The Supreme Court recently declined to review a 2005 federal appeals court ruling that the Singlecut® guitar manufactured by Paul Reed Smith Guitars, LP (PRS) does not infringe the trademark registration owned by Gibson Guitar Corporation for its Les Paul® guitars. Gibson had sued for trademark infringement shortly after Paul Reed Smith introduced the Singlecut® guitar model in 2000. Gibson argued that the Singlecut® model was too similar to the trademark registration it owned for its famous Les Paul® model and created confusion in the marketplace.

In 2004, the Middle District of Tennessee issued a permanent injunction preventing PRS from manufacturing, selling and distributing its Singlecut® guitars. The Sixth Circuit later vacated the injunction, ruling that the PRS guitar did not infringe Gibson’s trademark. The appeals court noted that the parties had agreed to dismiss their trade dress claims and explained that the trial court “confused trademark law with trade-dress law” by expanding Gibson’s trademark registration for the Les Paul® guitar’s body shape to cover design features of the guitar, such as the placement and style of knobs and switches and the color of the guitar. The Sixth Circuit held that the trial erred by relying on specimens that Gibson submitted with the application showing the entire Les Paul® guitar rather than the two-dimensional shape depicted in the application drawing to determine whether Gibson’s trademark was infringed.

The Sixth Circuit also found that the evidence offered by Gibson of initial-interest confusion and post-sale confusion could not substitute for evidence that consumers were confused at the point of sale. The court specifically pointed out that Gibson had conceded that the expense of the guitars and the sophistication of consumers would likely avoid confusion at the point of sale. Absent evidence of consumer confusion at the point of sale, the Sixth Circuit found no basis for Gibson’s trademark infringement claim.

The Supreme Court’s denial of certiorari in this case settles the closely watched legal battle between the guitar makers and appears to give competing guitar manufacturers the green light to continue selling guitars very similar to the popular Les Paul® model.

Anthony Lupo
202.857.6353
lupo.anthony@arentfox.com

Halle Markus
202.857.6113
markus.halle@arentfox.com