Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1018085 Filing date: 11/25/2019

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91251774 Party Defendant Distilling Company, LLC Correspondence ALEXANDER H. GRELLI Address PO BOX 1317 2401 SMALLMAN ST, PITTSBURGH, PA 15222 PITTSBURGH, PA 15230 [email protected] no phone number provided

Submission Answer Filer's Name Alexander H. Grelli Filer's email [email protected] Signature /Alexander H. Grelli/ Date 11/25/2019 Attachments Kilted Rye Answer to Opposition.pdf(114688 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of: Application Serial No. 88/308,192 Published in the Official Gazette ​ on June 25, 2019 Mark: KILTED RYE ​

Opposition No.: 91251774

Serial No. 88308192 THE SCOTCH WHISKEY ASSOCIATION, Opposer,

v.

PITTSBURGH DISTILLING COMPANY, LLC, D/B/A WIGLE WHISKEY,

Applicant.

ANSWER AND AFFIRMATIVE DEFENSES OF PITTSBURGH DISTILLING COMPANY, LLC, D/B/A WIGLE WHISKEY TO OPPOSITION

NOW COMES Applicant, Pittsburgh Distilling Company d/b/a Wigle Whiskey ​ ("Wigle"), and in response to the Scotch Whiskey Association (“Association”) Oppositions states:

PRELIMINARY STATEMENT

Wigle is a family-owned artisan distillery, making American whiskey from regionally

sourced grains entirely within its small distillery in the heart of Pittsburgh. Wigle has built a

national reputation by making high quality hand crafted spirits that celebrate the birthplace of

American whiskey and the history of the small craft distillers who rose in rebellion when George

Washington and imposed the first-ever excise tax in our country's history, a

Page 1 of 12 tax on whiskey and alcohol production. Wigle is named after one of the two insurgents sentenced to death but later pardoned by who, in order to make Mt. Vernon profitable, became in his later years one of the largest distillers of in the country. The

Association opposes the use of "Kilted Rye", a label used on one of Wigle’s line of American

Rye Whiskeys. Wigle’s Kilted Rye is an American Rye Whiskey that finished aging in used quarter casks sold by a Scottish Distillery to the American secondary market. The Association does not object to Scottish distilleries selling used barrels to American distilleries, but opposes the Registration on the grounds that KILTED RYE will likely cause Wigle’s customers to believe that Wigle’s Rye Whiskey is made in Scotland. Wigle unequivocally denies this claim, and, in fact, does everything possible to publicize the fact that Wigle’s American Rye is locally produced. The Wigle label has been approved by the United States Alcohol and Tobacco Tax and Trade Bureau which has the responsibility under the Federal Standards of Identity to determine if the label would cause consumers to believe that the whiskey was produced in

Scotland. “Kilted” does not refer to a geographical region but rather is an expression of a Gaelic manner of dress. The Wigle label clearly states on the front that the Wigle Rye Whiskey is

“made from scratch with regional grain from our family owned distillery in Pittsburgh”. The label states that the whiskey is “milled, fermented and distilled in Pittsburgh”. The label repeats again that the whiskey is “distilled and bottled by Pittsburgh Distilling Company, LLC

Pittsburgh, PA”. The KILTED RYE mark transparently and concisely describes exactly how the whiskey was made-an American Rye Whiskey wrapped in a Scottish barrel. The Association's

Opposition is without merit since Wigle's raison d'etre is to embrace and resurrect the innovative ​ ​ spirit of American Rye Whiskey and appears to be driven by the Association’s “zero tolerance”

Page 2 of 12 policy that opposes any word that is “evocative” of Scotland. Rye Whiskey has not historically or in the marketplace been associated with Scotch whiskey which traditionally is made from malted barley and aged for long periods of time in used barrels. America, on the other hand, is the birthplace of Rye Whiskey, and Pittsburgh and made the world-renowned “Old Monongahela Rye”. In the 1800s Pittsburgh and Western Pennsylvania were making more Rye Whiskey than anyplace else in the world. A few Scottish distilleries in the past two years have begun making a Single Grain Whiskey, which includes, along with malted barley, rye grain which, upon information and belief, is the first rye forward whiskey made in Scotland in over 100 years, primarily in response to the rising popularity of Rye

Whiskey in the United States. Small distilleries such as Wigle have led this renaissance in

American Rye Whiskey. Under Scottish law Scottish distilleries are not allowed to identify their whiskey as a “Rye Whiskey”, but rather must use the term “Single Grain Whiskey”. Amercian law, however, requires U.S. distilleries to specifically identify their whiskey as Rye Whiskey if that is the predominant grain. Thus, if Rye Whiskey is used on a label it cannot have been produced in Scotland and must have been made in the U.S. The Registration should be approved since it clearly describes an American made Rye Whiskey finished in used Scottish quarter casks and has been so approved by United States Alcohol and Tobacco Tax and Trade Bureau.

