                           RECOMMENDED FOR FULL-TEXT PUBLICATION
                                Pursuant to Sixth Circuit Rule 206
                                      File Name: 05a0387p.06

                    UNITED STATES COURT OF APPEALS
                                  FOR THE SIXTH CIRCUIT
                                    _________________


                                                     X
                               Plaintiff-Appellee, -
 GIBSON GUITAR CORP.,
                                                      -
                                                      -
                                                      -
                                                          Nos. 04-5836/5837
          v.
                                                      ,
                                                       >
 PAUL REED SMITH GUITARS, LP,                         -
                             Defendant-Appellant. -
                                                     N
                      Appeal from the United States District Court
                    for the Middle District of Tennessee at Nashville.
                  No. 00-01079—William J. Haynes, Jr., District Judge.
                                  Argued: December 10, 2004
                            Decided and Filed: September 12, 2005
                 Before: KENNEDY, MARTIN, and MOORE, Circuit Judges.
                                      _________________
                                          COUNSEL
ARGUED: William D. Coston, VENABLE LLP, Washington, D.C., for Appellant. John F. Triggs,
GREENBERG TRAURIG, New York, New York, for Appellee. ON BRIEF: William D. Coston,
Kevin B. Collins, VENABLE LLP, Washington, D.C., for Appellant. John F. Triggs,
GREENBERG TRAURIG, New York, New York, David A. Kessler, GREENBERG TRAURIG,
McLean, Virginia, Edward D. Lanquist, Jr., WADDEY & PATTERSON, Nashville, Tennessee, for
Appellee.
         MOORE, J., delivered the opinion of the court, in which MARTIN, J., joined. KENNEDY,
J. (pp. 12-14), delivered a separate opinion concurring in part and dissenting in part.
                                      _________________
                                          OPINION
                                      _________________
        KAREN NELSON MOORE, Circuit Judge. This is an interlocutory appeal of an injunction
granted in a trademark case. The parties agree that the mark purports to include at least the two-
dimensional guitar shape set out in the trademark-registration papers. However, they disagree as
to whether the mark extends to cover three-dimensional objects where two dimensions of those
objects have the same general shape (but not the same exact proportions) as the drawing in the
registration papers, and as to whether the mark includes additional product features shown in a




                                                1
Nos. 04-5836/5837              Gibson Guitar Corp. v. Paul Reed Smith Guitars                                  Page 2


photograph accompanying the registration papers.1 Whatever the scope of the mark, the parties also
dispute whether the mark is valid and whether it has been infringed.
        Plaintiff-Appellee Gibson Guitar Corp. (“Gibson”) is the owner of the mark in question, U.S.
Trademark Registration No. 1,782,606 (the “LP Trademark”). Defendant-Appellant Paul Reed
Smith Guitars, LP (“PRS”) manufactures the “Singlecut” line of guitars which Gibson alleges
infringes on the LP Trademark. Concluding that there was no issue of fact for trial, the district court
granted summary judgment in favor of Gibson on the trademark-infringement claim, denied all of
PRS’s counterclaims, and issued a permanent injunction preventing PRS from manufacturing,
selling, or distributing its Singlecut line guitars.
         With respect to Gibson’s trademark-infringement claim, we REVERSE the district court’s
decision granting summary judgment in favor of Gibson, REVERSE the district court’s decision
denying summary judgment in favor of PRS, and VACATE the permanent injunction issued by the
district court. We REMAND the case to the district court with instructions that summary judgment
be entered in favor of PRS on Gibson’s trademark-infringement claim.2
                                              I. BACKGROUND
A. Facts
        Certain basic facts are not in dispute. Gibson and PRS both manufacture high-quality
guitars. Gibson has been in the business of manufacturing musical instruments for over 100 years.
PRS founder Paul Reed Smith (“Smith”) began manufacturing custom guitars in the mid-1970s and
opened a guitar factory in 1985.
       Gibson introduced at least one guitar model under the Les Paul name in 1952. Since that
time, Gibson has offered a number of guitar models under the Les Paul name. At least some of3these
models were solid-body, single-cutaway electric guitars of the type at issue in this litigation. For
a number of years during the 1960s, Gibson did not manufacture guitars in the Les Paul series. At

         1
          We emphasize that this dispute is only over whether the product shape and features are covered by trademark
law. All trade-dress claims have been voluntarily dismissed by the parties.
         2
           On appeal, Defendant-Appellant Paul Reed Smith Guitars, LP (“PRS”) also maintains that the district court
erred in failing to declare Trademark Registration No. 1,782,606 (the “LP Trademark”) invalid under the doctrines
prohibiting protection of functional or generic marks. As we have determined that the LP Trademark, even if valid, is
not infringed by the PRS Singlecut, we DENY PRS’s counterclaims against the validity of the trademark AS MOOT.
We also note that following oral argument and prior to our decision in this case, PRS filed a motion to stay proceedings
in the district court pending the resolution of this appeal. We now DENY this motion AS MOOT.
         3
          On appeal, neither party challenges the district court’s description of the Les Paul single-cutaway guitar
produced by Plaintiff-Appellee Gibson Guitar Corp. (“Gibson”):
                  Gibson’s Les Paul single cutaway guitar is a traditionally shaped guitar with a portion
         removed from [the] body of the guitar where the lower section of the fingerboard meets the body of
         the guitar. The term “cutaway guitar” denotes that portion of the guitar between the neck and its
         lower[] part, that appears to be missing from the natural, rounded body contour. The removal of this
         portion forms what is often referred to as the “horn.” One aspect of this horn design is that the
         musician can access higher strings [and] position[s].
                  As to other parts of a guitar, a pickup selector switch allows the player to change quickly the
         electromagnetic inputs to any one of three options: the pickup closest to the neck (the “neck pickup”),
         the one furthest from the neck (the “bridge pickup”), or a combination of both. The combination of
         volume and tone knobs for each pickup[] allow[s] the player to set the tone and volume of each pickup
         and[] switching among these pickups can achieve different sounds.
Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 311 F. Supp. 2d 690, 694-95 (M.D. Tenn. 2004) (“Gibson I”)
(quotation marks, citations, and footnote omitted).
Nos. 04-5836/5837             Gibson Guitar Corp. v. Paul Reed Smith Guitars                               Page 3


