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

ILN IP Insider

James P. Flynn, Managing Director of the Firm and Member in the Litigation and Employment, Labor & Workforce Management practices, in the firm’s Newark office, authored an article in ILN IP Insider, titled “Is BURNS NIGHT OFF KILT-ER? Scotch, Trademarks & Distilling American Meanings.”

Following is an excerpt:

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. ... 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 ... 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). …