Dimarzio files to dismiss Gibson’s PAF and double-cream trademark claims

DiMarzio has filed to dismiss Gibson’s cancellation case against its PAF and double-cream trademarks.

• READ MORE: Gibson files to cancel DiMarzio’s PAF and Double Cream pickup trademarks

In the late 1970s and early 1980s, DiMarzio was granted trademarks for both the wordmark ‘PAF’, and for the look of the double-cream humbucker. But in late 2023, Gibson filed a cancellation request against these two trademarks. Amongst other claims, it argued that DiMarzio had no right to file for these marks, as they were at the time rightfully Gibson’s, and now have become generic due to market saturation. For a full breakdown of Gibson’s claims, check out our initial coverage.

As we were told in DiMarzio’s statement at the time, the brand has every intention of fighting Gibson’s claim and defending its marks. To that end, it filed a motion to dismiss the claim last Tuesday (16 January). The motion as a whole goes into detail about the legal precedents for dismissal and other specifics of the case. But for our purposes, its opening paragraphs serve as an overview of DiMarzio’s counter-arguments against Gibson.

Fraud on the trademark office

Gibson had argued that it was using the PAF and double-cream marks before DiMarzio was, and because DiMarzio knew this, it committed fraud on the trademark office when it filed its own marks. But DiMarzio calls these “plainly time-barred claims of priority and ownership” and says Gibson did not demonstrate any of its own prior trademark registrations, or that it even “used either mark as a mark”.

In short, DiMarzio is saying that Gibson’s “we got there first” argument doesn’t hold up because, in the eyes of the trademark office, it didn’t. It also claims the fraud accusation is being used to “repackage” claims that should have been made a lot sooner – as Gibson has now had decades to claim that these marks conflict with its own.

Functionality

Gibson also made a claim of “functionality” – saying that because guitarists generally want all of their plastics to match, the double-cream colour mark isn’t trademarkable. DiMarzio brands this a “naked assertion” and “plainly deficient,” claiming that, because it is so broad, “if permitted to proceed beyond a motion to dismiss, [Gibson’s argument] would be enough to subject any colour mark to a cancellation proceeding.”

“Misleading” PAF wordmark, and claims of genericity

Gibson had claimed that because PAF stands for “patent applied for” and DiMarzio hadn’t actually applied for any patents about the pickup, the mark is misleading. However, DiMarzio notes that Gibson also claimed that the initialism had become “associated with a particular guitar pickup design through popular usage” – and therefore separated from its original meaning, hence the claim undoes itself.

Gibson also claimed that the PAF and double-cream humbucker marks are generic, citing a number of pickups that use the wordmark or the double-cream design. DiMarzio dismisses this on a slightly more straightforward basis, claiming Gibson didn’t give information about when or where its examples were sold, nor did it make any allegations “related to the association in the public imagination between the marks at issue and DiMarzio.”

What happens next?

Since its filing, the rest of the case has been suspended while the motion to dismiss is considered. If found in DiMarzio’s favour, we’re essentially back to where we started. But if the motion is denied, then DiMarzio will likely file a full answer to all of Gibson’s claims, and the case will proceed as normal.