# Rickenbacker Sues Lollar Guitars for Trademark Infringement



## Tarbender (Apr 7, 2006)

Checking out some other sites and came upon this interesting story:

http://konschaklaw.wordpress.com/20...es-lollar-guitars-for-trademark-infringement/


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## Bubb (Jan 16, 2008)

Not surprising really.
Rickenbacker has been quite vigilant going after infringements and copies .


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## mhammer (Nov 30, 2007)

Well, they would probably need to go after Rick Turner as well: http://www.rickturnerguitars.com/model-t.php

I'll give Rickenbacker this, they have been consistently vigilant about trademark infringements over time; moreso than other "name" companies. After decades of neglect, Gibson's attempt to block the PRS Singlecut a couple years ago was laughable, and any attempt by Fender to protect the Stratocaster form at this point, would be similarly laughable.

I suppose one of the ironies is that the principal rationales for protecting trademark are:
a) you don't want anyone making an inferior product that consumers might _perceive_ as equivalent to yours detracting from your brand,
b) you don't want anyone making a product that could be easily confused with your own "stealing" some of your market.

Jason Lollar makes a quality product, and those folks who buy any sort of replica pickup from him expect that it will live up to the high standards of the original. As near as anyone can tell from, it generally does. And he certainly isn't making any attempt to undersell, so this is not exactly like Turser selling fake Ricks for $300 (which they did until Rickenbacker forced them to stop). I'm also not seeing any effort on Rickenbacker's part to market their pickups in the way that some other major and 2nd tier guitar manufacturers market their pickups. So I don't see damage to the brand, and I don't see market niche "invaded".

My guess is that the suit is largely a "message" to manufacturers that anything which remotely smacks of Rick-ishness WILL be aggressively litigated...whether it matters or not.

Jason does a lot of custom one-offs for people. I wonder if suits like this only address advertised product lines, or also cover custom work?


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## WolfeMacleod (May 16, 2013)

Registered just so I could make this comment. As a pickup maker myself, and seeing the way the industry is going with Trademark Bullies, I feel it's important for people to understand what I'm about to say. 

People don't seem to understand that this suit really does not have anything to do with the name "Horseshoe". At least, it didn't used to.
It has to do with the actual *design* of the pickup itself.

It is *exactly* akin to inventing the wheel and patenting it. Then when the patent expired, trademarking the round shape of the wheel. Since a wheel will not roll smoothly unless it is round, you use Trademark law prevent anyone else from making a round wheel, despite your previous patent being expired.

By Trademarking a three-dimensional design, John Hall is attempting to wrongly use _Trademark_ law to protect a _design_ who's patent expired decades ago.

For the last 14 years, I have researched Trademark law, specifically the TMEP Chapter 1200, hoping to get the Dimarzio Cream trademark nullified under Funcionality Doctrine. Functionality

Functionality Doctrine states that you cannot register an aspect of a mark that has a functional purpose.
Clearly, the design of the pickup, specifically the horseshoe magnetics in a Horseshoe-design pickup are *absolutely and purely functional.*

I'm familiar with Rickebacker's threats to Lollar, and it's not about the name or words "horseshoe" -- it's about the actual *design *of the pickup itself, which, as already pointed out, was protected by patent until it expired in the 19whenevers.

*I will absolutely and cheerfully back Lollar up on this if requested. I would travel, at my own expense,* to face John Hall in person and tell him what a douche he is.

*It is a flagrant abuse and violation of Functionality Doctrine.*


Rewinding a bit...
In 2005, Dimarzio attempted to register another trademark for a different color - this time, a mirrored or "chromed" bobbin. The registration was refused by the USPTO examiners, citing Functionality Doctrine because guitars have chromed hardware, pickguard, etc. Yes, aesthetics is a form of functionality.
because of this, it is my view that the trademark for Cream humbuckers should be nullified.




> 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).
> ...


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## mhammer (Nov 30, 2007)

Hi Wolfe, nice to see you here.

Mark


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## WolfeMacleod (May 16, 2013)

mhammer said:


> Hi Wolfe, nice to see you here.
> 
> Mark


 Heyyy Mark! Been a while!


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## Sugar (Jan 22, 2012)

My understanding has always been that this Rickenbacker President is an out of touch type of guy, that won't even add a Rick model (cept the 660, which is only a small step in that direction) to accommodate people that would play Ricks if some of the unpopular specs were changed.