some time thereafter, Gibson resumed manufacturing solid-body, single-cutaway electric guitars
under the Les Paul name. Gibson first applied for registration of what became the LP Trademark
— the mark under which Gibson asserts trademark protection for its Les Paul line of solid-body,
single-cutaway electric guitars — on July 29, 1987, but the U.S. Patent and Trademark Office did
not issue the registration until July 20, 1993. On September 27, 1999, the LP Trademark became
“incontestable” within the meaning of 15 U.S.C. §§ 1065 and 1115(b).
       PRS is a relatively recent entrant to the solid-body, single-cutaway electric-guitar market.
Although PRS had previously manufactured a number of other guitars, it did not offer a single-
cutaway guitar in its normal line until January 2000 at the earliest. In February 2000, PRS displayed
models of the PRS Singlecut, a solid-body, single-cutaway electric guitar, at a music industry trade
show.4 On March 27, 2000, Gibson sent a letter demanding that PRS cease and desist from
producing and selling the Singlecut.
B. Procedural History
         The procedural posture of this case is somewhat unusual. We briefly summarize those
aspects relevant to this interlocutory appeal. On November 6, 2000, Gibson sued PRS in federal
district court in Nashville, Tennessee. The complaint sought injunctive relief, costs, attorney fees,
and treble damages for trademark infringement, counterfeiting, false designation of origin, and
dilution under the Lanham Act, 15 U.S.C. §§ 1114(1), 1125(a), 1125(c), and for unfair competition,
fraud, and deceptive business practices under state law. PRS counterclaimed, seeking declaratory
and injunctive relief and asserting that: (1) the LP Trademark is invalid and unenforceable; (2) the
LP Trademark is not infringed by the PRS Singlecut; (3) any trade dress associated with the Gibson
Les Paul series of guitars cannot be protected under the Lanham Act or is otherwise unenforceable;
and (4) the PRS Singlecut guitar does not infringe any such trade dress.
         PRS moved for summary judgment on all claims and counterclaims, and Gibson moved for
partial summary judgment on the trademark-infringement claim. On January 22, 2004, the district
court granted Gibson’s motion for partial summary judgment on its trademark-infringement claim
and denied PRS’s motion for summary judgment in its entirety. Gibson Guitar Corp. v. Paul Reed
Smith Guitars, LP, 311 F. Supp. 2d 690, 725 (M.D. Tenn. 2004) (“Gibson I”). After the district
court’s summary judgment decision, the parties jointly requested that the district court allow them
to: (1) amend Gibson’s complaint to state only the trademark-infringement claim; (2) amend PRS’s
answer to state only trademark-related counterclaims; and (3) dismiss all other claims and
counterclaims with prejudice. The district court approved this request, and shortly thereafter Gibson
filed an amended complaint and PRS filed an amended answer. As amended, Gibson’s complaint
seeks injunctive relief, attorney fees, and treble damages for infringement of the LP Trademark.
PRS’s amended counterclaim seeks declaratory and injunctive relief, costs, and attorney fees, on the
basis that the LP Trademark is invalid and unenforceable and that the LP Trademark is not infringed
by the PRS Singlecut.
        On July 2, 2004, the district court issued an order addressing a motion in limine filed by
Gibson and several matters raised in PRS’s pretrial brief, including a demand by PRS for a jury trial
on the amount of profits to be disgorged. In the course of ruling on Gibson’s motion in limine and
denying PRS’s jury trial demand, the district court entered a permanent injunction against PRS:



        4
           The PRS Singlecut includes numerous source-indicating features, including “the PRS headstock, logo,
fretboard inlay, three-dimensional ‘scoop’ carve in the cutaway which indicates manufacture by PRS, and hanging tags
attached to the guitar at shipment and used at point of sale.” Joint Appendix (“J.A.”) at 1163 (PRS Reply to Gibson
Response to PRS Statement of Undisputed Facts).
Nos. 04-5836/5837               Gibson Guitar Corp. v. Paul Reed Smith Guitars                                    Page 4


         This is hereby ORDERED that the Defendant Paul Reed Smith, its partners,
         employees, agents and all persons in active consent with them are ENJOINED from
         manufacturing, selling, or distributing, or in any manner[] enabling or aiding others
         to manufacture, or to sell, or to distribute the PRS Singlecut guitar and all versions
         thereof, including but not limited to their exterior shapes and features, the designs
         of which have been determined to violate Plaintiff’s rights to protection under the
         Lanham Act for its incontestable trademark registration, No. 1,782,606 for Les Paul
         guitar.
Gibson Guitar5Corp. v. Paul Reed Smith Guitars, LP, 325 F. Supp. 2d 841, 855 (M.D. Tenn. 2004)
(“Gibson II”). The district court’s order explicitly reserved decision on all other issues remaining
in the case pending a hearing on disgorgement of profits.6 In this interlocutory appeal, PRS
challenges the July 2, 2004 injunction and the January 22, 2004 order granting partial summary
judgment to Gibson and denying summary judgment to PRS.
                                                   II. ANALYSIS
A. Jurisdiction
        The district court had jurisdiction over the underlying action pursuant to the Lanham Act,
15 U.S.C. § 1114. As the district court entered a permanent injunction against PRS, we have
jurisdiction to hear this interlocutory appeal pursuant to 28 U.S.C. § 1292(a)(1). Although our
jurisdiction arises from PRS’s interlocutory appeal of the permanent injunction entered below, we
may also review the district court’s summary judgment rulings   because those rulings form the basis
for the district court’s decision to order injunctive relief.7
B. Propriety of Granting Injunctive Relief
         In determining whether a district court has properly granted a permanent injunction, we
review factual findings for clear error, legal conclusions de novo, and the scope of injunctive relief
for abuse of discretion. Worldwide Basketball and Sport Tours, Inc. v. Nat’l Collegiate Athletic
Ass’n, 388 F.3d 955, 958 (6th Cir. 2004). A district court normally must hold an evidentiary hearing
prior to issuing a permanent injunction. Moltan Co. v. Eagle-Picher Indus., Inc., 55 F.3d 1171, 1174


