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[JohnDodge]

Well, here' we go again. I've run across another trademark that is leading to an eternal patent.

 US Serial No: 78526361.  Take a look.
 Now let's take a look at a very old patent, serial number 2089171  from way back in the 1930's. You can see it here: http://www.pat2pdf.org/patents/pat2089171.pdf

 The main patent appears to be mostly for the guitar as a whole, but includes the object that was recently trademarked, complete with detailed drawings and explanations of the trademarked object. (Figure 2 and 9 in the patent docs)

 
 This design is wholly fuctional.  if you change any portion of it, it does not function as intended.  The large "left and right metal coverings" as described in the trademark docs are magnets that cause the design to operate. Without them, there is not operation as all. If you change the lower portion, it does not fit where it is supposed to.

How does this keep happening? How does the USPTO keep letting trademarks get passed through that are clearly in violation of the Functionality Doctrine as in TMEP Chaper 1200? And what can be done about it?
 Perhaps the USPTO should have examiners that are trained in specific fields?  

[JSonnabend]

John, I think the one thing you neglect to factor-in to your position is that trademark registrations don't confer trademark rights, they merely register trademark rights that exist.  If a product configuration is functional, it can't act as a trademark, and the registrant has nothing to protect.  See Traffix Devices, Inc. V. Marketingdisplays, Inc. 532 U.S. 23 (2001) .  So while there may be a registration, it may be little more than a paper tiger.

You complain bitterly about this stuff.  Are you really being damaged by these registrations?  If so, have you tried to do anything to help yourself?

Also, you say "The large "left and right metal coverings" as described in the trademark docs are magnets that cause the design to operate."  Does that mean that the overall shape of the magnets -- the whole pickup, really -- is required to provide certain functionality, or is the shape itself non-functional?

- Jeff

[JohnDodge]

Also, you say "The large "left and right metal coverings" as described in the trademark docs are magnets that cause the design to operate."  Does that mean that the overall shape of the magnets -- the whole pickup, really -- is required to provide certain functionality, or is the shape itself non-functional?

- Jeff

Jeff, yes...I am bitter. Although I myself was not damaged by this trademark, I do have a friend who was damaged quite badly by it. He specialized in pre-war replicas of this type of pickup.  And the magnet manufacturer went out of business entirely because he no longer had any customers to supply to.  If you look into the guitar industry, there is a thriving aftermarket industry for almost every brand of guitar except Rickenbacker - who attempts to block any aftermarket parts from being made.
 The shape of the magnets do cause a certain functionality. The horseshoe shape engulfs the string in a completely surrounding strong magnetic field, causing the overall output volume of the pickup to be very loud, and acts as electromagnetic shielding. The design of this type of pickup has a very discinct tonal quality.

FYI: My previous problems with a color trademark may have reached a new plateau. The company was recently denied an identical trademark for a different color based on functionality, which I am told may give us substantial footing to have the existing trademark cancelled.

[JohnDodge]

Jeff, after reading the link you gave, I want to thank you deeply. It was extremely insightful.