The Battle of Guitars Continues As Gibson’s Jury Verdict Takes a Hit

Trademarks must be distinctive to warrant protection, and the mark must identify the source of the product in the minds of consumers. Popular trademarks that become widely used to identify a product itself, rather than the source of the product, may be deemed as too generic to be protected.  A Texas federal court recently addressed what evidence may be submitted in support of a claim that a trademark has become too generic. The shape of a guitar is at issue in Gibson, Inc. v. Armadillo Distribution Enterprises, Inc., and the most recent decision held that evidence related to use by companies who were not parties to the lawsuit should be admissible. 

Gibson Claims Trademark Infringement and Prevails

In 2019, Gibson Guitars sued guitar manufacturer Armadillo Distribution Enterprises for trademark infringement, alleging that Armadillo’s Dean V and Dean Z guitars infringed several of Gibson’s trademarks, including the Flying V Body Shape, the ES Body Shape, and the Dove Wing Headstock Shape. Gibson sought monetary damages and an injunction that would bar Armadillo from manufacturing guitars in these shapes. At trial, Gibson was awarded an injunction which prohibited Armadillo from selling certain models.  

Whether A Guitar Shape is Generic Takes Center Stage

Armadillo argued that Gibson’s trademarks should be cancelled because they are generic. At trial, Armadillo attempted to introduce evidence of third-party guitar sales prior to 1992 to prove that Gibson’s trademarks were not distinctive to Gibson in the minds of consumers. But the District Court excluded this evidence reasoning that the five-year cancellation statute of limitations governed how far back in time evidence should be considered and that Armadillo did not enter the market until 1997. Armadillo’s generic-mark defense failed at trial. 

Appellate Court Holds Earlier Use By Others Should Be Considered

On appeal, the Court of Appeals for the Fifth Circuit held the District Court abused its discretion by rejecting the evidence wholesale based on a time limitation. The jury was deprived of the complete picture by the broad exclusion of evidence of others’ use of the shapes going back well before Armadillo’s entry into the market, according to the appellate court. The panel ordered a new trial where the trial court must re-weigh the evidence’s contribution to the case and potentially permit this evidence to be presented in front of a jury.

So, Gibson and Armadillo will head back to trial. It may be that the trial court will consider the evidence of others’ use of the guitar shapes and still exclude it, or the trial court may let the jury hear the evidence. 

Takeaways

Third-party use is always a consideration when deciding whether a trademark is generic. The Gibson appellate decision opens the possibility that the third-party use evidence may reach further back in time than previous decisions have held. 

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