Deceptive Geographical Association Under the Lanham Act
Article By Ann Potter Gleason
The National Law Review
Thursday, April 15, 2021

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.

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