         5
         Explaining its decision to issue an injunction prior to the trial on appropriate relief, the district court noted:
                  Here, the Court did not initially award injunctive relief in contemplation of a motion to alter
        or amend its earlier findings and conclusions of law for potential error. The Court was of the view
        that the declaration of rights was sufficient in the interim. PRS did not file a Rule 59 motion or a
        motion to reconsider. The Court is now firmly convinced that injunctive relief to bar the production
        and sale of PRS’s Singlecut is appropriate and necessary.
                  As to any stay pending an appeal, the standards to consider are those on awarding injunctive
        relief. For the reasons set forth in the Court’s Memorandum, the Court does not believe that PRS will
        prevail on appeal. Gibson will suffer irreparable injury to its goodwill in its Les Paul[] if PRS is not
        enjoined. Gibson’s dealers would be injured by PRS’s unlawful sales of its Singlecut. The Court
        deems it in the interest of justice to enforce registered trademarks. Given these findings, PRS’s
        request for a stay of injunctive relief will be denied.
Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 325 F. Supp. 2d 841, 854 (M.D. Tenn. 2004) (“Gibson II”).
         6
          A bench trial was held from July 6, 2004 to July 7, 2004. Perhaps awaiting the result of this interlocutory
appeal, the district court does not appear to have issued any order following this bench trial.
         7
          See Thornburgh v. Am. Coll. of Obstetricians & Gynecologists, 476 U.S. 747, 756-57 (1986), overruled on
other grounds by Planned Parenthood of Southeastern Pennsylvania v. Casey, 505 U.S. 833 (1992)); United States v.
Michigan, 940 F.2d 143, 151-52 (6th Cir.), cert. denied, 513 U.S. 925 (1991); see also 16 CHARLES ALAN WRIGHT,
ARTHUR R. MILLER, & EDWARD H. COOPER, FEDERAL PRACTICE AND PROCEDURE § 3921.1, 3924 (1996 & Supp. 2005).
Nos. 04-5836/5837             Gibson Guitar Corp. v. Paul Reed Smith Guitars                                  Page 5


(6th Cir. 1995). In this case, it is unclear from the parties’ submissions whether the district court
held an evidentiary hearing prior to issuing the permanent injunction. However, because an
evidentiary hearing is not required when “no factual issues remain for trial,” id., the district court’s
decision to grant a permanent injunction without such a hearing could still be upheld if the entry of
summary judgment in favor of Gibson and against PRS was proper. Accordingly, resolution of
PRS’s interlocutory appeal from the permanent injunction requires us to determine whether
summary judgment was properly granted to Gibson. We conclude that it was not, and the district
court accordingly erred in granting a permanent injunction.
        Summary judgment should be granted whenever “there is no genuine issue as to any material
fact and . . . the moving party is entitled to a judgment as a matter of law.” FED. R. CIV. P. 56(c).
On a motion for summary judgment in a trademark-infringement case, we conduct de novo review
of both (1) the district court’s determination of what material facts are in dispute; and (2) the legal
conclusions the district court drew from the undisputed facts. Jet, Inc. v. Sewage Aeration Sys., 165
F.3d 419, 422 (6th Cir. 1999). In conducting this review of a summary judgment motion, we draw
all reasonable inferences in favor of the party opposing the motion. Johnson v. Karnes, 398 F.3d
868, 873 (6th Cir. 2005).
C. The Scope of the LP Trademark
        Prior to conducting our substantive inquiry, we take this opportunity to clarify a fundamental
issue. The district court appears to have confused trademark law and trade-dress law when it
concluded that the LP Trademark covered the entire guitar, rather than the two-dimensional
silhouette included in the registration papers, Gibson I, 311 F. Supp. 2d at 719; see also Gibson II,
325 F. Supp. 2d at 852. This affected the remainder of the district court’s reasoning and prevented
proper analysis of the parties’ claims. Specifically, we do not believe that the two-dimensional
drawing included in the LP Trademark should be construed to create a trademark on the entire guitar
as depicted in photographs accompanying8the trademark application (including the location and style
of knobs, switches, and other hardware).
       The district court’s error rests on an overly broad reading of In re ECCS, Inc., 94 F.3d 1578,
1581 (Fed. Cir. 1996).9 As PRS correctly argues, the district court relies on ECCS to justify its

         8
          The district court’s analysis of this issue reads in full:
        The Court follows [In re ECCS, Inc., 94 F.3d 1578, 1581 (Fed. Cir. 1996)] to conclude that any
        variations between Gibson’s drawings and the Les Paul guitar are not controlling. The core
        consideration is whether the Les Paul guitar is covered by Gibson’s trademark. Here, the undisputed
        facts are that the Gibson’s Les Paul guitar is the same shape of the guitar shown in Gibson’s trademark
        and application papers. Pictures of the Les Paul guitar, as well as pictures from market publications
        and business records about the Les Paul guitar were part of Gibson’s application papers upon which
        the USTPO issued Gibson’s trademark registrations. The Court concludes PRS’s contention about
        . . . Gibson’s drawing lacks merit[.]
Gibson I, 311 F. Supp. 2d at 719; see also Gibson II, 325 F. Supp. 2d at 849 (“Elements of the Les Paul are so
intermingled with PRS’s Singlecut that the entire Singlecut guitar is the offending product.”); id. at 852 (“Finally,
Gibson’s trade mark is not, as PRS argues, the two dimensional guitar, but rather is the entire Les Paul guitar and its
appearance.”).
         9
          The issue presented in ECCS was entirely different from the one presented by the LP Trademark. In ECCS,
the Federal Circuit was called to determine whether to permit a trademark applicant to amend an admittedly erroneous
drawing to conform to its intended trademark, rather than require the trademark be changed to conform to the erroneous
drawing. The ECCS trademark applicant had submitted accurate “specimens” of its trademark, as actually used (the
word “EXA” appearing above the word “MODULE”), but had included an inaccurate “drawing” of the trademark (listing
“EXAMODULE” as a single word, on a single line). ECCS, 94 F.3d at 1581. The applicant attempted to submit a
corrected drawing, but the trademark examining attorney, in a decision upheld by the Trademark Trial and Appeals
Board, required that the applicant instead submit substitute specimens reflecting use of the mark in the drawing
(“EXAMODULE”). The Federal Circuit reversed the Board’s decision, holding that in such a case it is appropriate to
Nos. 04-5836/5837               Gibson Guitar Corp. v. Paul Reed Smith Guitars                                     Page 6


