Fender Guitars Denied Trademark Registration: Trademarks and Product Design

Last week the U.S. Trademark Trial and Appeal Board denied trademark registration for the designs of three famous Fender electric guitars. The case illustrates the limits of using trademarks to protect your product designs.

To many guitar heros (real and would-be), Fender guitars represent the iconic electric guitar. Despite this, as Musical Instruments Professional reports, the designs of Fender's Stratocaster, Telecaster and Precision guitars were denied trademark registration.

The reason? Trademark protection is designed to protect symbols that indicate the origin of a product or service. Some symbols, such as an invented word used as a fanciful product name, have what is called "inherent distinctiveness." This means that the person applying to register the trademark will not need to prove that the consuming public has come to associate the trademark with the maker of the goods or services.

The configuration of a product, however, cannot be inherently distinctive under US trademark law. This means that someone applying to register the design of their product as a trademark must prove that the design has "acquired distinctiveness." If they cannot prove that consumers have come to associate the product design with its maker, the trademark application will be denied.

In the case of Fender's guitar shapes, a multitude of guitar makers came forth to oppose Fender's application. As the Trademark Trial and Appeal Board found, the shape of Fender guitars has become universal. "In fact, in the case of the [Stratocaster] body outline, this configuration is so common that it is depicted as a generic electric guitar in a dictionary," stated the Board.

Though trademarks may not effectively protect product configurations, product makers have other, better suited options to protect their designs. Both design patents and copyrights can protect ornamental product design. If the design feature is functional rather than ornamental, its inventor can apply for a utility patent.

• Trademarks and marketing: There's room for creativity (MinnPost.com)
• Stratocaster Guru Dies (Pollstar, January 2009)
• Types of Trademarks (FindLaw)
• Elements of a Design Patent Application (FindLaw)
• About Real World Copyrights (FindLaw)
• Intellectual Property FAQs (provided by The Fergus Law Office)