarzio® single-coil-size pickup has a replaceable plastic cover, you can order a replacement cover in the color you want. However, in all other cases, "right model, wrong color" does not qualify for a free exchange, which is intended only for performance issues.



Thus, there was no evidence on applicant’s own website that consumers see the use of the color cream as identifying applicant as the source of the goods. Instead, applicant’s website demonstrated that consumers can choose various colors for the pickups and do so in order to match or complement the guitar.

Applicant’s various Exhibits attached to its March 12, 2019 Response consists of the following: cease and desist efforts to police its trademarks; identical dealer declarations; long use; ownership of a prior registration for different marks; advertising which show the goods in that color but do not actually include any “look for” advertising or reference to the color cream at all (e.g., the color cream is not a thematic color that points back to applicant and the advertisements do not mention cream as a feature associated with applicant). Contrary to applicant’s inaccurate assertions that the Examining Attorney uses the incorrect standard of fame or argues that the mark is generic, the Examining Attorney analyzed the mark under current case law and found that applicant did not support its Section 2(f) claim with competent evidence to overcome the Trademark Act Sections 1, 2, and 45 refusal for the reasons stated below.

Declarations are Unsupportive

Applicant included in Exhibit A (TSDR pages 13-27) “several declarations from six musical instrument dealers who attest to the fact that the Mark is a distinctive feature of Applicant’s goods.” First, the declarations indicate that the mark the dealers are attesting their beliefs about is “a three-dimensional configuration of an electronic sound pickup for guitars featuring a double coil design in a distinctive shade of cream.” The mark applied for here, however, is not a configuration mark featuring color but merely a color mark. While color is mentioned, it is only secondary and mentioned after the configuration of the double coil design rather than alone. In other words, these declarants focus on the three dimensional configuration, but do not refer to the color alone as a trademark. As such, the declarations are unsupportive.

Second, as explained in TMEP §1212.06(c):



Affidavits or declarations that assert recognition of the mark as a source indicator are relevant in establishing acquired distinctiveness. However, the value of the affidavits or declarations depends on the statements made and the identity of the affiant or declarant. See In re Chem. Dynamics Inc., 839 F.2d 1569, 1571, 5 USPQ2d 1828, 1830 (Fed. Cir. 1988) (finding conclusionary declaration from applicant’s vice-president insufficient without the factual basis for the declarant’s belief that the design had become distinctive). Proof of distinctiveness also requires more than proof of the existence of a relatively small number of people who associate a mark with the applicant. See In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988) ("Because these affidavits were sought and collected by applicant from ten customers who have dealt with applicant for many years, the evidence is not altogether persuasive on the issue of how the average customer for paints perceives the words ‘PAINT PRODUCTS CO.’ in conjunction with paints and coatings."); see also Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB 2010) (finding sixteen declarations of little persuasive value, as they were nearly identical in wording and only one of the declarants was described as an end consumer)...



In this case, applicant’s declarations do not include a single demonstration of how the average customer for guitar pickups would recognize the color cream (without any other wording or reference to configuration) as a source-identifying mark in conjunction with guitar pickups. Of the “millions of consumers” who have encountered applicant’s goods (page 4 of applicant’s Brief), applicant obtained not a single declaration. The six musical instrument dealer declarations are of little persuasive value as they are identical in wording with only the blanks filled out for the name and dates or years. It appears that the dealers were provided with boilerplate language and asked to sign the declarations rather than provide declarations in their own words and thus are not persuasive. Applicant’s submission of these declarations is insufficient to support a Section 2(f) claim and applicant has submitted no other acceptable affidavits, declarations, or evidence from the purchasing public to support the claim.

Prior Registrations Do not Support Section 2(f) Claim

Applicant refers to its prior registrations in Exhibit B (TSDR pages 28-41) to argue against the refusal for this color mark, but “trademark rights are not static.” In re Thunderbird Prods. Corp., 406 F.2d 1389, 1391, 160 USPQ 730, 732 (C.C.P.A. 1969). Eligibility for registration must be determined on the basis of the facts and evidence in the record at the time registration is sought, which includes during examination and any related appeal. In re Chippendales USA Inc., 622 F.3d 1346, 1354, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010). In any event, applicant’s prior registrations for the configuration of the goods or motifs have nothing to do with the color mark application here.