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## Khorah (Apr 11, 2013)

I love Ric's. I hope he doesn't have to stop selling those pick ups though. I like what Lollar does and hate to see it when large corporations do this to little guys. If it wasn't for the tinkerers we would also be stuck with that stock sound. I want the better mouse trap!!! LEAVE EM ALONE RIC!


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## dcole (Oct 8, 2008)

WolfeMacleod, I would personally not call a person a "douche" when discussing topics like this or in general. Regardless of you legal stance on this issue, it shows bad character.

I can't imagine that Lollar would put Rickenbacker under by using this "trademarked" design. Leave the little guy alone. Maybe I should patent the use of legs for walking.


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## WolfeMacleod (May 16, 2013)

dcole said:


> WolfeMacleod, I would personally not call a person a "douche" when discussing topics like this or in general. Regardless of you legal stance on this issue, it shows bad character.
> 
> I can't imagine that Lollar would put Rickenbacker under by using this "trademarked" design. Leave the little guy alone. Maybe I should patent the use of legs for walking.


 Bad character or no, the misuse and abuse of lax intellectual property "law" by John Hall, to protect a long-expired patent, shows worse character, in my book. If the name fits, he should wear it.


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## dcole (Oct 8, 2008)

That is definitely bad character. Greed rules all.


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## Beach Bob (Sep 12, 2009)

Unfortunately, US patent law forces companies to vigorously pursue alleged infringement. Failure to do so can result in the patent being considered abandoned. I can't comment at all on the Lollar issue, but Rickenbacker has to pursue them, not necessarily to defeat Lollar, but to have a legal leg to stand on against other threats (i.e. cheap knock offs..). If Rickenbacker was seen to have ignored the Lollar "replicas", then anyone else would be in a position to argue that they had a right to make their own "replicas".

I hate patent bullies, and by and large patent law is used to stifle competition than it is to protect innovators from getting screwed over. But without it, there is no reason for anyone to spend time/money/effort on creating something new if it can be copied without protection.


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## Jimmy_D (Jul 4, 2009)

Looks pretty much like legal abuse... when even though you know you don't have the law on your side, and that there's a very high probability you'll loose the case and have to pay all expenses should a judgement be made, but you still proceed because you figure you're the one who's better positioned to pay legal bills, and that's it's a sound business strategy, a good investment.

The bloodsuckers, I mean lawyers, will probably be advising that a judgement won't be won etc, but we know they're only too happy to take the cash anyway and help someone without a case use the legal system to screw someone else over, because they're losing business to them, sweet.


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## Fiveway (Mar 21, 2010)

WolfeMacleod said:


> Registered just so I could make this comment. As a pickup maker myself, and seeing the way the industry is going with Trademark Bullies, I feel it's important for people to understand what I'm about to say.
> 
> People don't seem to understand that this suit really does not have anything to do with the name "Horseshoe". At least, it didn't used to.
> It has to do with the actual *design* of the pickup itself.
> ...


Thanks for the information. Very interesting. 

Rickenbacker have designs and they have a brand, and I get that they want to protect them, but trying to do a run-around once the patents have expired is desperation. Make new guitars. Make new Rickenbackers that belong here, now. Rebuild the brand by marketing around the amazing music that's been made on their instruments. Protect what you own, but don't make it your only business. 

To me, this smacks of a company run by lawyers, not one run by luthiers. Luthiers would just figure out how to make a better Rickenbacker. Fender and Gibson come up with new (often stupid) stuff all the time. Some of it sells, some of it doesn't, so they come up with new stuff. Rickenbacker comes up with new stuff, it doesn't sell, so they litigate.


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## Steadfastly (Nov 14, 2008)

Rickenbacker are making a mountain
 

our of a mole hill.


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## bobb (Jan 4, 2007)

I don't remember this kind of stink on the forums when Gibson went after a toy company for making paper guitars.

http://www.pcmag.com/article2/0,2817,2373499,00.asp


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## WolfeMacleod (May 16, 2013)

Beach Bob said:


> Unfortunately, US patent law forces companies to vigorously pursue alleged infringement. Failure to do so can result in the patent being considered abandoned. I can't comment at all on the Lollar issue, but Rickenbacker has to pursue them, not necessarily to defeat Lollar, but to have a legal leg to stand on against other threats (i.e. cheap knock offs..). If Rickenbacker was seen to have ignored the Lollar "replicas", then anyone else would be in a position to argue that they had a right to make their own "replicas".
> 
> I hate patent bullies, and by and large patent law is used to stifle competition than it is to protect innovators from getting screwed over. But without it, there is no reason for anyone to spend time/money/effort on creating something new if it can be copied without protection.


