Glencairn IP Holdings Ltd.

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant: Glencairn IP Holdings Ltd.

Application Number: 76/718085

Filing Date: June 1, 2015

Mark: Shape of a Whisky Glass

REMARKS IN RESPONSE TO OFFICE ACTION

This is in response to the Office action of September 22,
2015.

Responding first to the requirement for information, the
Applicant submits the following.

Design patents:

Responding to the first requirement for information, the
following are the design patents and design registrations
relating to the Glencairn Glass:

Chinese design patent No. 1338309.4
French design registration No. 672136
German design registration No. 40108622.4
Italian design registration No. 82930
United Kingdom design registration No. 2093670
United States design patent No. D459156

Copies of the design patents and design registrations are
submitted as Exhibits 101—106 to this Response.

These design patents are in the name of
Raymond Davidson, a director of Glencairn IP Holdings, Ltd. All
were assigned to Glencairn IP Holdings, Ltd. except for the
Chinese design patent (Exhibit 101), which expired before the
assignment took place.

The applicant neither holds, nor knows of, any unexpired or
expired utility patents that encompass the design of the
Glencairn Glass. (See Davidson Supplemental Declaration
submitted herewith, paragraph 3.)

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Advertising, promotional and explanatory materials:

The 100 exhibits submitted with this Application by way of
the Declaration of Raymond Davidson, a Director of the
Applicant, are representative of advertising, promotional and
explanatory materials for the Glencairn Glass. Additional
materials responsive to this request include the accompanying
Exhibits 107—111.

Exhibit 107 is typical of numerous advertisements for the
Glencairn Glass published in recent years. These advertisements
contain depictions of the glass but no discussion of the shape
of the glass or reasons for its various features.

Exhibit 108 is a copy of an advertisement from Malt
Advocate, describing the Glencairn Glass as a Blenders Nosing
Glass. The advertisement mentions that the glass is “designed.
to fully capture the whisky’s aroma and color.“
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E Exhibit 109 is a newspaper clipping, published in 2001,
i entitled “At last — a big glass for a wee dram.” The clipping
refers to the glass as having “a nice shape” and as being “nice
to hold”. Exhibit 110 is another newspaper clipping, entitled
a
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“Dram glass is top class,” also published in 2001. The clipping
refers to “an hour glass shape”.
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Exhibit 111 is a copy of an article from Whisky Magazine,
discussing the development of the glass on the basis of a copita
sherry glass. The narrow rim of the copita glass is described
as “perfect for nosing” but “problematic” for drinking. The
problem with drinking is mentioned as prompting the decision to
“open the top slightly.” In addition, the article mentions that
the stem of the copita glass was done away with “for aesthetic
and durability factors.”

Alternative designs:

There are numerous alternative designs for whisky glasses.
These alternative designs are too extensive to identify in this
response. Some alternatives are, however, more popular than
others.

Exhibits 112 and 113 are copies of published articles
comparing some of the more popular alternative whisky glasses,

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including the Glencairn Glass. In Exhibit 112, “Which whisky
glass do I recommend,” by Keith Wood, six glasses are compared.
The Glencairn Glass was accorded ratings in seven categories
relating to the function of the Glencairn Glass. The ratings
pertained to the “feel” of the glasses, and to their relative
merits in terms of “nosing” for various different kinds of
whisky. The Short—stemmed, the Sherry glass and the Bugatti,
generally received ratings lower than those given to the
Glencairn Glass. However, The ratings for the Glencairn Glass
were closely comparable to the ratings for the Classic Malt
glass and the Spiegelau glass. In exhibit 113, “Best Glass for
Scotch Whisky: Glencairn, Copita, Reidel Vinum, or Tumbler,” in
the on—line journal “Scotch Addict,” posted on June 17, 2013,
the author compares five glasses including The Glencairn Glass,
concluding that “it’s not entirely clear which type of glass is
best for this special spirit [Scotch whisky],” thereby implying
that all five glasses provide the same functionality.