decision to expand Gibson’s trademark on the guitar’s body shape to cover other aspects or design
features of the guitar (such as the placement and style of knobs and switches, and the color of the
guitar) which would normally qualify as trade dress. However, trademark and trade dress are two
distinct concepts under the Lanham Act. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S.
205, 209-210 (2000). The Lanham Act defines a trademark as “any word, name, symbol, or device,
or any combination thereof” which is used or intended to be used by a person “in commerce . . . to
identify and distinguish his or her goods, including a unique product, from those manufactured or
sold by others and to indicate the source of the goods, even if that source is unknown.” 15 U.S.C.
§ 1127. By contrast, trade dress is not explicitly defined in the Lanham Act, but has been described
by the Supreme Court as the “design or packaging of a product” which has acquired a “secondary
meaning” sufficient “to identify the product with10its manufacturer or source.” Traffix Devices, Inc.
v. Mktg. Displays, Inc., 532 U.S. 23, 28 (2001).
D. Trademark Infringement Under the Lanham Act
        To establish trademark infringement within the meaning of the Lanham Act, Gibson must
demonstrate that the PRS Singlecut “is likely to cause confusion among consumers regarding the
origin [of the Singlecut].” Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr., 109
F.3d 275, 280 (6th Cir. 1997) (citing 15 U.S.C. § 1114). We determine whether such confusion is
likely by examining the eight Frisch factors: (1) “strength of the plaintiff’s mark,” (2) “relatedness
of the goods or services,” (3) “similarity of the marks,” (4) “evidence of actual confusion,”
(5) “marketing channels used,” (6) “likely degree of purchaser care,” (7) “the defendant’s intent in
selecting its mark,” and (8) “likelihood of expansion of the product lines.” Jet, 165 F.3d at 422
(citing Frisch’s Rests., Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir.), cert.
denied, 459 U.S. 916 (1982)).11 In conducting the Frisch balancing test, we must remember that


look to the specimens to determine what the applicant wished to register, rather than “a clearly inconsistent and erroneous
drawing made by its attorney.” Id.
         10
             See generally 15 U.S.C. § 1125(a); Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209-210
(2000) (describing trade dress protection); Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619,
629-30 (6th Cir. 2002) (same). As we have explained,
          [t]rade dress refers to the image and overall appearance of a product. It embodies that arrangement
          of identifying characteristics or decorations connected with a product, whether by packaging or
          otherwise, [that] make[s] the source of the product distinguishable from another and . . . promote[s]
          its sale. Trade dress involves the total image of a product and may include features such as size,
          shape, color or color combinations, texture, graphics, or even particular sales techniques.
Abercrombie, 280 F.3d at 629 (internal quotations omitted) (brackets and ellipses in Abercrombie). The distinction
between trademark and trade dress is particularly important, given the posture of this case. As we noted above, after the
district court granted Gibson’s partial summary judgment motion, the district court approved the parties’ agreement to
dismiss with prejudice all of Gibson’s remaining claims, including its claim for trade-dress infringement. Accordingly,
the only remaining Gibson claim is the § 1114(1)(a) trademark-infringement claim.
         11
            Many precedents applying this test arise out of bench trials, where the district court has the authority to make
findings of fact, see, e.g., Wynn Oil Co. v. Thomas, 839 F.2d 1183 (6th Cir. 1988). However, we have previously
explained the somewhat awkward manner in which this test should be applied in the context of a summary judgment
motion:
                   This Circuit considers the question of whether there is a likelihood of confusion a mixed
         question of fact and law. Factual findings must be made with respect to the likelihood of confusion
         factors set out above. However, the further determination of whether a given set of foundational facts
         establishes a likelihood of confusion is a legal conclusion. Because this case is presented to us after
         a grant of summary judgment, our task is to determine whether the District Court correctly held that
         no genuine issues of material fact were presented regarding the likelihood of confusion factors.
                   To resist summary judgment in a case where the likelihood of confusion is the dispositive
         issue, a nonmoving party must establish, through pleadings, depositions, answers to interrogatories,
         admissions and affidavits in the record, that there are genuine factual disputes concerning those of the
Nos. 04-5836/5837              Gibson Guitar Corp. v. Paul Reed Smith Guitars                                     Page 7


“[t]hese factors imply no mathematical precision, but are simply a guide to help determine whether
confusion is likely.” Homeowners Group, Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1107
(6th Cir. 1991).
        The district court concluded that, with the exception of actual confusion (factor four), all
factors on which it made a finding favored Gibson for summary judgment purposes.12 Because there
was no evidence of point-of-sale confusion, factor four would have favored PRS. Gibson I, 311 F.
Supp. 2d at 709-10, 723. However, the district court nonetheless concluded that “[g]iven the striking
similarity of the PRS Singlecut to Gibson’s Les Paul and the instant market recognition of Gibson’s
Les Paul . . . initial confusion would occur in the marketplace between parties’ products as to the
‘Singlecut’ guitar’s source. This factor favors Gibson.” Gibson I, 311 F. Supp. 2d at 724. Having
made this substitution of “initial confusion” for actual confusion at the point of sale, the district
court went on to determine that summary judgment in favor of Gibson was appropriate on Gibson’s
claim that the PRS Singlecut infringed the LP Trademark. We disagree with the district court’s
conclusion that “initial confusion” (or, as discussed below, any of its variants) can apply in this13
                                                                                                    case.
Moreover, as Gibson has conceded that no purchaser would be confused at the point of sale, we
conclude that there is no theory of confusion upon which Gibson can prevail. In other words,
Gibson’s concession that there is no point-of-sale confusion   (which goes to the fourth Frish factor,
actual confusion) is dispositive of Gibson’s claim.14 Accordingly, it is not necessary for us to
discuss the remaining seven Frisch factors.
         1. Gibson’s Theories of Purchaser Confusion
        Gibson argues that despite the lack of actual confusion at the point of sale, the district court’s
decision can be affirmed under a theory of either initial-interest confusion (the theory relied on by
the district court), post-sale confusion, or some combination of the two. Initial-interest confusion
takes place when a manufacturer improperly uses a trademark to create initial customer interest in
a product, even if the customer realizes, prior to purchase, that the product was not actually
manufactured by the trademark-holder. See PACCAR Inc. v. Telescan Techs., L.L.C., 319 F.3d 243,
253 (6th Cir. 2003); see also J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 23:6 (4th ed. 1996 & Supp. 2005) (“MCCARTHY ON TRADEMARKS”) (collecting
cases). Post-sale confusion occurs when use of a trademark leads individuals (other than the


