Is BURNS NIGHT OFF KILT-ER?: Scotch, Trademarks & Distilling American Meanings

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Within a year after the 1787 Edinburgh edition of his poems, American editions…were published in both Philadelphia and New York. Ever since we [Americans] have adopted the beauty, the humor and the wisdom of Robert Burns as part of our own culture and our own idiom—-often, even usually, without knowing the source in Scotland’s ploughman poet.

[Montgomery, James M. (1998) “How Robert Burns Captured America,” Studies in Scottish Literature: Vol. 30: Iss. 1, at 237 (emphasis added)].

On December 4, 2019, the Scotch Whiskey Association filed opposition to the trademark application of ASW Distillery LLC, an Atlanta distiller, that was seeking the mark BURNS NIGHT for an American malt whiskey, noticeably spelled with an “e” (Scottish “whisky” has no “e”).  The Scotch Association claimed that the name BURNS NIGHT was “highly evocative of Scotland when used on a whisky product,” note no “e” is used.  Id.(¶7 at page 3). That claim assumes that the buying public understands that BURNS NIGHT refers to annual celebrations of the poet Robert Burns, that Robert Burns was Scottish, and therefore any whiskey to which he is linked must presumably be Scotch whisky (None of that would explain at all the notion that the USPTO long ago granted the mark ROBT. BURNS (Reg. No. 0682769) to a cigar manufacturer without any connection to Scotland, and a clear association with Cuba, a manufacturer that nonetheless had television commercials that included a cigar box with the poet’s image; Burns’ poetry was actually used to market another brand of cigars too, but all that is for another time).

As James Montgomery notes (at that same page 237 of article noted above), Americans do not usually make such connections to Burns and his poetry.  That connection is rarely made even though “[w]e lament ‘the best laid plans of mice and men’; we wish we could ‘see ourselves as others see us’; we declare ‘our love is like a red, red rose’ and annually we bellow the question of whether old acquaintances should be forgot-and only occasionally wonder what the hell an ‘auld lang syne’ might be,” (Id.) and notwithstanding the fact that Burns actually wrote a poem entitled Scotch Drink.  But the Association’s argument raises the interesting question of whether a person’s name can be, or should arguably be allowed to be, a geographic indicator, something we did not consider when last we wrote about GIs.  Robert Burns’ own history and the history of his popularity, as further discussed below, also suggest some interesting questions about how one should assess questions of primary resonance for a buying a public in a country that seems to have adopted him.

Some would pretend that we need not range into such metaphysical discourse on the nature and impact of naming (though, as Laura Heymann has demonstrated, it is historically, legally, and psycho-socially interesting).  Indeed, ASW quickly moved to dismiss the opposition to its trademark application, and argued that the “obvious” points that the applied-for BURNS NIGHT mark:

  • makes no reference to “terra firma,”
  • is “not a place name, abbreviation of a place name, nickname for a place name, or symbol of a place name,”
  • “does not, and cannot be shown to, have a primary significance as a geographic term,” and
  • distills down to a “factual inquiry [that] demands a conclusion that the term ‘Robert Burns’ is not geographically descriptive or primarily geographically deceptively misdescriptive.”

[Id. at 7-9].

There is an intuitive appeal to such common sense arguments.

But as Burns himself once wrote in Extempore In The Court Of Session But what his common sense came short,/ He eked out wi’ law, man.”  The Scotch Association it seems can eke out some legal support for its position, even though ASW’s common sense says, in essence, “Robert Burns Name ≠ A Place Name.” Indeed, ASW’s motion avoids confronting expressly or directly several important legal supports for the Association’s arguments.  First, 27 CFR § 5.22(k)expressly provides that “[t]he words ‘Scotch’, ‘Scots’, ‘Highland’, or ‘Highlands’ and similar words connoting, indicating, or commonly associated with Scotland shall not be used to designate any products not wholly produced in Scotland,” and never notes that neither “Scots” nor “Scotch” are place names, and never counters the notion that BURNS may be a word “commonly associated with Scotland,”  points made in the Scotch Association’s responsive submission, filed January 2, 2020(at page 3). Second, ASW does not address, as the Association’s response also notes(at page 5), the problematic (for its arguments) case of Scotch Whisky Ass’n v. US Distilled Products, 952 F. 2d 1317 (Fed. Cir. 1991), where a federal appeals court reversed the dismissal of an opposition, finding that the surname McAdams could in fact be a geographic mis-association with Scotland:

