The estate of Ted McCarty and PRS are seeking to cancel Gibson’s trademark for “Theodore.” The case, set to resume in 2024, has also spawned a new dispute – one over PRS’ Silver Sky Nebula mark, which Gibson alleges conflicts with its Silverburst mark.

• READ MORE: The story behind the Gibson Theodore
  

This latest conflict between PRS and Gibson – for there have been a few – was sparked by the launch of Gibson’s Theodore guitar. The instrument was, according to Gibson’s Mat Koehler, based on an unused Ted McCarty design, one only recently discovered in the brand’s archives.

Theodore – or Ted – McCarthy was a guitar designer who worked at Gibson between 1948 and 1966. He helmed the company from 1950 till 1966, often called the brand’s golden era. Like Leo Fender, McCarty didn’t actually play guitar himself – he would interview players, and base his designs on what they asked for. He was responsible for the design of many of Gibson’s most iconic instruments, including the Les Paul, the ES-335, the Flying V, the SG and the Explorer.

Importantly, after leaving Gibson, he became Paul Reed Smith’s mentor, helping him launch his own brand. The PRS McCarty, launched in 1994, was named in tribute to him, and aimed to capture the best aspects of his guitar designs. McCarty died in April of 2001.

In July 2022, shortly after the Theodore guitar itself was launched, Gibson was granted the trademark for “Theodore” for use in relation to stringed instruments. But in September 2022, PRS and McCarty’s estate petitioned to cancel this trademark, citing two main arguments.

Their petition first claims that the mark misleads guitarists into assuming McCarty’s estate officially sanctioned the guitar, asserting that “consumers of guitars would recognise the name Theodore as identifying Theodore McCarty,” however Gibson does not have the right to use his name or public persona.

Secondly, it claims a potential confusion with PRS’ existing trademark for “McCarty”, used for the guitar model launched in 1994. Here the argument is that, because PRS uses its McCarty mark on guitars, and guitar consumers would recognise “Theodore” as referring to the same Ted McCarty, “consumers of guitars are likely to mistakenly believe that PRS also owns, sponsors, endorses, licences or is in some way affiliated with Registrant’s [Gibson’s] THEODORE mark for ‘Stringed musical instruments’ and products sold under that mark.”

Gibson’s response – and counterclaim

In response to this claim, Gibson filed to dismiss, arguing that PRS had not demonstrated that guitarists would confuse the McCarty and Theodore marks, as they are different enough in sound and spelling – and no other strong link was shown by the initial complaint. Gibson even claimed that guitarists could presume the name referred to a different Theodore, alleging that PRS had not demonstrated that Ted McCarty is well-known enough to be presumed as the guitar’s namesake.

The parties then went back and forth, arguing for and against the dismissal for months. This continued until June of 2023, when Gibson filed its ‘answer’ to the initial claim – rather than just a motion to dismiss it. But, it also filed a counterclaim petitioning to cancel PRS’ mark for “Silver Sky Nebula.”

This counterclaim has, as of 29 December 2023, been ‘severed.’ This means it’s now being treated as a separate case entirely, rather than part of the original claim. The Theodore dispute – which was suspended while the motion to sever was considered – is now set to resume at the end of January 2024, and now both sides must demonstrate whether or not the Theodore mark conflicts with PRS’ McCarty mark.

The counterclaim, and new case surrounding the Silver Sky Nebula mark

Gibson is arguing for the cancellation of PRS’ trademark for “Silver Sky Nebula”. The mark is for a limited-edition version of PRS’ Silver Sky guitar, one with a purple/blue ‘flip flop’ finish that changes hue depending on the angle it’s seen from. Gibson alleges that PRS’ use of “Silver Sky Nebula” conflicts with Gibson’s own Silverburst trademark, its name for a silver guitar finish that fades to black around the edges.

Gibson is claiming that potential guitar customers might assume Gibson’s involvement in the Silver Sky Nebula specifically, due to the name being similar to Silverburst. It has not requested any legal repercussions for PRS, beyond the cancellation of the trademark. In response, PRS denied basically all of Gibson’s claims about how these marks conflict. Since the claim was severed into its own case, no further filings have been made by either party.

It is not particularly clear as to why Gibson’s cancellation claim is limited to “Silver Sky Nebula” rather than just “Silver Sky” overall.

We contacted PRS and Gibson for comment on both cases, however, PRS declined, and Gibson did not reply.

What happens from here?

It is unlikely that either company will have to stop making and selling any guitars that they currently do. Both the Theodore and Silver Sky Nebula were limited-edition models, and are no longer being made or marketed. However, the case surrounding the Theodore mark could set a precedent regarding any products based on Ted McCarty’s name and time at the brand. If PRS and the McCarty estate are successful, a reissue of the Theodore, or any new guitars explicitly marketed around his name, could be off the table.

Similarly, if Gibson is successful in cancelling the Silver Sky Nebula mark, PRS won’t be able to reissue that version of the Silver Sky, at least with that name. And, now that the Nebula case has been severed into its own claim, there’s the possibility that both claims are successful – a trademark cancellation for a trademark cancellation, if you like, with Gibson losing Theodore and PRS losing Silver Sky Nebula.