107 F.4th 441
5th Cir.2024Background
- Gibson, Inc. sued Armadillo Distribution and Concordia Investment Partners for trademark infringement and counterfeiting related to iconic guitar body and headstock shapes, as well as word marks.
- Armadillo manufactures and sells guitars under the Dean brand, including models with shapes similar to Gibson’s Flying V, Explorer, and SG models.
- The dispute includes a long history of attempts to license or resolve rights to certain guitar shapes and headstock designs, which ultimately failed.
- At trial, the district court granted Gibson’s motion in limine, excluding most evidence of third-party use of the contested marks prior to 1992.
- A jury found for Gibson on most infringement and counterfeiting claims, but limited damages based on laches and found no genericness.
- On appeal, Armadillo challenged the wholesale exclusion of older third-party-use evidence as central to its genericness defense, arguing the exclusion prejudicially limited its case.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Exclusion of pre-1992 third-party-use evidence on genericness | Evidence before 1992 has low probative value, risks confusion | Older evidence is highly relevant to genericness, not just post-1992 | Exclusion was abuse of discretion; new trial required |
| Application of Converse five-year evidentiary limit | Converse justifies a five-year cutoff for third-party use | Converse applies to secondary meaning, not genericness | Converse does not require a strict five-year limit |
| Relevance under Rule 403 | Exclusion promotes judicial efficiency, avoids confusion | Rule 403 should not exclude highly probative, central evidence | Wholesale exclusion under Rule 403 was improper |
| Lanham Act statutory bar on challenging mark’s genericness timeline | Claims pre-1992 genericness barred after five years from registration | Statute does not bar showing genericness before registration | No time bar for pre-registration genericness challenge |
Key Cases Cited
- Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d 1110 (Fed. Cir. 2018) (Addressed relevance of older third-party-use evidence for secondary meaning, not genericness; does not require categorical exclusion.)
- Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221 (5th Cir. 2009) (Explains that generic marks are not entitled to trademark protection.)
- Texas Pig Stands, Inc. v. Hard Rock Café Int’l, Inc., 951 F.2d 684 (5th Cir. 1992) (Generic marks can never become incontestable regardless of time passed.)
- Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225 (5th Cir. 2010) (Generic marks receive no trademark protection under the Lanham Act.)
- Herrington v. Hiller, 883 F.2d 411 (5th Cir. 1989) (Rule 403 exclusion is an extraordinary remedy to be used sparingly.)