Smoky-bar Confusion Test Is All Smoke

Let there be no confusion but that the “smoky-bar theory of confusion” is nothing but smoke, the Sixth Circuit Court of Appeals has found.

Not only that, but for guitar shapes, you can also forget about initial interest confusion. Gibson Guitar Corp. sued Paul Reed Smith (PRS) Guitars for trademark violation for its design of the solid-body, single-cutaway electric-guitar that Gibson had been marketing under the Les Paul name since 1952. Paul Reed started marketing a cutaway guitar in 2000 that Gibson said infringed on its trademark.

The trial court agreed and granted an injunction. Among other claims, Gibson said there was “initial interest confusion” due to the shape of the guitar. The appellate court found that initial interest confusion did not apply in other than Internet domain name cases and that Gibson had to show point-of-sale confusion, which it failed to do. In addition, Gibson raised a new theory that the court called the “smoky-bar theory of confusion.” Gibson argued that in the context of guitar sales, budding musicians want to use the same guitars as famous musicians. “On a distant stage, a smoky bar, wannabe musicians see their heroes playing a guitar that they want,” Gibson argued.

The appellate court blew away the smoky-bar theory, noting: “If a budding musician sees an individual he or she admires play a PRS guitar, but believes it to be a Gibson guitar, the logical result would be that the budding musician would go out and purchase a Gibson guitar. Gibson is helped, rather than harmed, by any such confusion.” Since Gibson conceded that point-of-sale confusion did not exist, the appellate court reversed the trial court’s granting of an injunction barring the sale.

Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, Sixth Cir.No. 04-5836/5837, September 12, 2005.