The Board’s position is clear though the justification for it is not. Its opinion says, “when asserting geographic deceptiveness, a plaintiff [petitioner] must plead that the mark has primary geographic significance.” It also says, “A plaintiff need not allege that the mark is a geographic place name but the plaintiff must allege that the mark is a geographic designation (i.e., has geographic association)….” It seems to us that that is exactly what petitioner has alleged: McAdams is a Scottish surname and is strongly associated by the United States public with Scotland. Then, restating its position, the Board summed it up thus:

That is, petitioner herein must plead that the term MCADAMS is primarily recognized as a geographical term in and of itself. It is not sufficient to plead, as we believe petitioner has done in this case, that the term is just suggestive or evocative of a geographical place. Because petitioner has not alleged that the mark in question, MCADAMS, is primarily geographical or has primary geographic significance, the petition to cancel fails to state a claim of geographical deceptiveness.

…[W]e find its opinion internally inconsistent in stating that petitioner need allege only that the mark has geographic association and then saying that petitioner must also allege that the mark must be a geographic term. …For all of the above reasons we reverse the Board’s dismissal of the petition

[Scotch Whisky Ass’n v. US Distilled Products, 952 F. 2d 1317, 1319 (Fed. Cir. 1991)].

Third, in a point the Scotch Association does not raise, the USPTO answers the FAQ “Are GIs just place names?” by saying that “A GI can be a geographic place name (e.g., ‘Napa Valley’) but it may also be a symbol (e.g., a picture of the Eiffel Tower, the Statue of Liberty, an orange tree), or the outline of a geographic area(e.g., the outline of the state of Florida or a map of the Dominican Republic), or a color, or anything else capable of identifying the sourceof a good or service.” (emphasis added).  Fourth, we would also add to what the Scotch Association has raised that the Trademark Manual of Examining Procedure, at section 1210.02(b)(i)(A), recognizes that in some cases the geographical significance of a surname mark can “be just as dominant as its surname significance.”  So ASW’s motion, in not addressing these legal supports for the Association, and theScotch Association’s response(at page 4) in wishing to avoid engaging the merits early on leaves room for the sort of analysis that we will undertake here and that they will take in accord with the schedule (at page 3) set by the Trademark Trial and Appeal Board, assuming the motion is denied.

BURNS NIGHT proves an interesting case when one considers concepts of geographic origin or identification.  Though known by many nicknames that suggest a strong connection to Scotland (such as the National Bard of Scotland and Bard of Ayrshire), he is also “celebrated worldwide.”  In fact, as noted in The Telegraph, “it would be a great error to suppose that, if you aren’t Scottish, Burns is not yours. … Burns, translated into 120 languages, including Arabic, is a global export. He knows the common lot of all humanity, and makes it uncommon.” Indeed, in a fine example of cultural integration, “in Vancouver, haggis-filled dumplings are served for Gung Haggis Fat Choy, a melding of Chinese New Year and Burns Night,” according to one source.  Others have transformed the main course of traditional haggis (which is made using sheep lungs, stomach and other of pieces of ovine offal), neeps and tattieson the plate and Scotch in the glass into a vegetarian variation washed down with wine.  So many make Burns Night their own.

Those in the United States especially have made Burns an adopted son:

By Burns’s centennial birthday, January 25, 1859, there were at least fifteen Burns Clubs in the United States. They and various Scottish groups as well as ad hoc committees sponsored centenary celebrations in more than sixty loca­tions from Boston to San Francisco, from St. Paul to Mobile…

[Montgomery, supra, at 238]

President Lincoln himself celebrated Burns Night in Washington, DC while in office, and other famous American like Oliver Wendell Holmes, Mark Twain, Ralph Waldo Emerson, and John Greenlief Whittier often paid Burns tribute as well. Id.

And Burns, for his part, was not simply some distant writer to invoke annually as an excuse to slam down a drink in poetic protest; rather he wrote to Americans about their own history and experience in poems like Ballad on The American War andOde for General Washington’s Birthday.  Montgomery, supra, at 235-236. In fact, it could be said that “[b]efore America discovered Robert Burns, Robert Burns had discovered America,” that “Robert Burns had a love affair going with the principles of American liberty,” and that Burns’ fame was not in being identified with Scotsmen but in identifying with the common man regardless of border or brogue.Id.at 235-37.  As Emerson noted, Burns “has given voice to all the experiences of common life; he has endeared the farm-house and cottage, patches and poverty, beans and barley; ale, the poor man’s wine; hardship, the fear of debt, the dear society of weans and wife, of brothers and sisters,” none of which are associated with Scotland alone. Id.at 239.

