The Scotch Whisky Association Ltd.v.ASW Distillery, LLC

Trademark Trial and Appeal Board

Feb 16, 2021

91252682 (T.T.A.B. Feb. 16, 2021)

Baxley
February 16, 2021

Opposition No. 91252682

The Scotch Whisky Association Ltd.

v.

ASW Distillery, LLC

Before Cataldo, Shaw and Dunn,
Administrative Trademark Judges.

By the Board:
This case now comes up for consideration of Applicant’s request for
reconsideration (9 TTABVUE) of the Board’s July 29, 2020 order (8 TTABVUE)
denying Applicant’s motion to dismiss the notice of opposition under Fed. R. Civ. P.
12(b)(6) for failure to state a claim on which relief may be granted. Opposer filed a
brief in opposition (10 TTABVUE).
Background
Applicant seeks to register on the Principal Register the mark BURNS NIGHT in
standard characters for “Malt whisky; Whiskey” in International Class 33.1 Opposer
filed a notice of opposition to registration of Applicant’s mark. In the ESTTA cover

1 Application Serial No. 88427906, filed May 13, 2019, based on an assertion of use in
commerce under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), and alleging March 2019
as the date of first use anywhere and of first use in commerce.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
This decision is a
precedent of the TTAB.
Opposition No. 91252682

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form, Opposer indicated that it intended to allege claims that Applicant’s mark is: (1)
primarily geographically deceptively misdescriptive under Trademark Act Section
2(e)(3), 15 U.S.C. § 1052(e)(3); and (2) a geographical indication which, if used on or
in connection with wine or spirits, identifies a place other than the origin of the goods
under Trademark Act Section 2(a), 15 U.S.C. § 1052(a).2 In the Board’s July 29, 2020
order, we determined, among other things, that, at a minimum, Opposer has pleaded
a sufficient factual basis for claims under the more general deceptiveness provision
of Section 2(a) and under Section 2(e)(3) (8 TTABVUE 5).
In the request for reconsideration, Applicant contends that, in view of the January
1, 1996 enactment of the deceptiveness provision of Section 2(a) that specifically
pertains to wines and spirits, the more general provision of Section 2(a) is no longer
applicable to wines and spirits; that allowing Opposer to bring a claim under the more
general provision of Section 2(a), without ruling on whether Opposer’s allegations
constitute a plausible claim under the wines and spirits provision of Section 2(a),
renders unclear the standards under which the claims will be tested; and that the

2 Trademark Act Section 2, 15 U.S.C. § 1052, provides in relevant part:
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—
(a) Consists of or comprises … deceptive … matter; … or a geographical
indication which, when used on or in connection with wines or spirits,
identifies a place other than the origin of the goods and is first used
on or in connection with wines or spirits by the applicant on or after
[January 1, 1996].
…
(e) Consists of a mark which, … (3) when used on or in connection with the
goods of the applicant is primarily geographically deceptively misdescriptive of
them….
(emphasis added).
Opposition No. 91252682

3
notice of opposition fails to state a claim that the primary significance of the mark is
geographic “when Opposer asserts in the Notice that it is not.” 9 TTABVUE 5.
In opposition, Opposer contends that Applicant cited no authority for its assertion
that the wines and spirits provision of Section 2(a) rendered the more general
provision of Section 2(a) inapplicable to wines and spirits; that the pleading standards
under the wines and spirits and more general deceptiveness provisions of Section 2(a)
are essentially the same; and that “Opposer properly pleaded its claims that the
trademark BURNS NIGHT, when used in connection with whisky other than Scotch
Whisky, is geographically deceptive and misdescriptive.” 10 TTABVUE 4.
Standard for Rule 2.127(b) motion
The premise underlying a motion for reconsideration, modification or clarification
under Trademark Rule 2.127(b), 37 C.F.R. § 2.127(b), is that, based on the facts before
it and the prevailing authorities, the Board erred in reaching the order or decision it
issued. Such a motion may not be used to introduce additional evidence, nor should
it be devoted simply to a reargument of the points presented in a brief on the original
motion. Rather, the motion should be limited to a demonstration that based on the
facts before it and the applicable law, the Board’s ruling is in error and requires
appropriate change. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE § 518 (2020).
Discussion
Applicant’s assertion that the Board erred in allowing Opposer’s claim under the
more general deceptiveness provision of Section 2(a) is unpersuasive. First, we note
Opposition No. 91252682