      Frisch’s factors which may be material in the context of the specific case.
Homeowners Group, Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir. 1991).
         12
           We disagree with several of the district court’s conclusions on the individual Frisch factors. However, as
these remaining factors are not relevant to our disposition of this case, we need not discuss them separately.
         13
             See Oral Argument Tape, Argument of Behalf of Gibson (“You’re dealing with, you’re absolutely right, very
sophisticated consumers here. They’re sophisticated both at the, at looking for that shape, and they’re sophisticated when
they buy this. There’s no question when they buy this [i.e., either a PRS Singlecut or a Gibson Les Paul], you’d have
to be an idiot not to know which guitar you’re buying. There’s labels on it, hang tags, you pay $3000, we understand
that.); see also Gibson Br. at 15 (“To issue an exemption [from trademark limitations] to PRS for deliberately violating
Gibson’s trademark simply because at the point of sale the consumer knows he is buying a ‘PRS Les Paul’ makes a
mockery of trademark protection.”); id. at 24. (“In any case, there is no genuine issue of material fact that PRS’s conduct
causes harm, i.e., confusion, in the marketplace. The confusion is simply not at the point of sale.”); id. at 41 (“Instead,
PRS wants the Court to find that the confusion that occurred was not at the point of sale, and is thus of no
consequence.”); id. at 45 (“The expense of the guitar and the degree of savvy of the consumer will likely avoid confusion
at the point of sale but will not avoid initial interest confusion.”).
         14
             The dissent maintains that Gibson’s concession goes to the ultimate issue of likelihood of confusion, rather
than to the fourth factor of the Frisch test. See Dissent at 12, nn.1-2. Although we conclude that the concession is best
understood as going to an individual factor, rather than the ultimate issue, we note that even if we were to adopt the
dissent’s position on this point, it would not lead us to a different result.
Nos. 04-5836/5837               Gibson Guitar Corp. v. Paul Reed Smith Guitars                                       Page 8


purchaser) mistakenly to believe that a product was manufactured by the trademark-holder. See
Esercizio v. Roberts, 944 F.2d 1235, 1245 (6th Cir. 1991), cert. denied, 505 U.S. 1219 (1992); see
also MCCARTHY ON TRADEMARKS § 23:7 (collecting cases). We conclude that neither initial-
interest confusion, nor post-sale confusion, nor any combination of two, is applicable in this case.
                   a. Initial-Interest Confusion
        The one case where we arguably have applied initial-interest confusion involved facts
strikingly different than those involved in the present dispute. In PACCAR, we were faced with a
dispute between Telescan, a company operating used-truck-locator web sites, and PACCAR, a truck
manufacturer which also operated its own used-truck-locator website. In PACCAR, Telescan was
using trademarks owned by PACCAR as part of the domain name of some of its used-truck-locator
web sites. Noting that “[a]n infringing domain name has the potential to misdirect consumers as
they search for web sites associated with the owner of a trademark,” we suggested that initial-
interest confusion analysis might appropriately be applied. PACCAR, 319 F.3d at 253. However,
our decision that PACCAR had established a likelihood of success on the15 merits on
  the likelihood-of-confusion issue did not rest on initial-interest confusion.         Instead,

         15
              The dissent reads far too much into our discussion of initial-interest confusion in PACCAR Inc. v. Telescan
Techs., L.L.C., 319 F.3d 243, 253 (6th Cir. 2003), which is specifically in reference to a dispute over Internet domain-
names:
                    TeleScan also contends that the district court erred in discounting the disclaimer included on
           its web sites. The district court found that TeleScan’s disclaimer does not remedy the confusion
           caused by the use of PACCAR’s trademarks in its domain names. An infringing domain name has
           the potential to misdirect consumers as they search for web sites associated with the owner of a
           trademark. A disclaimer disavowing affiliation with the trademark owner read by a consumer after
           reaching the web site comes too late. This “initial interest confusion” is recognized as an infringement
           under the Lanham Act.
Id. at 253 (emphasis added). The three cases we cited in support of the initial-interest-confusion comment in PACCAR
are also Internet cases. See id. (citing Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 464 (7th Cir. 2000)
(Internet sale of herbal products intended as alternatives to well-known prescription medications, using names for the
herbal products confusingly similar to those of the prescription medications); Brookfield Communications, Inc. v. West
Coast Entm’t Corp., 174 F.3d 1036, 1062 (9th Cir. 1999) (use of trademark “moviebuff.com” in metatags of a
competitor’s website); Green Prods. Co. v. Independence Corn By-Products Co., 992 F. Supp. 1070 (N.D. Ia. 1997)
(registration of website domain name confusingly similar to competitor’s trademarked name)). Our suggestion that
initial-interest-confusion doctrine applies to disputes over Internet domain names does not mean (as the dissent seems
suggest) that “initial interest confusion is a recognized theory of relief generally for [all types of] trademark
infringements.” Dissent at 12.
           To the contrary, the applicability of the initial-interest-confusion doctrine outside of the Internet context is an
issue of first impression in our circuit. Although other circuits have applied the initial-interest-confusion doctrine to find
trademark infringement based on use of a deliberately deceptive name or logo, see, e.g., Mobil Oil Corp. v. Pegasus
Petroleum Corp., 818 F.2d 254, 259 (2d Cir. 1987); Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway &
Sons, 523 F.2d 1331, 1342 (2d Cir. 1975), we are not aware of any circuit that has applied the initial-interest-confusion
doctrine to a trademark on a product’s shape.
           The potential ramifications of applying this judicially created doctrine to product-shape trademarks are different
from the ramifications of applying the doctrine to trademarks on a product’s name, a company’s name, or a company’s
logo. Cf. Versa Prods. Co. v. Bifold Co., 50 F.3d 189, 201-03, 207, 209, 212-13, 215 (3rd Cir. 1995) (discussing the
related context of product-configuration trade dress). Specifically, there are only a limited number of shapes in which
many products can be made. A product may have a shape which is neither functional nor generic (and hence which can
be trademarked) but nonetheless is still likely to resemble a competing product when viewed from the far end of a store
aisle. Thus, many legitimately competing product shapes are likely to create some initial interest in the competing
product due to the competing product’s resemblance to the better-known product when viewed from afar. In other words,
application of the initial-interest-confusion doctrine to product shapes would allow trademark holders to protect not only
the actual product shapes they have trademarked, but also a “penumbra” of more or less similar shapes that would not
otherwise qualify for trademark protection.
           In response, the dissent suggests that product-shape trademark-holders be required to demonstrate “that its
product shape identifies its source when viewed from the vantage point where the confusion is alleged to have occurred”
prior to presenting evidence of initial-interest confusion. Dissent at 13. This strikes us as a needlessly complicated and
unworkable inquiry. Particularly when the product is sold by many diverse retailers with varying display styles and store
Nos. 04-5836/5837               Gibson Guitar Corp. v. Paul Reed Smith Guitars                                      Page 9


we focused primarily on three other Frisch factors that we judged to be particularly important in an
Internet-domain-name case. See id. at 254-55. As always, our concern was with “whether the
defendant’s use of the disputed mark is likely to cause confusion among consumers regarding the
origin of the goods offered by the parties.” Id. at 249 (quotations omitted). Other circuits applying
the initial-interest confusion doctrine have generally focused on that same issue:       whether the
consumer might be misled about the source of the relevant product or service.16
         Gibson essentially argues that the shape of the PRS guitar leads consumers standing on the
far side of the room in a guitar store to believe they see Gibson guitars and walk over to examine
what they soon realize are PRS guitars. See, e.g., J.A. at 1451 (Carter Dep.) (“Just looking at the
guitars on the wall, I initially thought I was looking at Les Pauls, and[] on a closer look, I saw I
wasn’t.”). We decline to adopt such a broad reading of the initial-interest-confusion doctrine.
Many, if not most, consumer products will tend to appear like 17their competitors at a sufficient
distance. Where product shapes themselves are trademarked, such a theory would prevent
competitors from producing even dissimilar products which might appear, from the far end of an
aisle in a warehouse store, somewhat similar to a trademarked shape. Accordingly, we hold that
initial-interest confusion cannot substitute for point-of-sale confusion on the facts of this case.