 Bob, you're not getting it.
The _Patent_ on the Horseshoe pickups expired _decades_ ago. About 50 years ago, give or take. This means that people should be free to make replicas and replacements of those designs.

Patents and Trademarks are two different things. Patents cover the _function_ of an object. In other words, patents cover aspects of an object that make it work. Trademarks do _not._
At it's very basic, Trademarks covers aspects of a product that identify the product, such as the brand name, model name. "Microsoft" is a trademark. "IBM" is a trademark. "Gibson" is a trademark. 

By abusing the _Trademark_ system, Rickenbacker applied for a Trademark for the horsehose pickups _themselves_. Not for the name, nor the brand. It was erroneously granted, most likely due to the intentional omission of the functional aspects of the pickup's design...such as the magnets. 
In effect, the trademark granted protection of the entire horseshoe _design itself._ Which is not supposed to happen. Ever.

If you read my earlier comment, it is exactly akin to trademarking a round shape for wheels, thus preventing anybody from making their wheel round.


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## 4345567 (Jun 26, 2008)

__________


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## WolfeMacleod (May 16, 2013)

nkjanssen said:


> They're not even alleging patent infringement, though. They seem to be trying to use trademark law to get around the fact that their patent is expired. Seems like a very Gibson-esque move. I didn't know Rickenbacker was like that. I'm glad I do now.
> 
> (oops.. I see Wolfe beat me to it)


 I'm glad you get it =)

Here is the Trademark in question.
*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.


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## sulphur (Jun 2, 2011)

Hey Wolfe, welcome!

Is this your site? I've heard talk about your pickups.

http://www.wolfetone.com/products.html#


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## WolfeMacleod (May 16, 2013)

sulphur said:


> Hey Wolfe, welcome!
> 
> Is this your site? I've heard talk about your pickups.
> 
> http://www.wolfetone.com/products.html#


 Yessir :wave:

Here's a thought. For a manufacturer to stand up and defend another competing manufacturer, something must be _very_ wrong. Do you think that Microsoft would love nothing more than to see Apple crash and burn? Probably. I doubt they would ever come to their aide. Or SD to see Dimarzio disappear? You bet. I sure would... that would be the end of the Cream humbucker trademark. 
What Rickenbacker has done is wrong, pure and simple.


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## 4345567 (Jun 26, 2008)

__________


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## sulphur (Jun 2, 2011)

If Lollar won the case, wouldn't Rickenbacker be responsible for their court costs?
After all, they initiated the case. I don't know how that works.


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## Guest (May 17, 2013)

Beach Bob said:


> Unfortunately, US patent law forces companies to vigorously pursue alleged infringement.


This not correct. Patents can be selectively enforced. I can choose to sue Company A and not Company B for patent infringement and I don't lose my patent.

Trademark and design marks _cannot_ be selectively enforced. I have to pursue all potential infringement or a risk losing my mark. Design and trade marks are usually easier to get issued because of this burden -- you have to really want it, because it's going to cost you money to keep it. They're issued a little more haphazardly as well because of this -- if the issuance was incorrect it'll get sorted out in a lawsuit in short order.

The patent for the horseshoe design expired, and the design passed in to the public domain, some time ago. So they claimed the _look_ of the pickup represented a unique design aesthetic they they owned. This happens all the time. Lollar can challenge the design mark based on the fact that the patent for this pickup represents the functional specification for how it look so a design mark cannot be issued. I'm not sure if a loss in this case would result in the loser having to pay damages and court fees for the winner -- might be the case. Worst case, he can counter sue once it's over.

The lawyers win big here, that's for sure!


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## cheezyridr (Jun 8, 2009)

sulphur said:


> If Lollar won the case, wouldn't Rickenbacker be responsible for their court costs?
> After all, they initiated the case. I don't know how that works.



that avatar is just as awesome as it gets.


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