Rabs Posted December 16, 2023 Share Posted December 16, 2023 Gibson files to cancel DiMarzio’s PAF and Double Cream pickup trademarks (guitar.com) Gibson files to cancel DiMarzio’s PAF and Double Cream pickup trademarks The brand is arguing that the marks have become generic after years of use across the industry. Gibson has filed a legal request to cancel two of DiMarzio’s pickup trademarks: the term “PAF”, and the ‘Double Cream’ design of an uncovered humbucker with two cream-coloured bobbins. How did we get here? “P.A.F.” – or patent applied for – pickups are associated with Gibson guitars dating back to the 1950s. So how did DiMarzio come by the “PAF” trademark? While the “patent applied for” sticker was found on Gibson’s humbuckers until 1962, these originals weren’t marketed as P.A.F.s, or PAFs. Or really, marketed at all: the idea of selling a pickup by itself as an aftermarket upgrade wasn’t really established until the 1970s, when Larry DiMarzio expanded his business from a few mail-orders to a widely-distributed brand with celebrity endorsements and magazine adverts. In 1978, DiMarzio (the company) was granted a trademark for the colloquial shortening “PAF” in reference to an “electronic sound transducer for picking up the sounds of a guitar in a sound amplification system.” In non-legalese: a pickup. The trademark claims a first use in commerce of 1976, implying that the “patent applied for” stickers on the back of already-fitted humbuckers were, at the time and in the eyes of the trademark office, legally distinct from DiMarzio’s early aftermarket units aiming to replicate that sound. DiMarzio’s double cream trademark isn’t a wordmark. Instead, it covers the “double design” of a pickup (IE, an open humbucker), with both bobbins being “the colour yellow which resembles the distinctive shade of cream.” This trademark was granted in 1981 with its first use in commerce listed as 1974. The earliest DiMarzio pickup, the Super Distortion, was sold in the open-bobbin, double-cream format. But while the mark was granted, the Super Distortion wasn’t the very first double cream pickup in the world: depending on the brand’s supply of bobbins at the time, uncovered Gibson pickups came in a mix of black, black and cream (or ‘zebra’) and double cream. But, again, DiMarzio being granted the mark implies that the trademark office did not see a conflict there. Gibson’s case Gibson’s cancellation case claims that both the PAF and Double Cream marks owned by DiMarzio no longer apply. It makes the following main arguments: Gibson takes priority over DiMarzio for both marks, because it was selling guitars with double-cream humbuckers and using “patent applied for”/PAF before DiMarzio was even founded. When DiMarzio filed for the trademarks, it didn’t own the double-cream design or the phrase “patent applied for”/PAF. Because many other brands (Gibson included) have marketed both double-cream humbuckers and “PAF”-style humbuckers in the years since, the design and the wordmark are now both “generic” – and therefore not trademarkable. Gibson’s case cites a huge variety of brands, from budget makers selling on Amazon to Wilkinson to Seymour Duncan. Cream is a common colour for guitar plastics (pickguards, switch tips etc). Guitarists modifying an instrument will want all of their guitar’s plastics – including both humbucker bobbins – to match. Therefore, the design for the “double cream” pickup is “functional”, and therefore not trademarkable. The “PAF” mark is “deceptively misdirective”, in that, because the guitar industry associates the “patent applied for”/PAF pickups with Gibson, DiMarzio’s trademark is deceiving buyers into thinking Gibson has sanctioned its products in some way. At the time of the filings, DiMarzio was aware that Gibson was the owner of double-cream design and the PAF term in relation to pickups. Therefore it committed fraud on US the trademark office when it filed for the two trademarks. Gibson’s case was filed late last month, and accepted as a case on 4 December. DiMarzio is yet to file a reply, but has until 13 January next year to do so. Gibson declined to comment on the filing when approached by Guitar.com for comment. DiMarzio offered the following statement in regards to the case: “The DiMarzio double cream bobbin trademark has been recognised by guitar consumers for almost half a century, that specific pickups with our distinctive color emanate from DiMarzio and we are proud that millions of these pickups have been sold, and that all have been made in the US. “We are also proud that so many guitar companies have chosen to install our double cream bobbin pickups in their instruments. Musicians know that when they see that DiMarzio color trademark embodied on our pickups that they are looking at a pickup that they can count on for quality and great tone. We have always vigorously defended our trademarks and will continue to do so.” If Gibson is successful and DiMarzio’s marks are cancelled, it seems unlikely that Gibson will file for equivalent trademarks of its own – mainly because it is already arguing that the marks are generic. If this argument is successful, it would complicate any application to trademark the same things. In any case, the stage is set for another legal battle for Gibson. Quote Link to comment Share on other sites More sharing options...
