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GurglePot, Inc. v. New Shreve, Crump & Low LLC

United States District Court, D. Massachusetts

December 23, 2015

GURGLEPOT, INC., Plaintiff/Counterclaim Defendant,
v.
NEW SHREVE, CRUMP & LOW LLC, Defendant/Counterclaim Plaintiff

          For GurglePot, Inc., a Washington corporation, Plaintiff: David B. Stanhill, John J. McGivney, LEAD ATTORNEYS, Rubin & Rudman LLP, Boston, MA; Jonathan I. Feil, PRO HAC VICE, Simburg, Ketter, Sheppard & Purdy, LLP, Seattle, WA.

         For New Shreve, Crump & Low LLC, a Delaware limited liability company, Defendant: Anthony E. Rufo, Julia Huston, LEAD ATTORNEYS, PRO HAC VICE, Foley Hoag LLP, Boston, MA; Seann C Colgan, LEAD ATTORNEY, Steven W Fogg, CORR CRONIN MICHELSON BAUMGARDNER & PREECE, SEATTLE, WA.

         For New Shreve, Crump & Low LLC, a Delaware limited liability company, Counter Claimant: Anthony E. Rufo, Julia Huston, LEAD ATTORNEYS, Foley Hoag LLP, Boston, MA; Seann C Colgan, LEAD ATTORNEY, Steven W Fogg, CORR CRONIN MICHELSON BAUMGARDNER & PREECE, SEATTLE, WA.

         For GurglePot, Inc., a Washington corporation, Counter Defendant: Jonathan I. Feil, Simburg, Ketter, Sheppard & Purdy, LLP, Seattle, WA.

         MEMORANDUM OF DECISION AND ORDER ON PLAINTIFF'S MOTION TO DISMISS COUNTERCLAIMS

         Judith Gail Dein, United States Magistrate Judge.

         I. INTRODUCTION

         The plaintiff, GurglePot, Inc. (" GurglePot" ), designs and sells a line of fish-shaped ceramic pitchers under the registered trademark " GurglePot." The defendant, New Shreve, Crump & Low LLC (" New SCL" ), owns and operates fine jewelry stores with locations in Boston and Chestnut Hill, Massachusetts. In addition to sales of jewelry and other gift items, New SCL markets and sells a line of cod-shaped ceramic pitchers under the trademark " Gurgling Cod." It also owns a trademark registration for certain elements of the Gurgling Cod trade dress, and claims an exclusive right to use that trade dress in connection with the marketing, distribution and sale of ceramic pitchers in the United States.

         In December 2013, after New SCL accused GurglePot of infringing upon its trademark rights, GurglePot filed this action against New SCL in the United States District Court for the Western District of Washington. The matter was transferred to this court in June 2014. By its Second Amended Complaint, GurglePot is seeking cancellation of New SCL's trade dress registration, a declaratory judgment that New SCL's trade dress is invalid and that GurglePot's pitcher does not infringe an enforceable trade dress, and monetary and injunctive relief for New SCL's alleged tortious interference with GurglePot's business expectations and relations. In response to the plaintiff's claims, New SCL has asserted Counterclaims against GurglePot for infringement of its registered trade dress pursuant to Section 32 of the Lanham Act, 15 U.S.C. § 1114(1) (First Counterclaim); trade dress infringement, unfair competition and false designation of origin pursuant to Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (Second Counter-claim); common law trade dress infringement and unfair competition (Third Counterclaim); and unfair and deceptive acts and practices in violation of Mass. Gen. Laws ch. 93A (Fourth Counterclaim).

         The matter is before the court on the " Plaintiff's Motion to Dismiss Counterclaims" (Docket No. 76), by which GurglePot is seeking dismissal of the Counterclaims for failure to state a claim under Fed.R.Civ.P. 12(b)(6). The plaintiff contends that all of New SCL's claims must fail as a matter of law because its Gurgling Cod product is ineligible for trade dress protection under the Lanham Act, and is otherwise unprotected under federal copyright or patent law. As described below, GurglePot's assertion that New SCL's product falls outside the scope of the Lanham Act, and cannot qualify for protection under trademark law, is at odds with the relevant authority. Accordingly, and for all the reasons detailed herein, this court finds that New SCL has stated claims for relief under federal and state law, and that the plaintiff's motion to dismiss must be DENIED.

         II. STATEMENT OF FACTS

         When ruling on a motion to dismiss a counterclaim for failure to state a claim pursuant to Fed.R.Civ.P. 12(b)(6), " [t]he court must accept all factual averments in the counterclaim as true and draw all reasonable inferences in the counter-claimant's favor." Brandt v. Advanced Cell Tech., Inc., 349 F.Supp.2d 54, 57 (D. Mass. 2003). In doing so, the court " can consider (a) 'implications from documents' attached to or fairly 'incorporated into the [counterclaim],' (b) 'facts' susceptible to 'judicial notice,' and (c) 'concessions' in [the counterclaim] plaintiff's 'response to the motion to dismiss.'" Schatz v. Republican State Leadership Comm., 669 F.3d 50, 55 (1st Cir. 2012) (quoting Arturet-Velez v. R.J. Reynolds Tobacco Co., 429 F.3d 10, 13 n.2 (1st Cir. 2005)). Applying this standard to the instant case, the relevant facts are as follows.[1]

         New SCL's Gurgling Cod Trade Dress

         The defendant, New SCL, is the owner and operator of the Shreve, Crump & Low fine jewelry stores. (Countercl. ¶ 7). The first such store was established in Boston in 1796, and is one of the oldest jewelry stores in the country. (Id. ¶ 8). It has long had a reputation as a purveyor of quality jewelry, watches and giftware. (Id.). New SCL has been operating the Shreve, Crump & Low stores in Boston and Chestnut Hill, Massachusetts since 2006, when it purchased substantially all of the assets of the business. (Id. ¶ 9; 2nd Am. Compl. (Docket No. 47) ¶ 11).

         In addition to jewelry and other gift items, New SCL markets and sells, both in its stores and through its website, a line of cod-shaped ceramic pitchers under the trademark " Gurgling Cod." (2nd Am. Compl. ¶ 11; Countercl. ¶ 10). According to the defendant, the Gurgling Cod has been sold by New SCL and its predecessor, Shreve, Crump & Low, for more than 50 years. (Countercl. ¶ 11). It further alleges that " [t]he consuming public has come to associate the distinctive shape and appearance of the Gurgling Cod® (the " Gurgling Cod Trade Dress" ) exclusively with New SCL[,]" and that the Gurgling Cod Trade Dress has become widely recognized by the public as a ubiquitous symbol of Boston. (Id. ¶¶ 12-13).

         New SCL is the owner of a trademark registration for certain elements of the Gurgling Cod Trade Dress. (Id. ¶ 14). The registration was issued by the United States Patent and Trademark Office on February 10, 2009. (Id. at Ex. A). As described therein, New SCL claims the following design in connection with " ceramic pitchers" :

         (Image Omitted)

(Id.). The registration also provides that " [t]he mark consists of three (3) dimensional configuration of a fished shaped container. The material shown in the broken lines is not claimed as part of the mark." (Id.). Moreover, it specifically disclaims color as a feature of the mark. (Id. ¶ 14). New SCL contends that it has an exclusive right to use the Gurgling Cod Trade Dress in connection with the marketing, ...


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