PRS has dropped its objection to Gibson’s Theodore trademark – but the dispute continues outside of the courts

PRS Guitars has announced it is dropping its objection to Gibson’s Theodore trademark application. However, while legally settled, the personal dispute behind the action rumbles on with both parties debating their respective claims to McCarty’s legacy.

Ted McCarty’s daughter Sue Davies has issued a statement, via PRS, announcing she remains unhappy about Gibson’s conduct regarding the use of her father’s given name, ‘Theodore’.

Gibson, in turn, has shared correspondence with Davies with Guitar World, pointing out that it has been in contact with McCarty’s family – and reasserting that it’s well within its right to use the name.

What is the origin of the Theodore dispute?

The dispute centers around Gibson’s Theodore model, which was first unveiled in 2022. The design is based on an old body shape sketch created during the tenure of the firm’s Golden Era President McCarty, which was later found in the Gibson archives.

McCarty is a name that inspires awe in guitar circles – as the man who oversaw the introduction of the majority of Gibson’s most recognisable models, including the Les Paul, SG, ES-335, Flying V and the Explorer – and the Theodore moniker alludes to that history.

McCarty later found a home and a successful working relationship with PRS Guitars. As a result, PRS currently owns the trademark to the McCarty name – and objected to Gibson’s application to register the allusive Theodore trademark.

The PRS line

On Monday (July 15) PRS issued a statement confirming it has dropped its objections to Gibson’s trademark registration. It also confirms that, in return, Gibson has dropped objections to PRS’s use of the ‘594’ and ‘Silver Sky Nebula’ trademarks.

However, alongside the decision came a pointed statement about what it describes as McCarty’s decision “to align with PRS” and its continuing relationship with the late guitar icon’s family.

“We believe the story of Ted and PRS is well understood in the guitar community,” said PRS Guitars COO, Jack Higginbotham.

“Ted personally chose to align with PRS and had a deep respect and appreciation for Paul and our mission to build quality guitars. We honor the man and the relationship we had with him and the relationship we have with his family to this day.

“While this agreement may not preclude Gibson from releasing future products under the ‘Theodore’ trademark, PRS will focus on honoring Ted McCarty with innovations and instruments that reflect positively on his legacy.”

What do McCarty’s family say?

A further sting in the tail for Gibson comes in a statement – provided by PRS – from McCarty’s sole surviving child, Sue Davis, in which she makes it abundantly clear that the McCarty family is not happy with the introduction of the Theodore model – or the use of the name.

“Our decision not to fight an expensive battle does not mean that the McCarty family appreciates Gibson’s conduct,” says Davis, in a statement provided to the press.

“No one from Gibson ever contacted me or any of my family to ask permission to use my father’s given name in promoting new Gibson products. Had Gibson sought our permission, we would have declined for several reasons.

“After the Theodore trademark was registered, the McCarty family joined PRS in seeking to cancel the trademark and asking Gibson to stop using the trademark ‘Theodore’ in association with my father.

“I would strongly prefer that Gibson respect the family’s wishes and stop using my father’s name as a trademark in promoting products – products that to my knowledge he never approved of for production. Meanwhile, we look forward to continuing the relationship with PRS and its well-regarded McCarty branded products.”

What does Gibson say?

Guitar World contacted Gibson for comment and the firm alleged, in turn, that PRS’s statement was “untrue on a number of levels”, pointing to McCarty’s continued cooperation with the firm in his later life – namely around its 1994 Historic Reissues.

“Ted McCarty was the President of Gibson from 1950 through 1966, he was a legend and was at Gibson for almost two decades,” reads a statement from Gibson.

“At the height of his creative output at Gibson, around 1957 Ted officially designed the Theodore guitar and Gibson owns this trademark. Gibson believed it would be received in a positive way as we have been honoring the legacy of our President during that time.

“The estate nor PRS has any rights to the trademark Theodore. They have never filed for protection of this mark and do not own a registration. Gibson reached out to the estate to collaborate when they showed an interest in the Gibson Theodore trademark.”

While Gibson does not specifically refute Davies’ claim that it did not ask permission to use the ‘Theodore’ name before introducing the model, it has shared a letter with Guitar World – written in reply to Davies in May 2022, following the model’s introduction – in which it discusses the prospect of collaboration.

In the letter – dated May 16, 2022 – the firm outlines McCarty’s contribution to Gibson and notes, somewhat pointedly, that, “More sound has been recorded, produced and performed with Gibson guitars than any other brand, including all the imitators combined.

“The Golden Era was not just Gibson’s, but rather shaped the future of guitars across all brands forever. Mr. McCarty’s direct and successful tenure of nearly 20 years at Gibson is widely acknowledged and accepted by the music industry... These [impacts] are immeasurable and are woven into the fabric of Gibson’s history.”

It also asserts its position “that we are within our rights to reference and promote Mr. McCarty’s extraordinary legacy as a Gibson employee.”

The letter then strikes a more conciliatory tone at its close, inviting McCarty’s daughter to visit Gibson’s Nashville facilities – noting “while respecting your limited relationship with PRS, we would welcome the opportunity to discuss these matters with you directly including ways in which we can collaborate to honor Ted McCarty’s legacy at Gibson.”

What happens now?

Ultimately, it is clear from both parties’ statements that neither side is fully satisfied. PRS and McCarty’s family make it clear that they would still prefer Gibson avoids using the Theodore name and model – and Gibson argues it is perfectly within its rights to do so.

However, neither side is currently pursuing legal action, so it seems that – having both put their spin on it – the current stalemate will persist for the foreseeable future.