ANSWER PARAGRAPH BY PARAGRAPH

In response paragraph by paragraph to the Association's Opposition, Wigle states:

1. Wigle admits that it seeks to register the mark KILTED RYE.

2. Wigle admits that its application for KILTED RYE was published for opposition on June 25, 2019.

Page 3 of 12 3. Wigle neither admits or denies since Wigle is without information or knowledge sufficient to form a belief as to the allegations and opinions in paragraph three. In further response, Wigle states that Rye Whiskey is historically an American whiskey. “Scotch ”, however, as used by the Association in paragraph three, is overwhelmingly whiskey made from malted barley and aged for long periods of time in used barrels, usually used bourbon barrels purchased from American distilleries. In the last two or three years, a few Scottish distilleries have produced Single Grain Whiskey made with rye, in addition to the required malted barley, and aged for relatively short periods of time. Per the marketing of one of the Scottish distilleries, this Single Grain Whiskey made with rye and malted barley is the first such whiskey produced in

Scotland in over 100 years. The Scottish distilleries are attempting to capitalize on the popularity of American Rye Whiskey, led by innovative small artisan distilleries like Wigle. The Scottish

Single Grain whiskey made from rye is a miniscule portion of the whiskey produced by Scottish distilleries and does not enjoy “substantial prestige and salability” like the traditional Scotch that is made from malted barley and aged for long periods of time.

4. Wigle neither admits or denies the legal conclusions stated in paragraph four. In further response, Wigle states that the laws of the United States and the United Kingdom prohibit misrepresenting the country in which whiskey has been produced. Article 10 of the Scotch

Whisky Regulations, Locality and region geographical indications, itemizes geographic indicia, ​ ​ ​ ​ such as Highland and Lowland, and further defines these indicia by geographical boundaries.

The laws of the United States similarly refer to proper nouns that identify nationality (Scotch and

Scots) and geographic indicia (Highland and Highlands) and other strictly comparable terms.

Kilt is not a word that refers to a geographical region. The Association seeks to prohibit the use

Page 4 of 12 of any word that is “evocative” of Scotland even if there is no actual or implied representation that the whiskey was made in Scotland. United States Alcohol, Tobacco Tax and Trade Bureau

("TTB") found the Wigle label in compliance with United States law and the Wigle label clearly and unequivocally states that Wigle's Rye Whiskey is made in Pittsburgh, Pennsylvania.

“Evocative” means anything that tends to elicit an emotional response and would conceivable include much of the English language, including the word “whiskey” which is Gaelic in origin.

5. Wigle neither admits or denies the legal conclusions contained in paragraph five.

In further response, Wigle states that the TTB, the United States administrative agency responsible for enforcing the regulation cited by the Association, approved Wigle's label and did not find that it caused any confusion as to the origin of Wigle's American Rye Whiskey.

6. Wigle is without information or knowledge sufficient to form a belief concerning the activities or mission of the Association as alleged in paragraph 6. In further response, Wigle states that it is Wigle's understanding that the Association’s monitoring activity mentioned in paragraph six has a "zero tolerance " policy for any word on a label that might be "evocative" of

Scotland. “Evocative” means a word that tends to elicit an emotional response and, as such, the

Association’s monitoring policy goes well beyond policing products that are misrepresenting the country of origin. This policy can, as in this case, lead to over zealous prosecution where there is no actual or likely confusion concerning the country in which whiskey is produced. The policy further can chill small craft distilleries that do not have the resources to defend a legal challenge by the Association which is composed of some of the largest alcohol manufacturing conglomerates in the world.

Page 5 of 12 7. Wigle admits that it seeks to register KILTED RYE which is part of TTB approved label for Wigle's American Rye Whiskey that is finished in a barrel sold by the

Scottish distillery to the United States secondary market. Wigle denies all remaining allegations and legal conclusions in paragraph 7. In further response, Wigle states that Scottish distilleries sell its used barrels to United States customers so that American whiskey can be finished in

Scottish barrels. KILTED RYE is a transparent explanation of exactly what has occurred in the whiskey making process, i.e. an American Rye Whiskey has been wrapped in a used Scottish barrel in the same way that an American can wrap his body in a kilt. The kilt does not turn an

American into a Scot, and the Scottish barrel does not turn an American Rye Whiskey into a

Scotch. A “kilt” is an expression of Gaelic culture, not a description of a specific geographical area such as burgundy wine from Burgundy, France or champagne from Champagne, France, or port wine, from Porto, Portugal. Wigle’s label explicitly states that Wigle’s Rye is “made from scratch with regional grain from our family owned distillery in Pittsburgh” . The label additionally states that Wigle’s Rye is “...milled, fermented and distilled in Pittsburgh” and reiterates for a third time that the whiskey is “...distilled and bottled by Pittsburgh Distilling

Company, LLC Pittsburgh, PA”. Wigle's label has not caused any confusion, and is not likely to cause any confusion since the label clearly states that Wigle's Kilted Rye is an American Rye

Whiskey made in Pittsburgh, Pennsylvania.