4
that the plain language of the general deceptiveness provision does not exclude wines
and spirits, and that provision previously has been held to apply to spirits. A mark
may be refused registration under Trademark Act Section 2(a), where it “[c]onsists of
or comprises … deceptive matter.” A term is deceptive where (1) it 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. See In
re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir. 2009). 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).
Scotch Whiskey Ass’n v. U.S. Distilled Prods. Co., 952 F.2d 1317, 21 USPQ2d 1145,
1146-7 (Fed. Cir. 1991) (Section 2(a) deceptiveness claim based in part on allegation
that the mark “MCADAMS for whisky not produced in Scotland deceptively connotes
and signifies that the product sold under said mark has a place of produce and
geographic origin in Scotland” found to be legally sufficient, notwithstanding that
plaintiff did not allege that the mark is primarily recognized as a geographical term
in and of itself). Applicant has failed to persuade the Board that it erred in its
determination that Opposer has pleaded a sufficient factual basis for claims under
the general deceptiveness provision of Section 2(a).
Although Applicant argues that the post-Scotch Whisky Association amendment
of Section 2(a) made the general deceptiveness provision inapplicable to wines and
spirits, that is not the case. The amendment added a provision allowing for refusal of
Opposition No. 91252682

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registration of a mark under Section 2(a) where it “[c]onsists 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 and is first used on or in
connection with wines or spirits by the applicant on or after” January 1, 1996 (“the
wines and spirits provision”). The wines and spirits provision of Section 2(a) was
added by the Uruguay Round Agreements Act, implementing the Trade-Related
Intellectual Property (“TRIPs”) portions of the General Agreement on Tariffs and
Trade (“GATT”) through the Uruguay Round Agreements Act (“URAA”), Pub. L. No.
103-465, 108 Stat. 4809 (1994) to provide “[a]dditional [p]rotection” (emphasis
added) for wines and spirits consistent with TRIPs Article 23.3 URAA, Section 3,
Article 23; TRIPs, Article 23. Congress did not state that the Section 2(a) wines and
spirits provision eliminated or rendered inapplicable more general Section 2(a)
deceptiveness claims with regard to wines and spirits. Further, the adoption of the
wines and spirits provision did not overrule the Scotch Whiskey Ass’n decision.
Applicant’s motion also asserts that the Board erroneously refused to dismiss
Opposer’s Section 2(e)(3) claim that the mark is primarily geographically deceptively
misdescriptive. Specifically, Applicant argues that the Notice of Opposition is missing
a required element: that the primary significance of the mark is a generally known
geographic location. On reconsideration, we agree. See In re Miracle Tuesday, LLC,

3 Article 23 includes the requirement that World Trade Organization members “provide the
legal means for interested parties to prevent use of a geographical indication identifying …
spirits not originating in the place indicated by the geographical indication in question, even
where the true origin of the goods is indicated or the geographical indication is used in
translation or accompanied by expressions such as ‘kind,’ ‘type,’ ‘style,’ ‘imitation’ or the
like.” Id.
Opposition No. 91252682