configurations, it would seem to require the district court to conduct an initial hearing as to whether each instance of
alleged initial-interest confusion is admissible. As consumers will often observe a product from multiple different
locations, it seems difficult to determine in any non-arbitrary manner what observation distances are appropriate when
considering whether a given product shape creates initial-interest confusion (e.g., in front of the product shelf, from a
store aisle, from the store’s front door, etc.).
           Finally, our concerns about the effect of extending the initial-interest-confusion doctrine to product-shape
trademarks are particularly relevant in the summary-judgment context. To the extent we allow it to do so, evidence of
initial-interest confusion comes into the eight-factor Frisch test as a substitute for evidence of actual confusion. If our
belief that nearly all product-shape trademark-holders will be able to show an issue of fact as to whether a competing
product creates initial-interest confusion is correct, application of the initial-interest-confusion doctrine in the product-
shape context would make it substantially easier for product-shape trademark-holders to survive a defendant’s summary-
judgment motion than for plaintiffs alleging any other type of trademark infringement. (Contrary to the dissent’s view,
see Dissent at 14 n.7, product-shape trademark-holders are perfectly capable of protecting their rights without the initial-
interest-confusion doctrine: they must simply show, for example, that the marks are sufficiently similar or that
purchasers exercise sufficiently little care in choosing a product to show confusion at the point of sale). Given severe
anti-competitive effects such a decision could have, we do not believe it is appropriate to extend the initial-interest-
confusion doctrine in this manner.
           Given the limited fact situation we have before us, we do not go so far as to hold that there is never a
circumstance in which it would be appropriate to apply the initial-interest-confusion doctrine to a product-shape
trademark. However, we are unable to imagine such a situation at this juncture, and we do hold that the doctrine cannot
apply on the facts of this case.
         16
             See, e.g., Playboy Enters., Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1024-26 (9th Cir. 2004)
(finding a likelihood of initial-interest confusion when survey results showed that many individuals running Internet
searches for trademarked terms would incorrectly believe that banner ads run by competitors were sponsored by or
affiliated with the trademark owner); Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188, 204 (5th Cir. 1998) (applying
initial-interest-confusion analysis to find trademark infringement by nightclub operating under the name, “The Velvet
Elvis,” because confusion over whether the club was associated with Elvis Presley could “bring[] patrons in the door”);
Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 259 (2d Cir. 1987) (approving district court finding of actual
confusion based on “the likelihood that Pegasus Petroleum would gain crucial credibility in the initial phases of a deal”
by using mark confusingly similar to Mobil’s flying horse); Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway
& Sons, 523 F.2d 1331, 1342 (2d Cir. 1975) (concluding that company manufacturing pianos under the name “Grotrian-
Steinweg” could be found to be infringing the “Steinway” trademark because of “the likelihood that a consumer, hearing
the ‘Grotrian-Steinweg’ name and thinking it had some connection with ‘Steinway’, would consider it on that basis”).
But see Brookfield Communications, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1062 (9th Cir. 1999) (concluding
that use of the trademark “MovieBuff” in metatags of a competitor’s website resulted in a likelihood of initial-interest
confusion even without confusion as to source).
         17
          We express no opinion on the extent to which trademark law can properly apply to product shapes. Cf.
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 172-73 (1995).
Nos. 04-5836/5837              Gibson Guitar Corp. v. Paul Reed Smith Guitars                                   Page 10


                  b. Post-Sale Confusion
         The one published case where we have applied post-sale confusion is also clearly
distinguishable from the present case. Esercizio, a trade-dress case, involved Ferrari sports cars
which were manufactured in deliberately limited quantities “in order to create an image of
exclusivity.” Esercizio, 944 F.2d at 1237. The alleged infringer built fiberglass kits intended to be
“bolted onto the undercarriage of another automobile such as a Chevrolet Corvette or a Pontiac
Fiero” in order to make the “donor car” look like a far-more-expensive Ferrari. Id. at 1238. Our
concern in Esercizio was that “Ferrari’s reputation in the field could be damaged by the marketing
of Roberts’ [clearly inferior] replicas.” Id. at 1245. Such a concern is not present here, where
Gibson concedes that PRS guitars are not clearly inferior to Gibson guitars. See, e.g., Gibson Br.
at 5, 23. Accordingly, post-sale confusion cannot serve as a substitute for point-of-sale confusion
in this case.
                  c. Gibson’s Smoky-Bar Theory of Confusion
        Finally, Gibson argues that, taken together, the initial-interest-confusion and post-sale-
confusion doctrines should be extended to include something that we can only describe as a “smoky-
bar theory of confusion.” Initial-interest-confusion doctrine, which we have already rejected on the
facts of this case, applies when allegedly improper use of a trademark attracts potential purchasers
to consider products or services provided by the infringer. Post-sale-confusion doctrine, which we
have also rejected on the facts of this case, applies when allegedly improper use of protected trade
dress 18
       on a lower-quality product diminishes the reputation of the holder of the rights to that trade
dress. In the smoky-bar context, however, Gibson does not suggest that consumer confusion as
to the manufacturer of a PRS guitar would lead a potential purchaser to consider purchasing a PRS,
rather than a Gibson, or that Gibson’s reputation is harmed by poor-quality PRS guitars. Rather,
Gibson argues that this confusion occurs when potential purchasers see a musician playing a PRS
guitar and believe it to be a Gibson guitar:
         In the context of guitar sales, initial interest confusion is of real consequence. Guitar
         manufacturers know that they can make sales by placing their guitars in the hands
         of famous musicians. On a distant stage, a smoky bar, wannabe musicians see their
         heroes playing a guitar they then want.
Gibson Br. at 20-21. As Gibson concedes that PRS produces high-quality guitars, we do not believe
such an occurrence could result in confusion harmful to Gibson. If a budding musician sees an
individual he or she admires playing 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.
         2. The Summary Judgment Motions
       We have determined as a matter of law that initial-interest confusion, post-sale confusion,
and Gibson’s “smoky-bar theory of confusion” cannot be used to demonstrate infringement of the
trademark at issue in this case. Gibson has conceded that point-of-sale confusion does not occur
between these high-priced guitars, and our review of the record does not suggest otherwise.
Accordingly, there is simply no basis on which Gibson can show confusion that would demonstrate
trademark infringement in violation of the Lanham Act. See KP Permanent Make-Up, Inc. v.
Lasting Impression I, Inc., 125 S. Ct. 542, 547 (2004) (noting that a claim of trademark infringement
under the Lanham Act “requires a showing that the defendant’s actual practice is likely to produce

