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10
GLENCAIRN IP HOLDINGS LTD., and
11 GLENCAIRN CRYSTAL STUDIO No.
LTD.,
12 COMPLAINT
Plaintiffs,
13 JURY DEMAND
v.
14
PLAMAZONX, LLC,
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Defendant.
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17
COMPLAINT - Page 1
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1 The registered trade dress of the GLENCAIRN Glass has come to be associated with first-
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12 depicted below, that imitates the GLENCAIRN Glass and infringes on and misappropriates
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4. Defendant is blatantly trading off of the goodwill associated with Glencairns
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trade dress and the GLENCAIRN Glass by offering for sale Defendants infringing
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imitation of the GLENCAIRN Glass in a manner that is likely to cause consumer confusion
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and deceive the public regarding the source, sponsorship, or affiliation of the infringing glass
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with Glencairn.
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COMPLAINT - Page 2
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1 5. Glencairn seeks to stop Defendants misconduct and to prevent Defendant
2 from engaging in any further misconduct. This is an action at law and in equity for damages
3 and injunctive relief based on Federal Trade Dress Infringement, Federal Unfair Competition,
4 Common Law Trade Dress Infringement, Statutory Unfair Competition, and Common Law
5 Unfair Competition. Among other relief, Glencairn asks this Court to: (i) preliminarily and
6 permanently enjoin Defendant from manufacturing, selling, or offering for sale the infringing
7 imitation glass; (ii) award Glencairn monetary damages; (iii) require Defendant to disgorge
8 all of its profits from its sales of the infringing glass; and (iv) award Glencairn enhanced
10 PARTIES
12 organized and existing under the laws of the United Kingdom, having its office and principal
13 place of business at 1-11 Langlands Avenue, East Kilbride, Scotland, G75 0YG.
15 company organized and existing under the laws of the United Kingdom, having its office and
16 principal place of business at 1-11 Langlands Avenue, East Kilbride, Scotland, G75 0YG.
18 existing under the laws of the State of Washington, with its principal place of business at
21 9. This Court has subject matter jurisdiction over Glencairns claims under 15
22 U.S.C. 1121 and 28 U.S.C. 1331, 1338, and 1367. Additionally, this Court has subject
23 matter jurisdiction over Glencairns claims under 28 U.S.C. 1332 because this action is
24 between a citizen of a foreign country and a citizen of the United States, with an amount in
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COMPLAINT - Page 3
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1 Local Civil Rule 3(e) because Defendants principal place of business is in Clark County,
2 Washington.
3 10. This Court has personal jurisdiction over the Defendant at least because, on
4 information and belief, Defendant is located in the State of Washington, transacts business
5 within the State of Washington, including by marketing, selling, and shipping the product
6 giving rise to Glencairns causes of action to purchasers located in Washington, and has
7 purposely availed itself of the privileges of conducting activities within the State of
8 Washington.
9 11. Venue is proper in this district: Defendant resides in this judicial district.
10 FACTUAL ALLEGATIONS
12 12. The GLENCAIRN Glass is an iconic glass introduced to the market in 2001.
13 13. Glencairn IP Holdings Ltd. is the owner of trademark rights in the distinctive
14 trade dress of the GLENCAIRN Glass (the GLENCAIRN Trade Dress), including a
15 Federal Trademark Registration, United States Registration No. 5,024,360 (the 360
16 Registration), issued by the United States Patent and Trademark Office on August 23, 2016,
17 for the GLENCAIRN Trade Dress, as depicted below, for Beverage glassware, namely,
18 whisky glasses. A copy of the Certificate of Registration for the 360 Registration is
19 attached as Exhibit 1.
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COMPLAINT - Page 4
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1 14. Glencairn Crystal Studio Limited is the exclusive licensee of those trademark
2 rights.
3 15. Glencairn has distributed and sold the GLENCAIRN Glass, which features
4 the GLENCAIRN Trade Dress, since as early as 2001, and in commerce in the United States
6 continuous use of the GLENCAIRN Trade Dress and Glencairns marketing and
7 advertising efforts, Glencairn has acquired goodwill in connection with the GLENCAIRN
8 Glass, and the GLENCAIRN Trade Dress has acquired distinctiveness. The
9 GLENCAIRN Trade Dress is nonfunctional, and the public recognizes and understands that
10 the GLENCAIRN Trade Dress distinguishes and identifies the GLENCAIRN Glass from
11 other products.