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695 F.3d 1339, 1343, 104 USPQ2d 1330, 1332 (Fed. Cir. 2012) (mark is primarily
geographically deceptively misdescriptive under Section 2(e)(3) where: (1) the
primary significance of the mark is a generally known geographic location, (2) the
goods or services do not originate in the place identified in the mark, and (3)
purchasers would be likely to believe that the goods or services originate in the
geographic place identified in the mark, and the misrepresentation is a material
factor in a significant portion of the relevant consumer’s decision to buy the goods or
use the services). Because Opposer has not alleged that the primary significance of
the mark BURNS NIGHT is a generally known geographic location, Opposer has
failed to allege a sufficient claim under Section 2(e)(3), and the request for
reconsideration is granted with regard to that claim.
For a similar reason, Applicant argues that the Board erred in failing to dismiss
Opposer’s claim under the wines and spirits provision of Section 2(a). As mentioned
above, the wines and spirits provision in Section 2(a) provides for refusal of any mark
that “[c]onsists 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 .…” (emphasis added).
The Notice of Opposition alleges only that the involved mark BURNS NIGHT “is
highly evocative of Scotland when used on a whisky product” because the mark refers
to celebration of Scottish poet Robert Burns’ birthday (1 TTABVUE 5, paragraph 7).
While Opposer, in the ESTTA cover form of the notice of opposition, alleges that the
mark is a “[g]eographic indication which, if used on or in connection with wine or
Opposition No. 91252682

7
spirits, identifies a place other than the origin of the goods” (1 TTABVUE 1), the mere
general mention of a claim in the ESTTA cover form for a complaint is insufficient to
plead that claim. See Embarcadero Techs. Inc. v. RStudio Inc., 105 USPQ2d 1825,
1827 n.2 (TTAB 2013). Therefore, Opposer did not allege facts which, if proven, would
establish that Applicant’s mark identifies a place -- that is, a place name,
abbreviation, nickname, symbol, or outline or map of a geographic area -- other than
the origin of the goods at issue.4 See TMEP § 1210.08(a). Opposer therefore failed to
state a claim under the wines and spirits provision of Trademark Act Section 2(a).
Conclusion
Based on the foregoing, Applicant’s request for reconsideration is granted to the
extent that we expressly find that Opposer has failed to state a claim under the wines
and spirits provision of Trademark Act Section 2(a) and under Trademark Act Section
2(e)(3);5 the request is otherwise denied. In keeping with Board practice, Opposer is
allowed until twenty days from the date of this order to file an amended notice of
opposition in accordance with the foregoing. See TBMP § 503.03 and cases cited
therein. If Opposer does not file an amended notice of opposition, the original notice

4 Registrations are refused or cancelled under the wines and spirits provision of Section 2(a),
where (1) the primary significance of the relevant term or design is geographic, e.g., a place
name, abbreviation, nickname, symbol, or an outline or map of a geographic area, (2)
purchasers would be likely to think that the goods originate in the geographic place identified
in the mark, (3) the goods do not originate in the place identified in the mark, (4) a purchaser’s
erroneous belief as to the geographic origin of the goods would materially affect the decision
to purchase the goods, and (5) the mark was first used in commerce by the applicant on or
after January 1, 1996. TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”)
§ 1210.08(a) (October 2018).
5 As discussed above, Opposer has pleaded a sufficient factual basis for claims under the
general deceptiveness provision of Section 2(a).
Opposition No. 91252682

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of opposition will remain the operative complaint here, and this case will go forward
under the general deceptiveness provision of Section 2(a) only.
Proceedings are resumed. Dates are reset as follows.

Time to Answer 3/29/2021
Deadline for Discovery Conference 4/28/2021
Discovery Opens 4/28/2021
Initial Disclosures Due 5/28/2021
Expert Disclosures Due 9/25/2021
Discovery Closes 10/25/2021
Plaintiff's Pretrial Disclosures Due 12/9/2021
Plaintiff's 30-day Trial Period Ends 1/23/2022
Defendant's Pretrial Disclosures Due 2/7/2022
Defendant's 30-day Trial Period Ends 3/24/2022
Plaintiff's Rebuttal Disclosures Due 4/8/2022
Plaintiff's 15-day Rebuttal Period Ends 5/8/2022
Plaintiff's Opening Brief Due 7/7/2022
Defendant's Brief Due 8/6/2022
Plaintiff's Reply Brief Due 8/21/2022
Request for Oral Hearing (optional) Due 8/31/2022

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
manner and timing of taking testimony, matters in evidence, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
Opposition No. 91252682

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submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).