This American affinity for the poet continued to burn well into the 20thcentury:

His work has even influenced 20th Century American authors. JD Salinger’s book ‘Catcher in the Rye’ references the song ‘Comin’ thro’ the Rye’ and John Steinbeck’s novel ‘Of Mice and Men’ is named after a line in the poem ‘To a Mouse’.

It is Burns’ ability to empathise with the human condition that makes him a universally loved poet and songwriter and an important cultural figure over 200 years after his death.

[BBC Teach, Why is Robert Burns’ work still so popular today?]

Beyond that, as one commentator noted, “[w]e know that Robert Burns was Bob Dylan’s greatest inspiration, and we know too that Maya Angelou was inspired by Burns from an early age.”  Another commentator noted that Michael Jackson actually recorded a set of Burns’ songs as a tribute. Indeed, as recently as 2018, a biographer has emphasized Burns’ importance in the United States by describing (beginning at page 15) Burns’ “American Works,” though none were written here, and by describing (at pages 161-168) Burns’ importance to American cultural memory.  Indeed, as this biographer has noted, “There is no doubt that Burns held a symbolic power in the States…”

So does BURNS NIGHT as the name on any whiskey bottle somehow denote Scotch whisky alone, and thus cause confusion when associated with an American whiskey, despite what might in modern times have described as Burns’ great cross-over appeal to American, or at least shared, ideals?

Some existing US registered trademarks including Scottish names or cultural references suggest that the USPTO, at least, would not assume such confusion.  For instance, FRUGAL MACDOOGAL  (Reg. No.  4697555) is a registered liquor store mark and THE TILTED KILT (Reg. No.1257590) a restaurant mark yet many would doubt that one could sustain a claim that people would mistakenly believe that every whiskey or whisky each sold would be assumed to be Scotch.  This analogizes to the USPTO’s allowing TARTAN as part of a myriad of trademarks without any suggestion that there is some required connection to Scotland, even though some have suggested the legal implications “Of Tartans and Trademarks” need to be considered in that context. SeeRoss Petty, “Of Tartans and Trademarks,” 94 The Trademark Reporter859, 873 (July/August 2004).  Indeed, the USPTO once registered the mark MAPLE LEAF TARTAN (Reg. No. 0818305) despite the geographically-based cognitive dissonance such might occasion.  It would thus seem that decision-makers in the US might treat BURNS NIGHT more leniently.

But internationally, courts in Brazil, Israel, and the United Kingdom have all found that whiskeys with Mc or Macnames or tartan-emblazoned labels are geographically misdescriptive.  See Ross Petty, supra, at 873-876.  This follows on both US and European matters where the use of plaid tartan patterns as trademarks was at issue, such as those in the US involving MCGREGOR clothing and in Belgium and Italy involving BURBERRY raincoats. Id.  Whether those cases found confusingly similar tartans to amount to trademark infringement (US and Belgium) or unfair competition (Italy), they also accepted the notion that the public would associate tartan with Scotland and Scottish origin.

This, of course, begs the question of why Scotch might be considered an identifier of geographic origin, but vodka is not, or why Champagne is a geographic indicator for sparkling wine from a certain area in France but Szechuan beef is made all over the United States with locally sourced ingredients, and nary a word about that being misleading is said.  These are not idle questions, as the notion of whether or not words beyond specific place names can be geographic identifiers is the subject of legal debate in the countries noted above, as well as others. See, e.g.,Ramzi Madi, ‘Cancellation of the Trademark that Constitutes a Geographical Indication: A Study of Jordanian Law’(2010) 31 Business Law Review, Issue 11, pp. 246–251.  So, it would seem, the question of BURNS NIGHT connection would be a factual one.

On that factual question, some argue that equating BURNS NIGHT and his poetry with Scotland alone is a disservice to the poet’s place in history and influence on culture and politics outside CaledoniaBurns’ recent biographer suggests that “Burns was a transnational poet whose horizons and influence spanned the Atlantic,” and therefore to suggest that he merely connotes Scotland (or even less flatteringly Scotch alone) underestimates “Burns’ significance in America and other places” and forgets that he is not “a largely parochial writer” or “just a national poet.”  But that is a literary judgment, not a legal one.  Legally, deciding this contest will require an analysis of whether the term is “deceptive” or “deceptively misdescriptive,” and whether such a phrase and its connotations are material ones for the buying public, as Mary LaFrance notes in Innovations Palpitations: The Confusing Status of Geographically Misdescriptive Trademarks, 12 J. INTELL. PROP. L. 125 (2004).  It may also involve understanding how such geographic references and indicators get addressed under various trade pacts, new and old, as some commentators have noted.  In the end, the question of association of BURNS NIGHT to Scotland/Scotch will likely require survey evidence to demonstrate whether the buying public associates BURNS NIGHT to Scotland and therefore Scotch, or BURNS NIGHT to drinking and therefore perhaps merely whiskey.