         18
            As post-sale confusion clearly does not apply in this case, we need not decide whether it can ever be properly
applied in the context of a trademark claim, rather than trade-dress claim.
Nos. 04-5836/5837       Gibson Guitar Corp. v. Paul Reed Smith Guitars                 Page 11


confusion in the minds of consumers about the origin of the goods or services in question”).
Accordingly, PRS, rather than Gibson, must be granted summary judgment on Gibson’s trademark-
infringement claim.
                                    III. CONCLUSION
         With respect to Gibson’s trademark-infringement claim, we REVERSE the district court’s
decision granting summary judgment in favor of Gibson, REVERSE the district court’s decision
denying summary judgment in favor of PRS, and VACATE the permanent injunction issued by the
district court. We DENY all other claims and motions AS MOOT, and REMAND the case to the
district court with instructions that summary judgment be entered in favor of PRS on Gibson’s
trademark-infringement claim.
Nos. 04-5836/5837               Gibson Guitar Corp. v. Paul Reed Smith Guitars                                   Page 12


                 ________________________________________________________
                       CONCURRING IN PART, DISSENTING IN PART
                 ________________________________________________________
        KENNEDY, Circuit Judge, concurring in part and dissenting in part. I agree that the district
court erred in granting summary judgment in favor of Gibson and I also agree that Gibson cannot
maintain its trademark infringement claim either on a theory of likelihood of confusion  1
                                                                                             at the point-
of-sale (for it has disclaimed that a consumer could  be  confused at the point-of-sale)   or on a theory
of post-sale confusion.2 However, because I believe that a product shape trademark holder should
be able to present evidence to maintain a trademark infringement claim on the theory of initial-
interest confusion, I dissent with respect to this issue.
        First, this court has recognized initial-interest confusion as an infringement under the
Lanham Act. See PACCAR Inc., v. Telescan Technologies, L.L.C., 319 F.3d 243, 253 (6th Cir.
2003) (citing Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 464 (7th Cir. 2000) (“Such
confusion, which is actionable as an infringement under the Lanham Act, occurs when a consumer
is lured to a product by its similarity to a known mark, even though the 3consumer realizes the true
identity and origin of the product before consummating a purchase.”)). Second, a product shape
can serve as a trademark, i.e. it can identify the source of the product. See Qualitex Co. v. Jacobsen
Products Co., Inc., 514 U.S. 159, 172-73 (1995) (recognizing that the Senate Report accompanying
the Lanham act revision of 1988 stated that the “revised definition intentionally retains . . . the words
‘symbol’ or ‘device’ so as not to preclude the registration of colors, shapes, sounds or configurations
where they function as trademarks.”) (citation omitted and ellipsis in original); see also Kohler Co.,
v. Moen Inc., 12 F.3d 632, 636 (7th Cir. 1993) (concluding, in a case involving faucet manufacturer,
which received a trademark after demonstrating that “purchasers of its products recognized the
source of its faucets by their distinctive shapes,” that product configurations were entitled to
trademark protection). Since a product shape can serve as a trademark, and since initial interest
confusion is a recognized theory of relief generally for trademark infringements, I believe that a
product shape trademark holder whose product shape does in fact identify the product’s source
should not be precluded from presenting evidence that a competitor’s product shape causes
consumers to be attracted to it because of its similarity to a trademark holder’s mark.

         1
          The majority states, “Gibson’s concession that there is no point-of-sale confusion (which goes to the fourth
Frisch factor, actual confusion) is dispositive of Gibson’s claim.” I believe that what is dispositive of any trademark
infringement claim brought on a theory of likelihood of confusion at the point-of-sale is not Gibson’s concession of the
fourth Frisch factor, which goes to evidence of actual confusion, but rather Gibson’s concession that there is no
likelihood of consumer confusion at the point-of-sale, which is the ultimate issue to which the Frisch factors are used
as a guide to help address when analyzing a trademark infringement claim brought under a theory of likelihood of
confusion at the point-of-sale.
         2
           The last sentence of the post-sale confusion section reads, “[P]ost-sale confusion cannot serve as a substitute
for point-of-sale confusion in this case.” I view the post-sale confusion theory of relief not, when applicable, as serving
as a substitute for point-of-sale confusion, but rather as a distinct theory of relief. When the alleged consumer confusion
takes place at the point-of-sale, the ultimate issue is likelihood of confusion at the point-of-sale, in which the plaintiff
will introduce evidence of point-of-sale confusion. However, when the alleged consumer confusion takes place in the
marketplace (post-sale), then the ultimate issue is likelihood of post-sale confusion, in which the plaintiff introduces
evidence of post-sale confusion.
         3
           The majority, in footnote 15, explains that PACCAR’s discussion of initial interest confusion was specifically
in reference to a dispute over internet-domain names. Obviously, as applied in that case, the doctrine’s application
related to a company’s name trademark as used in an internet-domain name. All trademarks, whether they be a
company’s name, logo, or a product shape, do the same thing: they identify the source of a good. Since we (and many
other circuits) have recognized the doctrine, the majority must explain why this recognized doctrine should not apply
to trademarked product shapes. I find the majority’s explanation unpersuasive.
Nos. 04-5836/5837               Gibson Guitar Corp. v. Paul Reed Smith Guitars                                   Page 13


