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Gibson Enforces 40 Year old TM Infringement

After waiting 40 years, Gibson Brand Inc. has enforced its guitar-shape trademark against fellow manufacturer Dean Guitars. As of 28 July 2022, a permanent injunction bars Armadillo Distribution Enterprises (the parent company of Dean Guitars) from manufacturing the iconic guitars.

Armadillo’s argument, that body shapes like Flying V and Z-shaped guitars had suffered genericide, was rejected by a jury, who found that the company had engaged in counterfeiting.

Armadillo additionally raised the defense of laches, arguing that delay between the initial infringement and the initiation of proceedings was excessive and inexcusable, causing significant economic and evidentiary prejudice. The court rejected the argument, citing McLean v. Fleming and Menendez v. Holt (both cases from the 1880s), finding that while laches do not bar delayed action and injunctive relief, “mere delay on the part of the plaintiff precludes only past recovery.” Only $4000 of damages were awarded because Gibson’s 4 decade delay in bringing suit.

The finding has raised the question of what exactly would constitute a delay sufficient to be prejudicial, and when does genericide occur? The cited cases had delays of 10 and 12 years respectively, and a portion of the delay in each was from the plaintiff being delayed in discovering the usage. This case’s delay was 4 times longer, and knowledge of the sales was not an issue raised.

In addition to the $4000 in damages, Gibson was awarded $335,000 in costs.

More information can be found here.

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