Advertising Evidence Does not Support Section 2(f) Claim

With respect to applicant’s advertising evidence (applicant’s Exhibits C, D, and E, TSDR pages 42-121), the evidence does not support the Section 2(f) claim for this color mark. The advertisements may show applicant’s goods in cream but do not show applicant’s promotion of the color cream as a source-identifying trademark.

Merely showing the photographs of the goods in color in advertisements is not enough to establish acquired distinctiveness. In cases involving color, it is crucial to prove distinctiveness to promote the color as a source-identifying mark. The evidence submitted by applicant does not show that consumers know that when they see the color cream on guitar pickups, those cream-colored goods originate from applicant alone. Therefore, the evidence currently of record is insufficient and inadequate to establish acquired distinctiveness.

Applicant argues that there is no requirement that its advertising implement “look for” features. This is true; however the Examining Attorney merely pointed out that (1) the existence of such could have supported the claim, and (2) the lack of “look for” features or similar instruction indicated that applicant did not attempt to educate the public that the color cream is a source-identifier to applicant alone. See In re Chevron Intellectual Prop. Group LLC, 96 USPQ2d 2026, 2031 (TTAB 2010) (finding evidence of acquired distinctiveness deficient in part because of the lack of advertisements promoting recognition of pole spanner design as a service mark). Just as in Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB 2010) finding absence of "look for" advertisements damaging to attempt to demonstrate acquired distinctiveness of proposed configuration mark, the absence of "look for" advertisements featuring applicant’s goods but not highlighting the color at all is damaging to applicant’s Section 2(f) claim.

Applicant discussed Exhibits F-G (TSDR pages 122-150) and claimed that Gibson’s advertisements include the wording DOUBLE CERAM to describe applicant’s goods. Applicant goes on to explain the history behind applicant’s double coil, double cream pickups. The reference to applicant’s goods on page 133 states:

Hamer commissioned DiMarzio to product humbuckers to its own specs. These almost always came with a cream bobbin on the bridge pickup and a zebra (cream/black) bobbin on the neck pickup. These were used on virtually all two-humbucker Hamers up to ’82. Single-coil pickups used on the Prototypes were also DiMarzios. From ’82 until the early ‘90s Hamer used “Hamer Slammers” – black-bobbined humbuckers with “Hamer” stamped on the bottom plate. These, too, were made by DiMarzio.



It is clear that the article refers to applicant’s goods by the name DiMarzio and that the color scheme (cream/black or cream or black) merely describes the color that these goods came in but does not indicate that the color cream alone is a source-identifying trademark of applicant alone. The article about the Pandemonium Humbucker (Exhibit F, TSDR page 137) makes a reference to applicant’s “double cream bobbins” but this single reference is insufficient to show that the purchasing public has come to associate the color cream on pickups with applicant alone or that the color is applicant’s signature color. In Exhibit G, TSDR page 147, the Ace Frehley page includes text highlighting the “Trademark Ace headstock inlay” but the reference to applicant’s goods focuses on the design rather than the color: “Three custom-wound DiMarzio double-cream humbucking pickups.” The “look for” reference focuses on the custom winding or the configuration while the color is merely mentioned in passing, just as it is with the “matched flamed maple top” and “cherry sunburst finish”. The only references to cream in applicant’s advertising are informational, not source-identifying, while other pages do not mention cream color at all.

No Substantial Exclusivity of Use

The Examining Attorney's evidence showed that applicant's use of the cream color on guitar pickups is not substantially exclusive.[5] Put another way, third party use of the same color on the same goods calls into question the ability of the color to identify a single source.