Perhaps there is a simpler argument against registration of the BURNS NIGHT mark than having to settle whether BURNS by itself evokes Scotland rather than some American or broader ideals with which the poet has become connected.  BURNS NIGHT on whiskey arguably is confusingly similar with the earlier registered SCOTT AND BURNS (Reg. No. 4883450).  That mark, though owned by a Liechtenstein company, covers “distilled spirits; rum; whiskey; vodka; gin; distilled beverages, namely, tequila, brandy, schnapps, bourbon, cachaça, mescal, whisky; liqueurs; prepared alcoholic cocktails; but insofar as whisky, whisky based liqueurs, whisky based cocktails are concerned, only being, or containing, scotch whisky produced in Scotland,” (emphasis added), and thus directly connects BURNS with the covered spirit that overlaps the marks in and of themselves without in a way needing to recall our AP English class syllabus (at page 4), links between Scottish (or American) history(like the Declaration of Arbroath) or Auld Lang Syne.   Or perhaps a challenge from the Robert Burns World Federation, which holds a US registered trademark (Reg. No. 4611758) in several classes (including Class 33 for “Alcoholic beverages, namely, port, wines and fortified wines, distilled spirits and blended spirits; whiskyand whisky based liqueurs)  and endorses only one whiskey worldwide, Robert Burns Single Malt.  Such claims can avoid getting mired in the forgoing debates about Burns and his place (or places) in Scottish and American culture because the words of the trademarks actually overlap.  Thus, they are simply presented straightforwardly and at room temperature, whether your preferred manner is neator with water.

But perhaps there is not a simpler argument.  Perhaps one must still ultimately decide whether Burns is a national treasure or an international one.  As to that question, let me invoke the example of an American judge famous for his commentary on whiskey, who noted:

My friends, I had not intended to discuss this controversial subject at this particular time. However, I want you to know that I do not shun controversy. On the contrary, I will take a stand on any issue at any time, regardless of how fraught with controversy it might be. You have asked me how I feel about whiskey. All right, here is how I feel about whiskey.

[Richard Nordquist, Soggy Sweat’s Famous Whiskey Speech(2018)]

These views, as you will see, are strongly held.

“So if by whisky” you mean the uisge beathaconceived in Scottish yore by stirring in the diastase (that mixture of fermenting enzymes secreted from “the embryo and associated parts of the barley grain”), and flavored by the peat-smoked malt through an age-old process, then BURNS NIGHT calls forth Scotland and Scotch, as surely as a Rabbie Burns’ ode:

I sing the juice Scotch bear can mak us,

In glass or jug.

O thou, my muse! guid auld Scotch drink!

[Scotch Drink]

“But if by whiskey” you mean the water of the life aged in the gestational vessel of an Americanoakbourbonbarrel (a trait common to the only whiskey officially recognized by the Robert Burns World Federation(Robert Burns Single Malt) and many other spirits, beers and winesaround the world), then maybe whisky from Scotland is in some sense still arguably from an American borne.  If that be the case, then maybe there can also something very American about a poet who had the ideals of American liberty course through his veins and flow through his pen.  So BURNS NIGHT can recall more, and other, than just Scotch and Scotland without confusing anyone.

So as to this registration contest, I have stated my views, albeit for and against.  And so I conclude, “This is my stand.  I will not retreat from it.  I will not compromise,” with due acknowledgement to Soggy Sweat.

But in parting, I find it no compromise to note that there is at least one other US registered BURNS mark out there on whiskey, or in this context whisky without the eFireball Cinnamon Whiskyhas the tagline TASTES LIKE HEAVEN. BURNS LIKE HELL. (Reg. No. 3714292) (emphasis added).  That spirit was born in a Canadian winter(which apparently justifies dropping the “e”), and is available in the UK as well as the US and elsewhere.  But, as they might ask rhetorically in Ayrshire (or with the aid of a translator), “nobody woods associate ‘at whiskey wi’ Rabbie Burns ur Scootlund, woods they?”  Good question, because even the challenged BURNS NIGHT is advertised as American-made, but perhaps only confusingly so by use of the Scottish-Gaelic word Ameireaganach.  Thus, the whole topic remains so complicated that I may need a drink.

Accordingly, ‘til January 25th, or an evening close by, and then again during our next Burns Supper, let us toast one another:

Slàinte Mhath!

Do dheagh shlainte!

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