The National Law Review reports
Deceptive Geographical Association Under the Lanham Act
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).
Read the full article at
https://www.natlawreview.com/article/deceptive-geographical-association-under-lanham-act