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Headstock trademarks - keeping out of trouble?


BeeTL

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I'm curious to know if anyone has links to stories of small bass or guitar builders being pursued by FMIC for trademark infringement.

 

As I understand it, Warmoth and Allparts necks with Fender headstocks are intended only for installation on Fender bodies, and may not have a Fender decal applied.

 

It seems to be generally accepted by small builders to be OK to add a "custom" logo to a Fender style neck on a "partscaster", although it is technically NOT OK per Warmoth's licensing agreement if you actually read it.

 

USACG makes unlicensed necks that can easily sanded to mimic a Fender profile and seems to be getting away with it, and some small builders are using modified USACG necks on partscasters that are being resold.

 

So, assuming that slapping a logo on a "licensed" neck is a no-no, how would one go about validating whether a headstock design did not violate Fender's (or any other) trademark?

 

Make a few thousand necks and wait for the subpoena?

 

:idk:

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This (surprisingly) is the first I've heard of Bill Nash.

 

I have to say that I'm impressed with what he's accomplished.

 

He has some very interesting things to say on trademarks and relics here.

 

It's interesting in that he has really carved a unique niche as a "no brand" brand.

 

:cool:

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This (surprisingly) is the first I've heard of Bill Nash.


I have to say that I'm impressed with what he's accomplished.


He has some very interesting things to say on trademarks and relics
here
.


It's interesting in that he has really carved a unique niche as a "no brand" brand.


:cool:

 

It is. Relic haters would still play his stuff many times. It's rather odd that. I love them personally, did a good job on my Hwy 1 if I may say.

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So, assuming that slapping a logo on a "licensed" neck is a no-no, how would one go about validating whether a headstock design did not violate Fender's (or any other) trademark?


Make a few thousand necks and wait for the subpoena?


:idk:

 

Use a logo that is not confusingly similar such that a purchaser might confuse the bass as being made by Fender.

 

Manufacture's often get official clearance from the FMIC legal department that a given design is acceptable to both parties. This prevents FMIC from changing their mind after sales pick up a bit.

 

Also remember, that if you aren't using the bass in commerce in a way that the source identifier is likely to cause confusion, there is no real issue.

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No links, but I've read actual documents.


Use a logo that is not confusingly similar such that a purchaser might confuse the bass as being made by Fender.


Manufacture's often get official clearance from the FMIC legal department that a given design is acceptable to both parties. This prevents FMIC from changing their mind after sales pick up a bit.


Also remember, that if you aren't using the bass in commerce in a way that the source identifier is likely to cause confusion, there is no real issue.

 

You make a valid point (don't you always?) in that the direct route is often the easiest, and to be clear, I think I'm asking two questions:

 

Q1. Can I put MY logo on a Fender licensed headstock (Warmoth/Allparts) and resell it under my "brand"?

A1. Ask the FMIC legal department.

 

Q2. Can I develop a 6 inline headstock design that has a similar "feel" without infringing the FMIC trademark?

A2. ???

 

It's interesting to me that the G&L "lawsuit" headstock didn't survive, but SX and USACG seem to operate with impunity.

 

Also, I can't imagine that one of my guitars (if there are more than one) would be confused as an FMIC product.

 

That said, if I sold on eBay, it would be tempting to use phrases like "Fender Licensed Neck" and "Fender Original Vintage Pickups", etc. in the description.

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You make a valid point (don't you always?) in that the direct route is often the easiest, and to be clear, I think I'm asking two questions:


Q1. Can I put MY logo on a Fender licensed headstock (Warmoth/Allparts) and resell it under my "brand"?

A1. Ask the FMIC legal department.


Q2. Can I develop a 6 inline headstock design that has a similar "feel" without infringing the FMIC trademark?

A2. ???


It's interesting to me that the G&L "lawsuit" headstock didn't survive, but SX and USACG seem to operate with impunity.


Also, I can't imagine that one of my guitars (if there are more than one) would be confused as an FMIC product.


That said, if I sold on eBay, it would be tempting to use phrases like "Fender Licensed Neck" and "Fender Original Vintage Pickups", etc. in the description.

 

 

1. Are you aware of the currently pending litigation between FMIC and Lakland/Sadowsky/Lull/etc?

 

2. You are asking some specific questions that would require legal opinion/advice. For obvious reasons, I can't help you there unless we have an attorney-client relationship.

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1. Are you aware of the currently pending litigation between FMIC and Lakland/Sadowsky/Lull/etc?


2. You are asking some specific questions that would require legal opinion/advice. For obvious reasons, I can't help you there unless we have an attorney-client relationship.

 

1. No, I was not aware of that.

 

2. At some point that may be worth looking into...

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The USACG headstock is different enough they can't be sued.. But yes, I personally know someone who was selling unfinished guitar necks that had a Strat or Tele headstock (no labelling on them though) and yes, Fender's lawyers told him to stop.. The fender headstock SHAPE is trademarked.

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1. Are you aware of the currently pending litigation between FMIC and Lakland/Sadowsky/Lull/etc?


2. You are asking some specific questions that would require legal opinion/advice. For obvious reasons, I can't help you there unless we have an attorney-client relationship.

 

I was wondering when you were going to weigh in on this given your conversation with Dan this summer.:thu:

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Well...Google has yielded some interesting information on the state of the union as it relates to Fender headstocks and possibly even body shapes.

 

It will be interesting to see how things shake out, for sure.

 

In the mean time, I'll proceed cautiously and may ultimately decide to go in a different direction, style-wise.

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Weird tangent...did/does Fender own/maintain a trademark on T/S/P/J pickup styles, as well as all the other bits like neck plates and control covers?

 

It would be very interesting if Fender began enforcing those trademarks if they haven't been after all these years...

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Weird tangent...did/does Fender own/maintain a trademark on T/S/P/J pickup styles, as well as all the other bits like neck plates and control covers?


It would be very interesting if Fender began enforcing those trademarks if they haven't been after all these years...

 

 

That would blow

 

Why is it that after authors die, their work can be recreated by another author and sold under his/her name without repercussion.

IMO, since Leo is dead, all his creations should be free game for improvements and changes to be made.

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Good summary Paul.


Re the body shapes, to be a bit more accurate, I'd say the body shape trademarks were never registered with the USPTO. They actually had what is called a "common law" trademark based on first use and continued commerce of the shapes. Since then, FMIC has applied for registration of the shapes with the USPTO and that registration was opposed by a group of 18 other builders and component manufacturers. (The USPTO registration was actually granted, then revoked a total of 3 times by accident since it was under opposition.) All the depositions have been completed, all paperwork submitted, and the oral presentations completed earlier this month. The final decision is now pending.


FWIW, this is very similar to the way Gibson trademarked the LP shape....it was done about 30 years after first use.

 

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