GurglePot applied for a fish-shaped pitcher described as a 3D “configuration of a fish-shaped container” in Class 21 for “Carafes; Ceramic sculptures, vases, vessels, bowls, plates and pots; Decanters; Flower vases and bowls; Holloware, namely, ceramic, porcelain, or earthenware water pitchers; Jugs; Pitchers; Vases; Watering pots.” Along with the application, GurglePot submitted the following as a drawing:
And the below as evidence of use:
Design Code Search
The USPTO assigned design codes: 03.19.24 – Stylized fish, whales, seals, sea lions, 03.19.25 Catfish, Other fish (this section includes basic fish), Piranhas, Salmon, Tuna, and 11.03.08 Pitchers, beverage.
A search of design code 03.19.24 and class 21 shows fish designs such as:
03.19.25 and class 21 reveals other fish designs:
11.03.08 and class 21 reveals pitcher designs:
First Office Action – 2(d) objection in view of prior registration for fish-shaped pitcher
The Examining Attorney cited prior registration (U.S. Registration No. 3572583), shown top right of the design code search results and here against GurglePot’s design .
GurglePot replied by indicating that there is a consent agreement between the registrant, New Shreve, Crump & Low and GurglePot. Among other things, the parties agreed that there are “15 distinguishing material characteristics between the Gurgling Cod Pitcher [Registrant] and the GurglePot Pitcher.” Specifically, GurglePot in its reply to the USPTO stated:
- There is a signed consent agreement between the applicant and the cited prior registrant, which complies with TMEP 1207.01(d)(viii) and the Federal Circuit cases cited therein.
- The generalized, open-ended, imprecise scope of alleged similarity in the trade dress would grant the existing registrant exclusivity over all pitchers shaped like a vertical curved fish – an exclusivity which the registrant does not possess in the marketplace – thereby contravening the U.S. Supreme Court’s holding on product design trade dress in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000).
- The applied-for mark is significantly different in appearance, commercial impression, and marketing channels from the cited registered.”
And indeed photographs of the products do show many differences:
Second Office Action – drawing requirements
The Examining Attorney agreed to accept the consent agreement but issued another office action. This objection related to the drawing:
“In addition to these drawing requirements, applicant must also submit a clear and concise description of the mark that does the following:
(1) Indicates that the mark is a three-dimensional configuration of the goods or their packaging or of a specific design feature of the goods or packaging;
(2) Specifies all the elements in the drawing that constitute the mark and are claimed as part of the mark; and
(3) Specifies any elements which are not part of the mark and indicates that the matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark.”
Applicant replied with an updated description of the mark, “The mark consists of a three-dimensional configuration of a fish-shaped container. All of the elements in the drawing are claimed as part of the mark. The heavier solid lines are contour lines, which define a form or an edge of an element of the design; the lighter solid lines are used to show depth and distance in a two-dimensional drawing of the three-dimensional object. The drawing does not include any broken or dotted lines” and an updated drawing:
Third Office Action – insufficient evidence of acquired distinctiveness
The Application was approved for publication but withdrawn because of “insufficient evidence of acquired distinctiveness pointing to the configuration design as a source of goods.” Specifically, the Examining Attorney stated: “The evidence, while plentiful, does not point to the fish shape of the goods; rather, it touts the ‘gurgling’ effect of the ceramic pitcher. The goods are primarily branded under the GURGLE POT name, and not the actual configuration.” The Examining Attorney is referring to “look for” advertising that helps bolster an applicant’s claim that its configuration design is a source indicator (e.g., look for the fish-shaped pitcher).
GurglePot provided further evidence of use with several comments from third parties mentioning the fish configuration:
“whimsical and fun fish shaped gurgle pot”
“Add some whimsy to your dinner table with a Gurgle Pot. The fish shaped pitcher …”
“The gurgle pot is a brightly coloured fish-shaped pot …”
Based on greater than 5 years of use and the additional evidence of use referring to the fish shape, the application was again approved for publication with a registration (U.S. Reg. 5754251) issuing on May 21, 2019.
Interesting notes about this application
1) It is unusual to overcome a likelihood of confusion citation with a consent agreement. That is, it is not a given that a consent agreement will be accepted. There are specific criteria that must be met and the USPTO can and does reject these agreements.
2) To support acquired distinctiveness, the Examining Attorney requested “look for” advertising to support GurglePot’s configuration application. See TMEP §1212.06(b) Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB 2010) (finding absence of ‘look for‘ advertisements damaging to attempt to demonstrate acquired distinctiveness of proposed configuration mark).