12 16. The glass in which liquor is served plays a significant role in building the
13 cultural and social experience associated with that liquor. Whisky, especially single malt
14 scotch whisky, did not have its own dedicated glass for centuries. Whisky master blenders
15 used a copita glass for nosing and tasting whisky, but this glass was also used for nosing other
16 liquors as well. In fact, the copita glass was also called a dock glass because it was used
17 by buyers to nose and taste wine and spirit shipments at the dock before they accepted the
18 shipment.
19 17. Over thirty years ago, Glencairn founder Raymond Davidson recognized the
20 opportunity to introduce a distinctive glass that would be associated with drinking whisky.
21 Mr. Davidson took great care in designing his glass to meet the needs of whisky drinking,
22 including the tapered mouth for nosing, while also having a design that was distinctive and
23 attractive to consumers. The result was the GLENCAIRN Glassa glass like no other
24 before it.
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COMPLAINT - Page 5
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1 18. In 2001, Glencairn launched the GLENCAIRN Glass into the market with a
2 1,500-unit production that was released at the Whisky Live event in London. With this launch
5 design. Glencairn supplied GLENCAIRN Glasses to whisky events and tastings across the
6 globe, including in cities such as New York City, San Francisco, Chicago, Los Angeles,
7 Boston, Louisville, Portland, and Seattle. Many of these events have thousands of attendees
8 each year and use the GLENCAIRN Glass exclusively. Glencairn also has supplied the
9 GLENCAIRN Glass to distilleries in the United States that are well known and highly
10 regarded for whisky production, including, for instance, Brown Forman, Jim Beam, and
11 Tuthilltown. These distilleries hold mini shows and regular tastings of varying sizes using
13 20. Glencairn has secured industry exposure for the GLENCAIRN Glass
14 through publications as well. For example, the GLENCAIRN Glass has appeared in
15 Whisky Magazine on several occasions and was featured in Malt Advocate magazine in 2002.
16 The GLENCAIRN Glass was also advertised for sale in Playboy Magazine in the United
17 States and appeared in the Whiskies of the World official event program in San Francisco in
18 2003.
19 21. The GLENCAIRN Glass has won several awards and accolades, including
20 The Queens Award for Enterprise: Innovation in 2006; The Queens Award for Enterprise:
21 International Trade in 2012; the Scottish Marketing Award for Innovation in 2008; the
22 National Business Award for Innovation and Marketing Excellence Award for Best
23 Marketing Strategy; and the 17th Annual Malt Advocate Whisky Awards Industry Leader
24 of the Year.
25 22. The money and effort Glencairn has spent marketing the GLENCAIRN
26 Glass has returned financial success as well. Since launching the GLENCAIRN Glass with
COMPLAINT - Page 6
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1 the 1,500-unit production in 2001, Glencairns sales of the GLENCAIRN Glass have
2 reached over 20 million glasses globally, with annual sales to the United States of
6 glass under the name Del Rey Glassware Whiskey glass for Nosing and Sipping (the Del
7 Rey Whiskey Glass). The Del Rey Whiskey Glass is a copy and colorable imitation of the
9 confusion as to the nature and source or origin of the Del Rey Whiskey Glass. A side-by-
10 side comparison of the infringing Del Rey Whiskey Glass, the GLENCAIRN Glass, and
11 the drawing of the GLENCAIRN Trade Dress from the 360 Registration is included below.
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23 24. Defendant was familiar with the GLENCAIRN Glass and GLENCAIRN
24 Trade Dress when Defendant created, manufactured, and began advertising and selling the
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COMPLAINT - Page 7
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1 25. Defendant has exploited and is exploiting the commercial success and global
4 Trade Dress and misappropriated Glencairns investment, goodwill, and market share by
5 selling the infringing Del Rey Whiskey Glass at an inferior quality to would-be consumers
6 of the GLENCAIRN Glass. Indeed, Defendants efforts to exploit and trade off Glencairns
7 goodwill are immediately apparent in the labels Defendant has used for the Del Rey Whiskey
8 Glass, including labels misleadingly identifying the Del Rey Whiskey Glass as a Glencairn
9 glass, a Glencairn nosing glass[], a Glencairn whiskey nosing glass[], and a Glencairn
10 style glass.
11 26. The infringing Del Rey Whiskey Glass competes with the GLENCAIRN
12 Glass and is sold through overlapping channels of trade, including through online
13 marketplaces.