The evidence attached to the September 13, 2018 Office Action demonstrated that several other pickup manufactures offer cream pickups.

https://www.kieselguitars.com/products/C22B-1

Upgrade your pickups coils to cream.



https://www.sweetwater.com/store/detail/Lil78C--seymour-duncan-custom-shop-little-78-humbucking-strat-pickup-cream?mrkgcl=28&mrkgadid=3248788027&rkg_id=0&product_id=Lil78C&campaigntype=shopping&campaign=aaShopping - Core - Guitars&adgroup=Guitars - Guitar Accessories&placement=google&adpos=1o3&creative=226299461162&device=c&matchtype=&network=g&gclid=EAIaIQobChMIzt3259613QIV0pCfCh09GAMNEAkYAyABEgJEIfD_BwE

Seymour Duncan Custom Shop Little '78 Humbucking Strat Pickup – Cream



https://www.ebay.com/i/271294725574?chn=ps

Dragonfire Crusader Humbucker Pickup Set- Invader Type- Bridge & Neck- Cream!



https://reverb.com/item/3243869-guitar-madness-g-m-hot-shred-platinum-bridge-pickup-cream?gclid=EAIaIQobChMI252Xlt-13QIVBkSGCh1kqgXREAkYEyABEgLL7PD_BwE&gclsrc=aw.ds&pla=1

Guitar Madness G.M. Hot Shred Platinum Bridge Pickup Cream



https://reverb.com/item/13000410-yamaha-sg-200-vintage-cream-humbucker-1970-s-80-s?gclid=EAIaIQobChMI252Xlt-13QIVBkSGCh1kqgXREAkYISABEgKBcPD_BwE&gclsrc=aw.ds&pla=1

Yamaha SG-200 Vintage Cream Humbucker 1970’s/80’s



https://www.kieselguitars.com/group/classic-humbucker-pickups

Kiesel Guitars humbuckers are available in cream or black, as well as cream/black zebra, and with cream or black bezels.



https://www.amazon.com/Yibuy-Single-Magnetic-Humbucker-Electric/dp/B072FRHXCT

Yibuy 48/50/52mm Cream Color Four Wire Single Coil Magnetic Pickup to Humbucker for Electric Guitar Set of 3



https://www.guitarfetish.com/KP--Cream-Neodymium-Single-Pickup-True-Vintage-Sparkle--Kwikplug-Ready_p_23255.html

KP - Cream Neodymium Single Pickup- True Vintage Sparkle - Kwikplug™ Ready



https://www.guitarcenter.com/Bill-Lawrence/L500XL-Hot-Humbucker-Electric-Guitar-Pickup-Cream-1274115065204.gc?cntry=us&source=4WWRWXGP&adlclid=ADL-e330b904-0c87-4d00-97d5-c32108317621&kwid=produc[email protected]ADL4GC-adTypePLA

Bill Lawrence L500XL Hot Humbucker Electric Guitar Pickup Cream



https://guitar-compare.com/wp-content/uploads/2017/11/1979_Ibanez_Leaflet_Cimar.pdf

The cream-colored coils are wound for very high output and the high power ferrite magnet and adjustable polepieces assure you of brightness and balance.



This evidence contradicts applicant’s claim that the color cream has come to identify a single source of guitar pickups. See Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 1403, 222 USPQ 939, 940-41 (Fed. Cir. 1984) (“When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking under such circumstances.”); TMEP §1212.05(b).

The evidence attached to the March 27, 2019 Office Action further demonstrated that applicant does not have exclusive use of the color cream on pickups. The Examining Attorney attached evidence of ten other instances of cream colored guitar pickups sold by third parties.

https://www.amazon.com/Seymour-Duncan-SP90-1B-Guitar-Pickup/dp/B0002F5206

The original P-90 has been Gibson's most popular single-coil pickup since its creation in 1937. Now Duncan has re-created every vintage detail of this classic, including the original's gutsy sound. Creme color.



https://reverb.com/item/9782-seymour-duncan-custom-double-cream-double-cream

Duncan Custom Double Cream Pickup in good working shape

Brand: Seymour Duncan



https://www.ginoguitars.com/en/ox4-pickups-handwound-paf-humbucker-set-aged-cr-p-293.html

OX4 Pickups Handwound PAF Humbucker Set Aged Double Cream



https://www.themusiczoo.com/products/bare-knuckle-black-dog-bridge-humbucker-pickup-double-cream

Bare Knuckle Black Dog Bridge Humbucker Pickup (Double Cream)



https://www.mylespaul.com/threads/fs-corsa-manalishi-peter-green-humbucker-neck-pickup-double-cream-oop.405916/

