Evoking a romantic image of the Highlands of Scotland, the Scottish poet Robert Burns penned one of his famous songs, “My Heart’s in the Highlands,” in 1789: 

My heart’s in the Highlands, my heart is not here;

My heart’s in the Highlands, a-chasing the deer;

Chasing the wild-deer, and following the roe,

My heart’s in the Highlands, wherever I go.

So closely identified with his native land is this bard of Scotland, claims the Scotch Whisky Association, that the trademark BURNS NIGHT evokes Scotland itself.  Accordingly, the Association opposes Atlanta-based ASW Distillery’s application to register BURNS NIGHT as a trademark for whisky not made in the Highlands of Scotland, claiming that the mark is deceptive.  In a recent decision, relying on Federal Circuit precedent, the TTAB agreed that the Lanham Act bars registration of a mark that creates a deceptive “geographic association.”  Exactly what it takes to prove that association, however, remains unspecified.

For the trademark applicant, the interplay and interpretation of trademark laws intended to protect consumers can be as enigmatic as the deception those laws aim to preclude.  In the Lanham Act, the deterrents to geographic deceit include Section 2(e)(3) which prohibits registration of geographically deceptively misdescriptive trademarks (see 15 U.S.C. § 1052(e)).  But there’s more.  Got a trademark for wines and spirits?  Then Section 2(a) specifically precludes a geographical indication that identifies a place other than the origin of the goods (see 15 U.S.C. § 1052(a)).  But, by the way, even if a trademark for wines and spirits doesn’t include a geographic location, it can run afoul of Section 2(a)’s general deceptiveness provision if the mark merely “evokes” a false “geographic association.”

Sound complicated?  No surprise.  The TTAB took two tries to reach its precedential decision on ASW Distillery’s motion to dismiss the Scotch Whisky Association’s notice of opposition to ASW’s mark BURNS NIGHT in standard characters for "Malt whisky; Whiskey" in International Class 33.  (The Scotch Whisky Association Ltd. v. ASW Distillery, LLC, 2021 U.S.P.Q.2d (BNA) 179 (TTAB 2021)). 

“Burns Night” refers to an annual celebration of Robert Burns on January 25th.  The website, scotland.org, includes an interactive map created by researchers from the University of Glasgow that inventories roughly 2500 Burns Suppers and Burns Night events on six continents and in nearly 150 countries.  The Scotch Whisky Association, however, argued that the TTAB should bar registration of ASW’s mark alluding to the Scottish poet pursuant to the Lanham Act’s Section 2(a) and Section 2(e)(3).

The Board had initially denied ASW Distillery’s motion to dismiss the opposition but hedged its decision upon ASW’s request for reconsideration and granted dismissal in part.  In the end, the Board found that the Scotch Whisky Association had failed to state a claim based on Section 2(a)’s wines and spirits geographic misindication provision.  That provision precludes from registration a mark that consists of or comprises “a geographical indication which, when used on or in connection with wines or spirits identifies a place other than the origin of the goods. . . .” (15 U.S.C. § 1052(a)), but the Association had failed to allege facts from which the Board could find that the mark identified a geographic place.  Likewise, the Board determined that the Association had failed to state a claim based on Section 2(e)(3)’s geographically deceptively misdescriptive provision (15 U.S.C. § 1052(e)(3)) because the opposer had failed to allege that the primary significance of BURNS NIGHT is a generally known geographic location. 

The Board decided, however, that the opposer had stated a claim under the general deceptiveness provision of Section 2(a) which precludes from registration, in pertinent part, a mark that “[c]onsists of or comprises…deceptive…matter.” 

In general, the Board reiterated, a term is deceptive if it (1) misdescribes the “character, quality, function, composition or use of the goods,” (2) “prospective purchasers” are likely to believe the misdescription, and (3) the misdescription is “likely to affect a significant portion of the relevant consumers’ decision to purchase.”  The Association had alleged that the mark BURNS NIGHT was “highly evocative of Scotland when used on a whisky product.”  That was enough to state a Section 2(a) general deceptiveness claim, concluded the Board.  Relying on Federal Circuit precedent, the Board held: 

Terms that are not specifically place names, but which may have “geographical association,” may provide bases for claims under the general deceptiveness provision of Section 2(a).

 Although the Board invited the opposer to file an amended notice of opposition to correct the deficiencies in its Section 2(e) (geographically deceptively misdescriptive) and Section 2(a) (geographical misindication in connection with spirits) claims, the Scotch Whisky Association failed to do so.  Its opposition now goes forward on a claim based solely on Section 2(a)’s general deceptiveness provision.  So the opposition’s outcome will turn on whether BURNS NIGHT evokes Scotland so as to create a deceptive geographical association sufficient to bar the mark from registration under Section 2(a). 

The Scotch Whisky Association has relied before on “geographic association” as the basis of Section 2(a) claim.  In fact, the Board based its BURNS NIGHT decision on the 1991 Federal Circuit opinion that reversed the Board for dismissing the Association’s petition to cancel the mark MCADAMS for whisky as generally deceptive under Section 2(a).  In that case, the Association alleged that MCADAMS is a Scottish surname; that MCADAMS is strongly associated by the American public with Scotland; that in the US it is common practice to market Scotch under marks composed of Scottish surnames; and that therefore such marks have come to be identified with geographic origin.  In short, the Association proposed, that if MCADAMS falsely suggested to prospective purchasers that the applicant’s Canadian whisky came from Scotland, then the mark was deceptive and should be canceled. 

In denying the MCADAMS applicant’s motion to dismiss, the Federal Circuit unequivocally declined to hold that Section 2(a)’s general deceptiveness provision required the Association to allege that the mark was a geographic term.  But the court also declined to express its view on the proof required to prove the geographic association. 

Since 1991, the Board and the courts have offered scant guidance on “geographic association” as the basis of Section 2(a) deceptiveness claim.  Until the Board decided the BURNS NIGHT case earlier year, no other court or Board opinion appears to have cited the Federal Circuit’s 1991 Scotch Whisky Association opinion for the proposition that a Section 2(a) claim can arise from a deceptive “geographical association.”  The Board’s BURNS NIGHT opinion, furthermore, lacks citation to additional supporting cases.  Thus, the Board has now confirmed that Section 2(a) precludes registration of a mark evoking a deceptive geographic association, but the quality and quantity of evidence necessary to prove the claim remains ill-defined.

As a defense, ASW contends that the issue of geographical association of BURNS NIGHT has already been addressed and the Association is collaterally estopped from challenging the mark as deceptive.  The mark and overall labeling have already been examined by the Alcohol and Tobacco Tax and Trade Bureau under its Certification of Label Approval process pursuant to 27 CFR § 5.22(k) (labeling regulation pertaining to geographical designations for distilled spirits) and found not to be evocative of, or “connoting, indicating, or commonly associated with,” Scotland.  

Unfortunately for the applicant, however, the Board has previously addressed the “label approval” defense and found it wanting.  More than once the Board has noted that label approval decides only that the applicant has met requirements under the labeling statute administered by another agency.  Such approval is irrelevant to registration, however, because only the Patent and Trademark Office has jurisdiction to determine trademark registrability. 

So in its BURNS NIGHT opinion, the TTAB has made clear that a mark for wine and spirits must not only steer clear of a geographical indication other than the origin of the goods but also avoid “evoking” a deceptive “geographical association.”  Exactly what that means, however, like one of Burns’ poems, remains open to interpretation.