15 Trade Dress is likely to deceive, confuse, and mislead actual and prospective purchasers
16 before, during, and after purchase into believing that the whisky glass sold by Defendant is
17 manufactured or authorized by, or in some manner associated with Glencairn. The Del Rey
18 Whiskey Glass is not manufactured by Glencairn, and neither Defendant nor the Del Rey
22 with respect to consumers who perceive a defect or lack of quality in the Del Rey Whiskey
23 Glass.
25 commerce its confusingly similar imitation of the GLENCAIRN Trade Dress in connection
26 with the sale of a product that directly competes with the GLENCAIRN Glass. Defendant
COMPLAINT - Page 8
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1 began selling its imitation after Glencairn had established protectable rights in the
3 30. Glencairn has lost market share and sales due to Defendants activities and
4 misconduct. As a direct and proximate result of Defendants conduct, Glencairn has suffered
5 damages in an amount that is presently unknown but exceeds $75,000. Such conduct also
6 has caused and is causing irreparable harm to the goodwill symbolized by the
7 GLENCAIRN Trade Dress and the reputation for quality that the GLENCAIRN Trade
8 Dress embodies.
9 31. Defendants activities and misconduct have been knowing, intentional, and
10 willful. Defendant has continued to offer its infringing Del Rey Whiskey Glass even after
11 Glencairn brought its trademark rights and the 360 Registration to Defendants attention.
12 Defendant has thus acted in bad faith, in knowing disregard of Glencairns rights, and with
17 32. Glencairn repeats and incorporates by reference the allegations set forth in
19 33. Glencairn owns United States Trademark Registration Number 5,024,360 for
20 the GLENCAIRN Trade Dress. Glencairn has used the GLENCAIRN Trade Dress in
23 GLENCAIRN Trade Dress is likely to cause confusion, mistake, and deception by creating
24 the false and misleading impression that the Del Rey Whiskey Glass is manufactured or
COMPLAINT - Page 9
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1 35. The aforesaid conduct constitutes trade dress infringement in violation of
5 and an intent to trade on the goodwill associated with the GLENCAIRN Trade Dress.
6 37. Defendants conduct has caused and, unless enjoined by this court, will
7 continue to cause Glencairn irreparable injury. This injury includes a reduction in the
8 distinctiveness of the GLENCAIRN Trade Dress and injury to Glencairns reputation that
9 cannot be remedied through damages. Glencairn has no adequate remedy at law and is
12 (i) Defendants profits, (ii) Glencairns ascertainable damages, and (iii) Glencairns costs of
14 without excuse or justification renders this an exceptional case and entitles Glencairn to its
19 39. Glencairn repeats and incorporates by reference the allegations set forth in
21 40. Glencairn has used the GLENCAIRN Glass and GLENCAIRN Trade
22 Dress in commerce in the United States since at least September 1, 2004. The relevant
23 consuming market of the United States widely recognizes the distinctive GLENCAIRN
COMPLAINT - Page 10
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1 misrepresenting and falsely designating to the general public the origin, sponsorship, and
2 approval of the Del Rey Whiskey Glass and the affiliation, connection, and association of
4 the origin, sponsorship, and approval of the Del Rey Whiskey Glass and the affiliation,
7 origin, and unfair competition in violation of Section 43(a)(1)(A) of the Lanham Act, 15
8 U.S.C. 1125(a)(1)(A).
11 and an intent to trade on the goodwill associated with the GLENCAIRN Glass and
13 44. Defendants conduct has caused and, unless enjoined by this court, will
14 continue to cause Glencairn irreparable injury. This injury includes a reduction in the
15 distinctiveness of the GLENCAIRN Glass and GLENCAIRN Trade Dress and injury to
16 Glencairns reputation that cannot be remedied through damages. Glencairn has no adequate
17 remedy at law and is therefore entitled to injunctive relief pursuant to 15 U.S.C. 1116.
19 (i) Defendants profits, (ii) Glencairns ascertainable damages, and (iii) Glencairns costs of
21 GLENCAIRN Trade Dress without excuse or justification renders this an exceptional case
25 46. Glencairn repeats and incorporates by reference the allegations set forth in
COMPLAINT - Page 11
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1 47. Glencairn has used the GLENCAIRN Glass and GLENCAIRN Trade
2 Dress in commerce in the United States since at least September 1, 2004. The relevant
3 consuming market of the United States widely recognizes the distinctive GLENCAIRN
6 GLENCAIRN Glass and GLENCAIRN Trade Dress is likely to cause confusion, mistake,
7 and deception by creating the false and misleading impression that the Del Rey Whiskey
10 49. The aforesaid conduct constitutes trade dress infringement under Washington
11 common law.
