On October 12, Glencairn IP Holdings and Glencairn Crystal Studio filed suit in federal court in Washington state against Plamazonx LLC, alleging trademark infringement and related claims arising out of Plamazonx’ sales of whiskey tasting glasses that look just like Glencairn’s trademark-protected “Official Whisky Glass”. (Glencairn, headquartered near Cincinnati, prefers the Scottish spelling of “whisky”.)
Glencairn is a company that has commercialized a pre-existing design for a glass which, they claim, is ideally suited to nosing and tasting whiskeys. (Full disclosure: you will find Glencairn glasses in this scribe’s cupboard.) Glencairn holds a 2016 federal trademark registration for the claimed trade dress embodied in the glass pictured above right; they have also registered the word mark GLENCAIRN, although that mark is not at issue in the new litigation (more on that later). The trade dress registration describes the claimed mark (in pertinent part) as follows:
The mark … consists of a three-dimensional shape of a drinking glass in the form of a surface of revolution, the glass having a substantially frusto-conical base with a rounded bottom edge, the diameter of the base being larger than the diameter of the top thereof, and a hollow cup having a bulbous, outwardly convex, lower cup portion that is smoothly continuous with the base and having an upper cup portion that gradually approaches a nearly vertical cylindrical shape adjacent a circular top opening. The entire glass is colorless and transparent.
The defendant Plamazonx, according to the complaint, “manufactures, advertises, sells, and otherwise uses in commerce a glass under the name Del Rey Glassware Whiskey glass for Nosing and Sipping (the “Del Rey Whiskey Glass”).” We found the accused glassware (pictured above left) for sale here. The complaint further alleges (without supporting exhibits) that Plamazonx/Del Rey has used “labels misleadingly identifying the Del Rey Whiskey Glass as a “Glencairn glass,” a “Glencairn nosing glass,” a “Glencairn whiskey nosing glass,” and a “Glencairn style glass.”” We found on the Del Rey web site a number of disclaimers like this: “(Note: these fine handblown glasses are NOT Glencairen [sic] brand glasses.)”
It would be hard to dispute the visual similarity of the two glasses. But is the design protectable as a trademark? A key element of trademark protection for product designs is that the design must not be functional. (This is to prevent patentees from using trademark law to render their patent rights perpetual). Trade dress like this is only eligible for trademark protection if it is visually distinctive but otherwise performs no useful function.
If this case proceeds, Glencairn may have some difficult questions to answer about how they promote their own glasses on their web site:
The unique and stylish shape has been crafted with eminent care, to enhance the enjoyment of whisky.
The tapering mouth allows an ease of drinking not associated with traditional nosing glasses whilst capturing the aromas on the nose.
The wide bowl allows for the fullest appreciation of the whisky’s colour and the solid base is designed to be easy on the hand.
These statements seem to indicate that the features of the glass claimed in the trademark registration actually confer functional benefits – they do a better job at conveying the color, aroma and taste of the whiskey.
The complaint also alleges a number of facts about the marketing and reputation of the Glencairn glass, presumably to support a claim that even if the glass design is not inherently distinctive, it has acquired distinctiveness in the marketplace. But even acquired distinctiveness cannot trump functionality.
Given these potential pitfalls surrounding functionality, one wonders why (in footnote one of the complaint) Glencairn expressly did not assert the more straightforward claim of infringement of the GLENCAIRN word mark based on the alleged misleading product labels.
So is Glencairn trying to use trademark law to squeeze out a lower-priced competitor? Is Plamazonx freeriding on Glencairn’s reputation to sell knock-off products? It will be interesting to see how the case distills out.
The case is Glencairn IP Holdings Ltd. et al v. Plamazonx, LLC, Case No. 3:17-cv-05819, U.S. Dist. Ct., W.D.Wash. (Tacoma Div.)