Introduction

Federal Jury: Gibson Guitars Flying V Trademark is Valid and Was Infringed, But Delay in Enforcement Action was “Inexcusable”

Federal Jury: Gibson Guitars Flying V Trademark is Valid and Was Infringed, But Delay in Enforcement Action was “Inexcusable”

On May 19, 2019, Gibson guitars filed a trademark infringement lawsuit against rival guitar companies for manufacturing and selling products that copy Gibson's famous "flying-v" shape. (Gibson Brands, Inc. v. Armadillo Distribution Enterprises, Inc. et al Eastern District of Texas 4:19-cv-00358-ALMA).

Texas federal jury decided on Friday (May 27) that Dean Guitars sold counterfeit guitars that infringed the trademark on Gibson Brands Inc.'s Flying V guitar and other iconic models, and dismissed Dean's efforts to cancel several Gibson trademarks as generic.

However, Gibson sought over $14 Million dollars in damages when they filed the complaint, but the jury found by a preponderance of evidence that Gibson delayed in asserting its trademark right(s) and that Gibson s delay was inexcusable and caused undue prejudice to the Defendants.

Under The Lanham Act, 15 U.S. Code § 1117(c)(1):

"...an award of statutory damages for any such use in connection with the sale, offering for sale, or distribution of goods or services in the amount of—

1)not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just; or

(2)if the court finds that the use of the counterfeit mark was willful, not more than $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just."

Gibson was unable to prove they suffered "actual damages" and a jury awarded only a minimal $4,000.00 in statutory damages.

However, Gibson was able to save their trademarked Flying-V shape from cancellation, after the jury held it was not generic - and therefore still entitled to trademark protection.

The lesson here is to never delay enforcing your trademarks, otherwise a jury might reasonably think you don't deserve compensation for infringement.

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