14 and an intent to trade on the goodwill associated with the GLENCAIRN Glass and
16 51. Defendants conduct has caused and, unless enjoined by this court, will
17 continue to cause Glencairn irreparable injury. This injury includes a reduction in the
18 distinctiveness of the GLENCAIRN Glass and GLENCAIRN Trade Dress and injury to
19 Glencairns reputation that cannot be remedied through damages. Glencairn has no adequate
22 (ii) Glencairns ascertainable damages, and (iii) Glencairns costs of suit. In light of
24 Dress with malice oppression, and fraud, Glencairn is additionally entitled to punitive
25 damages.
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COMPLAINT - Page 12
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1 FOURTH CLAIM FOR RELIEF
3 (RCW 19.86.020)
4 53. Glencairn repeats and incorporates by reference the allegations set forth in
8 misleading and/or deceiving the public as to the origin, sponsorship, and approval of the Del
9 Rey Whiskey Glass and the affiliation, connection, and association of Defendant with
11 sponsorship, and approval of the Del Rey Whiskey Glass and the affiliation, connection, and
13 55. The aforesaid conduct constitutes unlawful and/or unfair business practices in
17 and an intent to unfairly trade on the goodwill associated with the GLENCAIRN Glass and
19 57. Defendants conduct has caused and, unless enjoined by this court, will
20 continue to cause Glencairn irreparable injury. This injury includes a reduction in the
21 distinctiveness of the GLENCAIRN Glass and GLENCAIRN Trade Dress and injury to
22 Glencairns reputation that cannot be remedied through damages. Glencairn has no adequate
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1 FIFTH CLAIM FOR RELIEF
3 59. Glencairn repeats and incorporates by reference the allegations set forth in
5 60. Glencairn has invested substantial time, money, effort, and skill to develop the
6 high-quality product that is the GLENCAIRN Glass. Glencairn has also invested
7 substantial time, money, effort, and skill to generate recognition of the GLENCAIRN Glass
8 among the consuming public. Through those efforts, Glencairn has built up valuable
12 misappropriated the goodwill associated with the GLENCAIRN Glass and GLENCAIRN
15 common law.
18 and an intent to unfairly trade on the goodwill associated with the GLENCAIRN Glass and
20 64. Defendants conduct has caused and, unless enjoined by this court, will
21 continue to cause Glencairn irreparable injury. This injury includes a reduction in the
22 distinctiveness of the GLENCAIRN Glass and GLENCAIRN Trade Dress and injury to
23 Glencairns reputation that cannot be remedied through damages. Glencairn has no adequate
26 (ii) Glencairns ascertainable damages, and (iii) Glencairns costs of suit. In light of
COMPLAINT - Page 14
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1 Defendants willful misappropriation of the goodwill associated with the GLENCAIRN
2 Glass and GLENCAIRN Trade Dress with malice, oppression, and fraud, Glencairn is
7 directors, employees, representatives, successors, and assigns, and all others acting in concert
8 or participation with Defendant, from manufacturing, selling, or offering for sale the Del Rey
12 fees;
14 Glass;
15 d) Grant such other and further relief to Glencairn as the Court deems just and
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Dated: October 12, 2017. YARMUTH WILSDON PLLC
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21 By s/Jeremy E. Roller
Jeremy E. Roller, WSBA No. 32021
22 1420 Fifth Avenue, Suite 1400
Seattle, WA 98101
23 Telephone: 206.516.3800
Facsimile: 206.516.3888
24 jroller@yarmuth.com
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COMPLAINT - Page 15
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1 OMELVENY & MYERS LLP
2 Mark E. Miller (pro hac vice to be filed)
3 Two Embarcadero Center, 28th Floor
San Francisco, CA 94111-3823
4 Telephone: 415.984.8700
Facsimile: 415.984.8701
5 markmiller@omm.com
6 Attorneys for Plaintiffs Glencairn IP
7 Holdings Ltd. and Glencairn Crystal Studio
Ltd.
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COMPLAINT - Page 16
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COMPLAINT - Page 17
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COMPLAINT - Page 18