This is an early Larry Corsa Manalishi PAF style humbucker neck pickup. This pickup was hand made and built to replicate the tone of Peter Green. As such, it is wound out-of-phase to achieve the honking, nasal style tone in the in-between position on a Les Paul as heard on the early Fleetwood Mac albums. It has double cream bobbins, braided single conductor leads and is lightly aged / relic'd.



https://www.guitarfetish.com/Humbucker-Equipped-HSS-Guard-Vintage-Cream-3-Ply-White-Pickguard_p_1922.html

What's sexier on a white, black or sunburst Strat® than vintage "Aged Cream" pickups on a classic 3-ply white pickguard?



https://www.wizz-pickups.net/product-page/wizz-premium-clone-paf-pickup-set-new

Cellulose acetate butyrate bobbins in light cream color (matched to unopened 1959 double cream P.A.F. pickups)



https://www.traditionguitars.com/Parts.html

Tradition PAF humbuckers - $60.00 Each or $100 Set. Available in covered nickel, gold, satin nickel and uncovered double black, double cream and Zebra.



http://www.celentanopickups.com/humbuckers/

authentic butyrate bobbins reproduction of an old 50’s PAF49.2mm <=> 1.94″ available in : Double black , double cream , zebra & reverse feel and smell like the original.



https://www.guitarplayer.com/gear/geppetto-guitars-introduces-the-camelot-humbucker

Geppetto Guitars introduces its new humbucker pickup, The Camelot, a vintage-style, scatterwound, humbucking pickup. …Camelot’s are available with a nickel cover, aged-nickel cover or uncovered in either double black, double cream, zebra or reverse zebra.



https://reverb.com/item/19605022-gibson-dirty-fingers-double-cream-coil-tap-humbucking-pickup-1970-s-80-s

Double cream coils

Brand: Gibson

Model: Dirty Fingers double CREAM coil tap humbucking pickup

Finish: Cream



https://aws2.gibson.com/News-Lifestyle/Features/en-us/Bucking-the-Hum-and-Making-His.aspx

In addition to these constructional variables, another purely cosmetic variable has sent many collectors in search of the rare and ultra-rare examples: when Gibson ran short of black plastic coil formers, or “bobbins,” it bought in cream stock, so double-cream and black-and-cream PAFs—dubbed “zebra stripes”—can also be found beneath some pickups’ metal covers.



https://www.pafhumbucker.com/paf-pickups-bobbins.html

The two Butyrate plastic bobbins in each P.A.F. humbucking electric guitar pickup are unique in both cosmetics, material and dimensions to the vintage P.A.F. pickup. Although not originally intended as a cosmetic feature, the look of the P.A.F. bobbin has become a important detail in authenticating a vintage P.A.F.. The color has even affected the price of vintage P.A.F. pickups, with Double Cream P.A.F. pickup fetching the highest price on the vintage market due to scarcity and association with famous players.



Because many parties offer cream colored pickups, the mark does not appear to be distinctive of the goods.

Although each of applicant’s nearly 300 pages of attachments were carefully reviewed and did show evidence of applicant’s use of the color cream (as well as cream and black) on its goods, the evidence of record does not support the finding that applicant’s use of the color cream on pickups is unique, or that applicant promoted the color alone as a source-identifier, or that consumers immediately recognize cream colored pickups as originating from applicant alone. In other words, applicant may have used the color for a significant time, but this length of use is largely irrelevant because many other parties offered the same type of goods using the same color on the goods. This is not an argument-driven issue but a fact-based one.

Applicant has not shown any success in educating the consuming public to associate the proposed mark (the color cream on its own with no other wording, design, or configuration) with a single source (applicant). Applicant’s evidence shows no consumer recognition of applicant as the exclusive provider of cream colored pickups and, in fact, the evidence of record demonstrates that applicant is not the exclusive provider of cream colored pickups. Based on the fact that third parties commonly use the applied-for color on their pickups, applicant logically and factually cannot claim exclusive use. Again, the key consideration here is that applicant’s use of the color on its pickups is not substantially exclusive and applicant’s evidence is insufficient to show secondary meaning or acquired distinctiveness.

