Initial-Interest-Confusion Doctrine Does Not Apply to Trademark on Guitar's Shape

Case: Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, Nos. 04-5836/5837 (6th Cir. 9/12/05)

The One Sentence Summary: The court of appeals reversed the district court's decision granting summary judgment in favor of plaintiff Gibson Guitar and remanded with instructions that summary judgment be entered in favor of defendant Paul Reed Smith Guitars ("PRS") on Gibson's trademark infringement claim because: (1) the district court confused trademark law and trade dress law when it held that Gibson's two-dimensional guitar shape set out in trademark registration papers covered other features of Gibson's Les Paul guitar, and (2) PRS's guitar did not infringe Gibson's trademarked guitar shape since there was no point-of-sale confusion and the initial-interest confusion-doctrine did not apply.


What They Were Fighting About: Gibson's trademark covered the shape of a single-cutaway electric guitar. PRS manufactured a competing single-cutaway electric guitar, which Gibson sought to enjoin as infringing upon its guitar-shape trademark.

Federal Circuit Holdings:

• As to the scope of Gibson's trademark, the court of appeals concluded that the two-dimensional trademark-application drawing of the guitar's body shape did not create a trademark on the entire guitar as depicted in photographs accompanying the application (including the location and style of knobs, switches, and other product features). The district court improperly extended the guitar shape trademark to cover other aspects or design features that would normally qualify as trade dress (which claims the parties had voluntarily dismissed).
• Gibson's claim failed the "evidence of actual confusion" prong of the trademark infringement test for likelihood of confusion among consumers regarding the source of the product. Gibson conceded that there was no point-of-sale confusion because purchasers of the parties' expensive guitars are sophisticated and the guitars are marked with logos and display tags at the point of sale.
• The district court erroneously applied a theory of initial-interest confusion in finding there was trademark infringement. Distinguishing disputes where a misleading Internet domain name can misdirect consumers searching for the trademark owner's web site, the court of appeals found the initial-interest-confusion doctrine to be unsuitable to a trademark on a product's shape.
• The court of appeals rejected Gibson's argument that the shape of PRS's guitar misleads consumers standing on the other side of the room in a guitar store to believe they see Gibson guitars and walk over to examine what are PRS guitars. The Sixth Circuit refused to adopt such a broad reading of the initial-interest-confusion doctrine for product shape trademarks, because competitors would be deterred from making even dissimilar products that might appear from a distance to be similar to a trademarked shape. Applying the initial-interest-confusion doctrine to product shapes might have the undesirable effect of giving trademark protection not just to the trademarked shape but also a "penumbra" of similar shapes not otherwise protectable as trademarks.