Gibson’s ‘Baseless’ Trademark Claims Run Into Antitrust Wall
Details
- Publish Date:
- June 24, 2022
- Author(s):
-
- Jahner, Kyle ,
- Papscun, Dan
- Source:
- Bloomberg News
- Related Person(s):
- Related Organization(s):
Summary
Even without an agreement barring the trademark claims, IP law’s limitation on trademark protection for features that go beyond identifying who made a product could give Heritage an out.
“You don’t want to give a trademark if the reason people value this is for the way it looks, not because the look says ‘I’m a Gibson guitar,’” intellectual property law professor Mark Lemley of Stanford University said. “But trademark owners regularly bring claims that try to push that line or test that boundary.”
Despite the unpredictability, it remains “easier and cleaner” to have a mark invalidated than to win an antitrust claim in such a conflict, said Lemley, who also writes about antitrust law. Antitrust invokes complicated questions that are irrelevant to trademark validity, such as determining standing, analyzing and defining markets, and establishing harm and a causal link, he said.
Lemley also said the difficulty of fully cleaving the design of a product from its commercial benefits makes it problematic to extend potentially monopoly-granting trademark protection for such characteristics. Even if the guitar designs don’t affect sound or ease of use, they may simply be looks that consumers crave, independent of who made them.
“We would definitely be better off saying the trademark doesn’t extend that far,” Lemley said.