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Trademark Fight Between Gibson, Heritage Guitars Settles in Federal Court

IPR Daily

2023-02-02 22:54:44

Heritage Guitars

Heritage guitars at 225 Parsons St. in Kalamazoo, Michigan. The guitar company was founded in 1985 by former Gibson employees the year after Gibson left Kalamazoo for Nashville, Tennessee. (MLive.com file photo)Kalamazoo Gazette

An ongoing legal battle between two guitar makers with Kalamazoo roots over trademark issues is now over.

The two parties, Gibson and Heritage, have agreed to the dismissal of claims and counterclaims in a matter that dates back nearly three years, according to a federal filing signed Friday, Jan. 27, by Magistrate Ray Kent,

In March 2020, Kalamazoo-based Heritage Guitar Inc. filed what they said was a defensive lawsuit in federal court against Gibson Brands Inc., formerly of Kalamazoo. They claimed Gibson was threatening legal action over perceived trademark infringement. Gibson denied at the time they were going to sue.

Heritage, founded by former Gibson employees in 1985 after Gibson left Kalamazoo for Nashville, Tennessee, alleged in its complaint that after coming under new ownership in 2019, Gibson had been repeatedly harassing Heritage over the design of more than a half dozen single-cut and double-cut guitars.

The issue was one that had previously gone to federal court and before the U.S. Trademark Trial & Appeal Board, before it was resolved in 1991. The companies went on to coexist for the next 28 years without issue.

“For nearly 28 years, from 1991 to 2019, Gibson never claimed that Heritage failed to meet its obligations under the settlement agreement, or that any Heritage guitars infringed Gibson’s intellectual property rights,” the complaint filed by Heritage read. “In February 2019, shortly after KKR took over Gibson, Gibson wrote to Heritage and essentially claimed that Heritage had been violating the settlement agreement for decades.

“Gibson demanded that Heritage essentially cease its business as the only solution that Gibson would accept. Heritage pointed out that its designs remained substantially unchanged, and any minor modifications to elements not at issue in the 1991 settlement agreement indisputably resulted in the designs being further from Gibson’s designs in the settlement agreement than the approved models.”

Heritage went on to attest that it had complied in all respects with the settlement agreement and it would “refuse to accede to Gibson’s demand that it cease virtually its entire business.”

While Heritage said there was no likelihood of confusion between the two brands, Gibson disagreed, stating that while Heritage had complied with the agreement for years, it had recently launched a new line of guitars in or around 2019 “that clearly did not respect, nor adhere to, the original contract” and that had led to many people questioning if the guitars Heritage was making were, in fact, Gibson guitars.

“To be clear, Gibson has not sued Heritage and has been proactive toward a solution,” they said at the time.

As part of the agreement reached this past week, the parties jointly stipulated to the dismissal of all claims filed by Heritage and counterclaims later filed by Gibson, with prejudice, and with each party bearing its own attorneys’ fees and costs.

While the settlement details are confidential, Meng Ru Kuok, CEO of Heritage Guitars and Caldecott Music Group, told MLive/Kalamazoo Gazette that Heritage is happy to have the matter behind them.

“We can’t comment on the agreement as the terms of it are confidential,” Kuok said. “However, Heritage is extremely pleased with the way in which this matter has been resolved and are excited about continuing the history of guitar building at 225 Parsons Street.”

Asked if legal costs incurred had been detrimental to the Kalamazoo-based guitar maker, Kuok again declined comment, but did say, “Heritage is delighted that dollars are no longer being diverted from investment into the plant, our team and our guitars.

“We’re extremely pleased this lawsuit is behind us,” Kuok continued. “We look forward to focusing even more on the quality of our current lineup as well as bringing forward our plans for the year ahead.”

Gibson issued a statement of its own on Tuesday, Feb. 1.

The company, which left Kalamazoo for Nashville, Tennessee, in 1984, stated that it was “pleased that the matter Heritage brought to Gibson has been dismissed.”

“For 130 years, Gibson has invested in innovation and been at the forefront of guitar development and evolution,” the statement reads. “As the matter is now resolved, Gibson can move forward and focus on innovation with confidence.

“These investments and innovation are at the center of Gibson and are protected under Intellectual Property rights, commonly referred to as “IP.” Gibson’s unique designs are registered and Trademarked shapes that are the exclusive property of Gibson. Most recently, the United States Courts ruled to protect Gibson’s intellectual property rights, upholding Gibson’s long-established and well-recognized trademarks.

“Gibson guitar shapes are iconic and firmly protected for the past, present and future.”

Source: mlive.com-Ryan Boldrey

Editor: IPR Daily-Ann

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