The accompanying Declaration of Gregor Cattanach
demonstrates that other glasses used for tasting whiskey provide
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the same functionality as the Glencairn Glass. Mr. Cattanach is
the Director of Whisky education for the Whisky Portfolio of
Diageo North America, Inc., a subsidiary of the distiller Diageo
PLC. Diageo North America markets a variety of brands of
spirits, including Captain Morgan rum, Crown Royal Canadian
whisky, Johnnie Walker Scotch whisky, Smirnoff and Ciroc vodka,
and Tanqueray gin. (Cattanach Declaration Paragraph 1). Mr.
Cattanach is familiar with the large variety of whisky
evaluation glasses used in the United States, including the
Glencairn Glass. Id. The Glencairn Glass is frequently used for
whisky tastings. Id. Mr. Cattanach compares the Glencairn
Glass to a “copita” glass, pointing out their functional
similarities: the mouth being narrower than the bowl to capture
aroma; the transparency, width and height of the bowl to enhance
visual appreciation of the whisky; and the fact that raised bowl
makes handling easier. (Cattanach declaration paragraph 3).

The Declaration of David Sweet also demonstrates that other
glasses used for tasting whiskey provide the same functionality
as the Glencairn Glass. Mr. Sweet compares The Glencairn Glass
with four alternative whisky glasses depicted in Exhibits A—D to
the Sweet Declaration.

In paragraphs 3—8, Mr. Sweet addresses the selling prices
of the alternative whisky glasses and demonstrates that The
Glencairn Glass is no less expensive than most of the
alternative glasses, acknowledging in paragraph 6, that there
are exceptions, for example, in the case of crystal glasses.

In paragraphs 3—8, Mr. Sweet also explains the relationship
between the size of the mouth and the body of each of the
glasses in Exhibits A—D and the Glencairn Glass. In Paragraph
2, he points out that the alternative glasses are available in
sizes and volumes similar to those of The Glencairn Glass. In
paragraph 8, Mr. Sweet provides a comparison of the properties
of the Glencairn Glass and the whisky glasses shown in Exhibits
A~D to his Declaration. He also points out that all four of the
glasses in Exhibits A—D are suitable for nosing and tasting, and
that the whisky glass in Exhibit C is used for formal whisky
tastings and competitions more than any other glass, including
The Glencairn Glass.

Method of manufacture:

The method of manufacture of the Glencairn Glass is
explained in the Supplemental Declaration of Raymond Davidson.
In paragraphs 8-11 of his Supplemental Declaration, Mr. Davidson
points out that the method of manufacture is similar to, and no
less expensive than, the method used for manufacture of most
competitive whisky glasses.

Other evidence

In paragraph 4 of his declaration, Mr. Cattanach points out
that the combination of the externally concave upper part of the
Glencairn glass and its thick base, make the Glencairn Glass
readily recognizable. In paragraphs 7 and 9 of his declaration,
Mr. Sweet confirms the independent functions of the thick base
of the Glencairn Glass (ease of handling) and the shape of its
bowl (balance of aroma and alcohol in nosing), and points out
that the combination of these features gives the Glencairn Glass
its distinct and readily recognized overall appearance.

Mr. Davidson establishes that Glencairn’s customers and
peers consistently report that the combination of the base and
bowl results in a very attractive end product that is welcomed
by customers and the whisky industry. (Davidson Supplemental
Declaration, paragraph 6). Mr. Davidson also provides the
wholesale and retail selling prices of The Glencairn Glass.
(Davidson Supplemental Declaration, paragraph 10).
Argument against refusal on the basis of functionality

Applicant respectfully requests reconsideration and
withdrawal of the refusal of registration based on
functionality. The evidence presented by Applicant, includes a
supplemental declaration of Raymond Davidson, whose declaration
was submitted with the application to demonstrate acquired
distinctiveness and declarations of David Sweet, and Gregor
Cattanach. The evidence addresses the MOrton—NOrwich factors,
demonstrating that (1) there are no utility patents covering the
configuration sought to be protected — the shape of the
Glencairn Glass, (2) there are alternative designs for whisky
glasses that provide the same functionality as Applicant’s
Glencairn Glass, and (3) the method of manufacturing the
Glencairn Glass is neither simpler nor less expensive than the
methods of manufacturing other whisky glasses. And, the
Applicant respectfully submits that the Examining Attorney has
improperly dissected the design of the Glencairn Glass into
individual features. The overall design of Glencairn Glass,
considered as a whole, is not functional. The functionality
inquiry must focus on the utility of the combination of features
claimed as protectable. In re MOrton-NOrwich Prods., Inc. 671
F.2d 1332, 1338 (C.C.P.A. 1982). The question of whether a
product feature is “functional” should not be confused with
whether the product feature performs a “function.” See TMEP
§l202.02(a)(iii)(B)

