‘Stratotone' Guitar Mark Abandoned by Manufacturer

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By Blake Brittain

Oct. 29 — The trademark for Stratotone guitars—which hadn't been manufactured for more than 30 years until a revival in 2000—had been abandoned by the manufacturer after another four-year period of inactivity from 2002 to 2006, the U.S. District Court for the Northern District of Indiana ruled Oct. 28.

The court ruled that the trademark was therefore owned by another guitar manufacturer, Darryl D. Agler, who applied to register the “Stratotone” mark in 2006, and the court granted summary judgment to Agler.

The court also denied summary judgment on the ownership of an additional trademark featured on Stratotone guitars—an atom with a musical note in the center—because of insufficient evidence as to when Agler began using it.

Stratotone guitars were originally manufactured by Harmony Guitar Co. from 1953 until the mid-1960s. In 2000 or 2001, another company acquired a license to market reissues of Harmony instruments, including the Stratotone. The new company sold the Stratotone reissues from 2000 until 2001 or 2002.

In 2006, Agler began producing Stratotone reissues on his own, and applied to register the “Stratotone” mark in 2006. Agler received the registration in 2011.

In 2007, Harmony filed an intent-to-use application to register the “Stratotone” mark, but was denied based on Agler's registration.

Defendant Westheimer Corp. had purchased all of Harmony's assets and began producing and selling Stratotone guitars in 2009, and Agler sued for trademark infringement. Westheimer counterclaimed to cancel Agler's registration, arguing that he had infringed the company's rights to the Stratotone and atom marks.

The court determined that Westheimer had abandoned the mark between the time Harmony's reissue license expired in 2002 and the time it filed to register the “Stratotone” mark because there was “a period without any use or any evidence of intent to use from at least January 1, 2003 through March 13, 2007—a period of over four years.”

The court said this created a presumption of abandonment that Westheimer hadn't rebutted, and granted summary judgment to Agler on the “Stratotone” infringement claims.

However, because neither party had registered the atom mark, and there was conflicting evidence as to which party began using the mark first, the court denied summary judgment on claims related to the atom mark.

Judge Jon E. DeGuilio issued the court's ruling.

Westheimer was represented by Brent M. Davis of Bienstock & Michael PC, Hackensack, N.J. Agler was represented by Louis T. Perry of Faegre Baker Daniels LLP, Indianapolis.

To contact the reporter on this story: Blake Brittain in Washington at bbrittain@bna.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bna.com

Text is available at: http://www.bloomberglaw.com/public/document/Agler_v_Westheimer_Corporation_Docket_No_114cv00099_ND_Ind_Mar_27.