Applicant claims that “the correct issue is whether the Applicant has exclusively been using the Mark on exposed double coil pickups” (March 12, 2019 Response), but the identification of goods confirms that applicant’s goods are “Electronic sound pickup for guitars” not “Electronic double coil sound pickup for guitars”. Applicant’s various objections and distinctions between 12-pole piece pickup configurations and rail configurations and single coil designs are irrelevant when (1) this application is for a color mark not a configuration mark and (2) applicant has applied for the mark as used on all types of electronic sound pickups for guitars regardless of configuration. A color mark must be shown to have acquired source-indicating significance in the minds of consumers on the applied for goods which, here, encompass all electronic sound pickup for guitars such as those featured in the evidence of record.

Guitar components in cream colors are sought after by guitar owners attempting to match other cream colored guitar components. As the evidence of record confirms, several third party manufacturers offer guitar pickups in a variety of colors in order to allow guitar owners to select pickups that match the guitar and its components. Applicant itself offers cream or black, as well as cream/black zebra color, all green, all pink, all yellow, all purple, etc. pickups. See applicant’s website attached to the September 13, 2018 Office Action. The cream color is not identified on applicant’s website as a source identifying color but rather just one of many colors that applicant offers its pickups in. The March 27, 2019 Office Action discussed additional websites demonstrating that pickups are offered in cream colors by parties other than applicant (including discussions that the cream color is for purposes of matching the guitar color or vintage look). See March 27, 2019 Office Action for detailed URLs and relevant text. These websites show that many parties offer cream colored pickups and that the color mark applied for here does not appear to be distinctive of the goods through applicant’s “substantially exclusive and continuous use of the mark in commerce”. Applicant’s evidence only shows that applicant used the color cream (sometimes alone, sometimes in combination with other colors) but does not show that applicant ever promoted the color or attempted to associate the color as a trademark pointing to applicant exclusively. Although applicant appears to have used cream on its pickups for a lengthy time, the evidence of record does not establish that applicant’s use is substantially exclusive or that relevant consumers associate that color in applicant alone as required by Trademark Act Section 2(f).

V. CONCLUSION

Applicant failed to establish that the purchasing public has come to view the proposed color mark as an indicator of origin in applicant alone or that applicant’s use is substantially exclusive. For the reasons specified above, the Trademark Act Sections 1, 2 and 45 Refusal and the finding that applicant's Trademark Act Section 2(f) claim was insufficient should be affirmed.



Respectfully submitted,





/Ms. Tasneem Hussain/

Trademark Examining Attorney

Law Office 118

[email protected] (preferred)

571.272.8273







Michael W. Baird

Managing Attorney

Law Office 118

571-272-9487

[email protected]
So...good news?
I am not well versed with law, especially that in the US.
 

WolfeMacleod

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So...good news?
I am not well versed with law, especially that in the US.
In regards to the recent attempt at registering cream with rails, yes. It also appears that it may slightly weaken the original Mark as well. It's really too bad that Flanders wasn't able to continue the challenge to that original Mark.

However,. perhaps the GREATEST thing lies here:
https://ttabvue.uspto.gov/ttabvue/v?pno=87213400&pty=EXA&eno=10

This is the whiny "Appeal Brief" top which the examineing attorney is responding to above.
The important part lies on Page 9, in Dimarzio's rebuttals to the examiner's denials to register. The guitarplayer.com article was an example that the examiner brought up. The bold below is Dimarzio's reply to that example... play close attention.
It appears they are admitting that cream humbuckers with covers installes is not a violation of the original ('205) mark.

humbucker
Geppetto products are sold with covers on the pickups, thus there can be no confusion
between a metal cover and Applicant’s Mark (or the ‘205 Mark). The color of the

bobbins beneath the metal cover, which is soldered directly to the baseplate, do not act as
a trademark, as they are not visible. Despite this, Applicant is not claiming the exclusive
use of the color cream on pickups – Applicant’s Mark is claiming the exclusive use of the
color cream in the dual-coil wide- rail configuration. Thus, this listing is irrelevant to
Applicant’s Mark.
 
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