Before 2017

"Bo Diddley" Rectangular Guitar Body Design the Subject of Trade Dress Case Against Maker of Child-Oriented Guitars

Classic rock fans may readily associate the name Gretsch with the late George Harrison’s Beatlemania-era “Duo Jet” electric guitar, a design reproduced as a limited-edition controller for The Beatles: Rock Band video game.  However, it is another Gretsch guitar design, associated with an even earlier rock pioneer, that is the subject of a new lawsuit filed in the U.S. District Court for the Southern District of Georgia.

On October 24, 2012, Fred W. Gretsch Enterprises, Ltd. (“Gretsch”), based in Pooler, Georgia, sued New York-based Loog Guitars LLC (“Loog”) in the Savannah Division, regarding claimed rights to a rectangular guitar body. 

Embodied in at least its G5810 Bo Diddley model, Gretsch’s registered rectangular guitar design is shown below.  U.S. Trademark Registration No. 2,357,459 (“the ‘459 Registration”) states that “the dotted lines are not a feature of the mark, but serve to indicate the position of the mark.”  Yet the “delineation,” if you will, between what is dotted and what is solid is somewhat unclear if one looks only at the drawing in the ‘459 Registration (below left).  An examination of the drawing that Gretsch submitted with its trademark registration application (below right) more clearly distinguishes between the dotted and solid lines of Gretsch’s guitar body design.  The ‘459 Registration does state that “the mark consists of a rectangular configuration of a guitar body.”

Drawing in Gretsch’s ‘459 Registration (left) shown beside drawing in trademark registration application (right).

Discussing its design, Gretsch states: “Beginning in 1958, the Gretsch company supplied a rectangular Gretsch guitar to rock legend Bo Diddley, who famously used that guitar in his subsequent public performances.”  Gretsch further alleges: “In 1999, Gretsch reintroduced the classic Gretsch rectangular guitar, which has been continuously sold to the public since that time.”  The ‘459 Registration issued on June 13, 2000 and identifies Gretsch as the registrant.  “The Rectangular Guitar Trade Dress,” alleges Gretsch, has become widely known in the guitar industry, and the purchasing public has come to recognize its distinctive shape as an indicator of a Gretsch guitar.”

The accused Loog I guitar, as shown an Loog’s website, is depicted below.

Loog I guitar

The Loog I is a 3-string acoustic guitar that, according to Loog’s website, “makes it fun and easy for kids to play music.”  The guitars are shipped in unassembled form pursuant to the website’s stated philosophy that “[b]uilding a guitar is an essential part of understanding and loving the instrument.  When you build your own guitar you develop a deep connection with it, and that is why the Loog guitar ships unassembled for parents and children to build at home.”  Further explaining its product in its “About Us” section of its website, Loog states:

The Loog Guitar started as an academic project in 2010 when Rafael Atijas developed the concept as his Master’s thesis at New York University. The fact that The Loog Guitar was conceived in a university actually explains a lot about the company’s culture: our main goal is not to make the most profit, but to offer a product that is unique and well-designed.
Gretsch alleges that the Loog I model guitar is “confusingly similar to and infringes the Rectangular Guitar Trade Dress,” that it had written letters demanding that Loog stop using the shape shown, and that Loog refused Gretsch’s demands.
Gretsch’s complaint asserts counts of trademark infringement and false designation of origin under the Lanham Act, common law trademark infringement, and violation of the Georgia Uniform Deceptive Trade Practices Act.  Adding the allegation that Loog’s acts “are likely to dilute the distinctive quality of Gretsch’s Rectangular Guitar Trade Dress and injure Gretsch’s reputation,” the complaint also asserts a count for trademark dilution under Georgia law, O.C.G.A. § 10-1-451(b).  “Georgia dilution law neither requires a trademark to be famous nor demand the parties to be in competition. . . . Although fame is not a prerequisite to recovery, the mark must be ‘distinctive.’  To be considered distinctive, the mark must be at least descriptive with a secondary meaning.”[1]
The case is Fred W. Gretsch Enterprises, Ltd. v. Loog Guitars LLC, No. 4:12-cv-0264-WTM-GRS, filed 10/24/12 in the U.S. District Court for the Southern District of Georgia, Savannah Division, assigned to U.S. District Judge William T. Moore, Jr.
Note:  This marks the second trademark lawsuit filed in the Southern District in a little over a month.  Regent University filed a trademark action there on September 20.

[1] Corbitt Mfg. Co., Inc. v. GSO Am., Inc., 197 F.Supp.2d 1368, 1379 (S.D. Ga. 2002).

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