A summary analysis of Dean Guitars’ Answer, Counterclaims, and Motion to Dismiss in response to Gibson Guitars’ trademark lawsuit.

Armadillo Distribution Enterprises – the entity that owns and Luna Guitars – has submitted its opening salvo in response to Gibson’s trademark infringement lawsuit. On July 8th, Armadillo filed a 49 page Answer and Counterclaims. It also filed a separate Motion to Dismiss the allegations of “counterfeiting” by Gibson. Both of these legal filings by Armadillo seek to document a series of factual and legal errors that were conveniently left out of Gibson’s claims. The highlights of Armadillo’s myriad responses are the following:

“It is legally impossible for Dean’s V and Explorer guitars to be “counterfeits. Armadillo has used the V and Z (Explorer) guitar shapes since at least 1976 and that Gibson “sat on its purported rights and failed to object. Gibson’s alleged trademarks and trademark rights are “invalid” because they are generic and/or incapable of serving as source identifiers for guitars. Armadillo’s use of the term “Modern” to describe its guitars is Fair Use. Gibson has interfered with Armadillo’s business by unlawfully threatening distributors”…

Of course, the Answer and Counterclaims filed by Armadillo are written in a way that is heavily-slanted in its favor. This response, however, does introduce new facts and history that was absent from Gibson’s own lawsuit filings. As a trademark lawyer and a guitar player, and Ultimate Guitar considers ths aspect “absolutely fascinating to me and I wanted to provide a quick summary and high-level legal analysis of the parties’ positions as of today”.

Gibson’s Counterfeiting Claims: Gibson’s lawsuit alleges that Armadillo (through Dean and Luna) used “counterfeit versions” of Gibson’s Flying V, Explorer, SG, and Dove Wing Headstock designs on both electric and acoustic guitars. Gibson is not required to provide substantial evidence in its original filings, but Armadillo’s Answer and Motion to Dismiss absolutely drops the hammer on Gibson’s counterfeiting claims.

Under U.S. law, a counterfeit is a “spurious mark which is identical with, or substantially indistinguishable from, a registered mark.” Essentially, a counterfeit “is something that purports to be something that it is not.” Gibson’s assertion that Dean and Luna guitars are counterfeits necessarily suggests to the court that these guitars are being passed off as genuine Gibson guitars and not just mere imitations or guitars with similar designs.

Armadillo’s lawyers pounced on this claim for obvious reasons. Because Gibson previously tried this same argument just a few years ago and it failed spectacularly. On similar claims for counterfeiting by Gibson in 2016, a district court in California held the following: To the extent that Gibson allegedly relies on its body shape and headstock shape as a source identifier, no rational jury could find that a particular body shape or headstock stamped with a different guitar brand is a counterfeit of a Gibson trademark.