15 U.S.C. § 1052 (e) provides that “No trademark by which
the goods of the applicant may be distinguished from the goods
of others shall be refused registration on the principal
register on account of its nature unless it consists of a mark
which, . . . (5) comprises any matter that, as a whole, is
functional.” Certain aspects of the Glencairn Glass are
functional. As noted by the Examining Attorney, the tapering
mouth, the wide bowl, the size, width and height of the base,
and the transparency of the glass, each enhances one or more of
the olfactory, gustatory and visual aspects of the whisky
drinking experience. The statute, however, requires
functionality of the Glencairn Glass to be considered on the
basis of the design “as a whole.” The combination of features
that make up the unique shape of the Glencairn Glass is not
functional, i.e., essential to the use or purpose of the glass,
or a determining factor of cost or quality. The combination of
features has been achieved by several alternatives.

The features of the Glencairn Glass can be summarized as
the following:
(a) a bowl having a rounded convex exterior and a tapering
extension from the rounded part of the bowl to the mouth of the
glass, the extension having a concave exterior that gradually
becomes cylindrical near the mouth; and
(b) a thick base underneath the bowl, the base having, at
its lower part, a diameter approximately the same as that of the
mouth.

The rounded convex exterior shape of the bowl is a feature
common to numerous glasses used for whisky, including the copita
glass (Paragraph 3 of the Cattanach Declaration), all four of
the glasses identified in the exhibits accompanying the Sweet
Declaration, all of the glasses depicted in Exhibits 111, and
the Copita Nosing Glass and the NEAT Whiskey Glass depicted in
Exhibit 112.

The tapering, externally concave, extension upward of the
rounded bowl, is found in the Bugatti Kelch glass and in the
Short—stemmed glasses in Exhibit 111. The copita glass has a
mouth that is narrower than the bowl to capture the aroma of the
whisky. Paragraph 3 of the Cattanach Declaration. All four of
the glasses addressed in the Sweet Declaration have a reduced
mouth to facilitate nosing and have a standard size that makes
drinking easy and natural. (Sweet Declaration, paragraph 7)

The functions of the base of the Glencairn Glass are
similar to those of the stems of alternative whisky glasses
having raised bowls. In all cases, the base raises the bowl for
improved visibility of the whisky. The small cognac glass shown
in Sweet Declaration, Exhibit A, and the wine glass shown in
Exhibit C, have stems that allow the whisky in the glass to be
viewed more easily for color and clarity. Each of the two
salient features of The Glencairn Glass has a “function,” but
the combination of the features “as a whole” is not functional.

The features of the Glencairn Glass cooperate to impart a
unique and recognizable appearance to the glass, making the
appearance readily distinguishable from that of other glasses,
and capable of serving as an indicator of source. Mr. Cattanach
points out that the externally concave portion of the glass
extending from the round part of the bowl to the mouth and the
thick base cooperate to make the Glencairn Glass readily
recognizable. (Paragraph 4 of the Cattanach Declaration, ? 4).

Mr. Sweet points out that the base and bowl “combine to
give the Glencairn Glass a distinct and readily recognized
overall appearance, and, as a result, the Glencairn Glass, with
its shape and unique base is singularly the most recognized
whisky tasting glass in the world.” Paragraph 10 of the Sweet
Declaration. Mr. Davidson similarly refers to the fact that the
base, when combined with the bowl, results “in a very attractive
end product which was instantly welcomed by the whisky industry
and consumers alike.” (Davidson Supplemental, paragraph 5). In
exhibit 112, “Best Glass for Scotch Whisky: Glencairn, Copita,
Reidel Vinum, or Tumbler,” the author concludes that “. . . it’s
not entirely clear which type of glass is best for this special
spirit,” but refers to the Glencairn Glass as having “a distinct
design,” indicating its recognizability.

In summary, the features of the Glencairn Glass, i.e., the
bowl with a rounded convex exterior and an externally concave
tapering extension, and the thick base, are neither essential to
the purpose of the glass nor do they affect its cost or quality.
On the other hand, the combination imparts to the glass a
distinct appearance, making it instantly recognizable, and thus
serves as an identification of the source of the glass. The
Applicant accordingly requests withdrawal of the refusal based
on distinctiveness and approval of the mark for publication and
eventual registration.

Respectfully Submitted,
HOWSO & HOWSO LP

M4
ge A. Smith, Jr.