         The majority’s reason for rejecting the application of initial interest confusion to product
shapes is based upon the concern that since many product shapes within the same category will
appear similar when viewed from a sufficient distance, if the initial-interest confusion doctrine were
applied to product shapes, a product shape trademark holder could prevent competitors from
producing even dissimilar products that appeared from a sufficient distance to be somewhat similar
to a trademarked shape. This concern, however, is misplaced. Evidence that a competitor’s product
shape is similar to a trademark holder’s product shape when viewed from afar is irrelevant unless
the product shape trademark holder maintains that its product shape identifies its source when
viewed from afar. For if a product shape trademark holder does not assert that its product shape
identifies its source when viewed from a certain distance, then any alleged confusion between the
trademark holder’s product shape and a competitor’s product shape would not support the trademark
holder’s claim for infringement. If a product shape trademark holder does assert that its product
shape serves to identify the product’s source when viewed from a distance where many competitor
products appear substantially the same, then this will be evidence that the trademark holder’s
product shape does not identify its source. If most product shapes in the same product category have
similar shapes, a product shape trademark holder will have a difficult time establishing that its
trademark identifies the source of its product when viewed from afar, for the further one is away
from a product, the more similar products in the same category will look to each other and, thus, the
less likely a product shape will identify the source of the product (i.e. serve as a trademark) from that
vantage point.4 In other words, a product shape trademark holder will not be able to present
probative evidence of initial interest confusion unless it first shows that its product shape identifies
its source when viewed from the vantage point where the confusion is alleged to have occurred.
       Thus, this preliminary question (whether a product shape identifies its source when viewed
from the point where the confusion is alleged to have occurred), when in dispute, as it is here, must
be addressed before determining if there is an issue of fact as to whether a competitor’s product5
shape causes initial interest confusion due to its similarity to a trademark holder’s product shape.


         4
            The majority repeats its concern underlying its rationale for rejecting the application of initial interest
confusion to product shapes in footnote 15 by noting that since many competing products will create initial interest due
to their resemblance with a trademarked product shape when viewed from afar, a trademark product shape holder would
be able to protect a “penumbra” of more or less similar shapes. If there exists a “penumbra” of products in the
marketplace with shapes similar to a trademarked product shape when viewed from afar, then the trademarked product
shape would likely fail to identify its source. If there does not exist a “penumbra” of products with shapes similar to a
trademarked product shape when viewed from afar, and if the product shape does identify its source when viewed from
that vantage point, and if the functionality doctrine does not prevent the application of the initial interest confusion
doctrine when such confusion is alleged, then I believe a product shape trademark holder should be able to maintain a
trademark infringement claim on the theory of initial interest confusion.
         5
           The majority views this inquiry as “needlessly complicated and unworkable.” I view it as essential. Since,
as noted before, the purpose of every trademark is to identify the source of its good, if a trademark does not identify its
source, a trademark holder cannot successfully prosecute a trademark infringement claim. If a product shape trademark
holder believes that a competitor’s product causes confusion as to its source due to the competitor’s products
resemblance to the trademark holder’s product shape when viewed from a store’s aisle or front-door, then the product
shape trademark holder will need to establish that its trademark identifies its source when viewed from those perspectives
for any evidence of such confusion to support its claim. Thus, the relevant observation distance or location for
determining whether the trademark holder’s product shape identifies its source is from whatever distance or location the
trademark holder alleges confusion occurred.
          It is true, of course, that a product shape trademark holder could argue that a competitor’s product causes
confusion as to its source when viewed from varying perspectives. Assuming the defendant argues that the trademark
holder’s product shape does not identify its source when viewed from any of those perspectives, the court will need to
address this argument. In this case, the only relevant allegation of initial-interest confusion is from Gibson’s expert, who
claimed that upon entering Gruhn’s Guitar store in Nashville, he looked at what he thought was a wall of Gibson Les
Paul guitars to discover, upon closer inspection, that the guitars were actually PRS Singlecuts. Since PRS argues that
Gibson’s guitar shape does not identify its source, Gibson must establish that its shape does identify its source from the
perspective where the alleged confusion occurred. Ultimately, Gibson may not be able to succeed in establishing this
Nos. 04-5836/5837               Gibson Guitar Corp. v. Paul Reed Smith Guitars                                      Page 14


For if the product shape does not identify its source, then, logically, there can be no confusion as to
the source of the product due to the product’s shape, since, in such a case, a consumer would not
associate the product’s shape with its source.
        Here, PRS argues that, as there are only a few general shapes in which guitars are made, and
since there are numerous single-cutaway style guitars in the market, a consumer would not, and,
indeed, could not, identify the source of a guitar on the basis of its shape. Although PRS would
likely prevail on this issue, I cannot say, in light of the record as developed, that it has met its burden
establishing that there is no genuine issue of material fact as to whether the shape of Gibson’s guitar
identifies its source.
        Since the district court incorrectly analyzed the issue of whether Gibson’s trademark served
to identify its source from the distance6 where the confusion was alleged to have occurred, I would
remand for consideration of this issue. If it were found that the shape of Gibson’s guitar does serve
to identify its source from the distance where the confusion is alleged to have occurred, then I
believe that Gibson should be entitled, just as any other trademark holder would be, to present
evidence that a competitor’s      use of a similar mark causes confusion as to the source of the
competitor’s product.7 Thus, I respectfully dissent.




point, but PRS has not met its burden to be entitled to summary judgment.
         6
           The district court made two fundamental errors with respect to its analysis of this issue. First, the district court
improperly considered factors beyond the shape of Gibson’s guitar, such as knob placement and color, in determining
that Gibson’s trademark identified its source, since Gibson’s trademark consists only of the shape of the guitar. And
second, the district court improperly concluded that since evidence of widespread use of similar marks “is not sufficient
to rebut as a matter of law the presumption” that an incontestable mark identifies its source, such evidence “does not
warrant further consideration.” 311 F. Supp. 2d 690, 718. Rather, this evidence, which goes to the heart of the issue
of whether Gibson’s shape can identify its source, deserved significant consideration, even if such evidence were found
not to be sufficient as a matter of law to establish that Gibson’s mark does not identify its source.
         7
           If the initial interest confusion doctrine were not applicable to product shape trademarks, I believe that product
shape trademark holders would be put to a significant disadvantage compared to non-product shape trademark holders
since this type of confusion is likely the only type of confusion that could arise with product shapes. It will be the rare
case for there to exist a likelihood of confusion with respect to product shape trademarks at the point of sale since any
confusion created by a product’s similar shape will be dispelled at the point of sale, as most products will have a
distinguishing feature that is identifiable from this vantage point, such as its producer’s name. Thus, if initial interest
confusion were not a viable theory upon which a product shape trademark holder could proceed, a product shape
trademark holder may be quite limited, if not foreclosed, from successfully prosecuting a trademark infringement claim.