ksdaddy Posted December 16, 2023 Share Posted December 16, 2023 “The brand is arguing that the marks have become generic after years of use across the industry.” Ya mean like a single cutaway design? 3 Quote Link to comment Share on other sites More sharing options...
rct Posted December 16, 2023 Share Posted December 16, 2023 Oh the irony. rct Quote Link to comment Share on other sites More sharing options...
jvi Posted December 16, 2023 Share Posted December 16, 2023 hope they dont increase prices to cover legal fee's (joke ) foolishness ....no joke. Quote Link to comment Share on other sites More sharing options...
Pinch Posted December 16, 2023 Share Posted December 16, 2023 "If Gibson is successful and DiMarzio’s marks are cancelled, it seems unlikely that Gibson will file for equivalent trademarks of its own – mainly because it is already arguing that the marks are generic." 😆 Quote Link to comment Share on other sites More sharing options...
sparquelito Posted December 16, 2023 Share Posted December 16, 2023 As long as they don't call them "pups", I'm okay with it. 😐 Quote Link to comment Share on other sites More sharing options...
Murph Posted December 16, 2023 Share Posted December 16, 2023 Gibson wins this. Quote Link to comment Share on other sites More sharing options...
10PoundLester Posted December 16, 2023 Share Posted December 16, 2023 They got nothing better to do? Quote Link to comment Share on other sites More sharing options...
Murph Posted December 16, 2023 Share Posted December 16, 2023 (edited) 9 minutes ago, 10PoundLester said: They got nothing better to do? They invented the paf's and the cream pickups. DiMarzio copied both. Edited December 16, 2023 by Murph Quote Link to comment Share on other sites More sharing options...
saturn Posted December 16, 2023 Share Posted December 16, 2023 Was the term "patent applied for" in common use on other products before Gibson used it on their pups? (just for you Sparky ) 1 Quote Link to comment Share on other sites More sharing options...
Sgt. Pepper Posted December 16, 2023 Share Posted December 16, 2023 None of my guitars have pups so … 1 Quote Link to comment Share on other sites More sharing options...
Pinch Posted December 16, 2023 Share Posted December 16, 2023 Next they'll go after Cream Puffs. Quote Link to comment Share on other sites More sharing options...
10PoundLester Posted December 16, 2023 Share Posted December 16, 2023 3 hours ago, Murph said: They invented the paf's and the cream pickups. DiMarzio copied both. But did they refer to the pickups as "PAF's" and the bobbins as "Double Cream" back then? To me, this is like that a-hole who owns Monster Cables. He tried suing the Boston Red Sox for calling their wall the "Green Monster" because it had the word "Monster" in it. I believe he also went after other companies who used the word "Monster". Quote Link to comment Share on other sites More sharing options...
ksdaddy Posted December 16, 2023 Share Posted December 16, 2023 Or when Prince sued the pasta company. 1 Quote Link to comment Share on other sites More sharing options...
Narwhal6 Posted December 17, 2023 Share Posted December 17, 2023 Maybe there will be a COA now for the pickups as well as the guitar. Non players will be inundating the forums asking if their latest online purchase is authentic even more than they currently do. 😂 1 2 Quote Link to comment Share on other sites More sharing options...
10PoundLester Posted December 17, 2023 Share Posted December 17, 2023 10 hours ago, Narwhal6 said: Maybe there will be a COA now for the pickups as well as the guitar. Non players will be inundating the forums asking if their latest online purchase is authentic even more than they currently do. 😂 Yeah because I've always been confused when I see DiMarzio PAF's and wondered if they were actually Gibson pickups from the 50's and 60's. 1 Quote Link to comment Share on other sites More sharing options...
Recommended Posts
Join the conversation
You can post now and register later. If you have an account, sign in now to post with your account.