8. Wigle is without knowledge or information sufficient to form a belief concerning the allegations in Paragraph 8 and leaves the Association to its proofs. In further response, Wigle upon information and belief states that Scottish law prohibits the use of "rye" to describe a whisky. Scottish distillers must describe the whisky as a "Single Grain" whisky. Thus, the

Page 6 of 12 appearance of "Rye Whiskey" on Wigle’s label indicates that the whiskey could not legally have been produced in Scotland. Further, although a few distilleries are producing Scottish "Single

Grain " whisky, this is not a product associated in any meaningful way in the marketplace with

Scotch whisky. Scotch whisky’s reputation is based upon whisky made from malted barley that has been aged in a used barrel for a long period of time. Arbikie, one of the three distilleries mentioned by the Association in its Opposition, markets its Single Grain Whisky as the first rye whiskey made in Scotland in over 100 years. Arbike is a family owned distillery like Wigle, but was established three years after Wigle. Arbike first produced its Single Grain whisky in 2018, aging it for a few years. Arbike announced that it had only 998 bottles of it’s Single Grain

Whisky. Inchdiarnie, the second distillery cited by the Association, opened in 2016, five years after Wigle. The final distillery mentioned by the Association is Bruichladdich which does not mention Single Grain whisky on its website, proclaiming only that its whiskys are “...100%

Scottish barley…” Wigle derives no benefit from associating itself with distilleries that have such a tenuous association with the historical production of rye whiskey.

9. Wigle neither admits or denies the legal argument made by the Association in paragraph 9, but will respond with legal arguments in support of the registration at the appropriate time.

10. Wigle denies each and every allegation in paragraph 10 for the reason that they are not true. Wigle's label and representations clearly explain the origin of the Wigle's American

Rye Whiskey. Wigle wants all consumers to know that Wigle's Whiskey is made locally using regional grains. In fact, Wigle sponsored an experiment to determine the terroir effect of local ​ ​ grains and climate on whiskey taste by making batches of rye whiskey from different grains

Page 7 of 12 throughout the United States. Wigle's mission is to produce products that have a unique local

flavor or are a unique expression of a spirit such as an American Rye aged in a smoky Scottish

barrel.

11. Wigle denies each and every allegation in Paragraph 11 for the reason that they

are untrue and call for a legal conclusion.

12. Wigle denies each and every allegation in Paragraph 12 for the reason that they

are untrue and call for a legal conclusion.

13. Wigle denies each and every allegation in Paragraph 13 for the reason that they

are untrue and call for a legal conclusion.

14. To the extent not explicitly admitted, all allegations in the opposition are denied.

AFFIRMATIVE DEFENSES

NOW COMES Wigle and to the extent the following are regarded as Affirmative ​ Defenses assert:

A. The Association is estopped from claiming that Wigle’s label misleads consumers concerning the geographical origin of the Wigle’s Rye Whiskey since the Alcohol and Tobacco

Trade and Tariff Bureau specifically considered this issue and approved the label.

B. The Association is estopped from bringing a claim since Scottish distilleries with the blessing of the Association routinely sell used barrels to American distillers for the aging of

American whiskey, and American distilleries throughout history have sold American barrels to

Scottish distilleries to age Scottish whiskey.

C. The Association lacks standing to oppose since it has not alleged that a specific trademark of any Scottish member distillery has been infringed.

Page 8 of 12 D. The Association has failed to state a claim upon which relief can be granted because it asserts the legal standard to be applied to this Opposition proceeding is whether “...a label or packaging...incorporates any word, geographical name, picture or device which is evocative of Scotland…” (September 25, 2019 Cease and Desist Letter). “Evocative” means anything which tends to evoke an emotional response. Such a standard is vague, overbroad, and susceptible to uneven and arbitrary enforcement by a government agency.

E. The Association has failed to state a claim upon which relief can be granted and is estopped from making its claim because Scotttish law forbids the use of “Rye Whisky” on a bottle of whisky made in Scotland. American law, on the other hand, requires the use of “Rye

Whiskey” on bottles of whiskey made in the United States. Therefore, as a matter of law a bottle of whiskey labeled as “Rye Whiskey” such as is found on Wigle’s Rye cannot have been made in Scotland, but rather could only have been made in the U.S.

F. The Association has failed to state a claim and is estopped from making its claim since the gist of the American regulations is to protect traditional Scottish whiskey products that have gained a certain reputation in the world because they are made primarily from barley and aged for long periods of time in used oak barrels. Single grain whiskys using rye have not been made in Scotland for over 100 years, make up a miniscule amount of whiskey produced in

Scotland, have no recognizable world-wide reputation and are not claiming infringement of any specific trademark.

G. There is no likelihood of confusion, mistake, or deception between the

Association’s constituents and Wigle’s KILTED RYE mark.

Page 9 of 12 H. Upon information and belief, the Association has adopted a “zero tolerance” policy in monitoring trademark infringement actions in the United States and elsewhere. As indicated in its opposition, the Association’s Membership includes some of the largest global conglomerate manufacturers of alcohol in the world. The Association takes action even though no specific trademark of an Association Member is at issue. In addition, the Association based upon its Cease and Desist Letter will initiate legal action if “...any word, geographical name, picture or device...evocative..” of Scotland is used. “Evocative” means anything that is capable of producing an emotional reaction. People who have been to Scotland remark that a foggy, damp day is evocative of Scotland. This standard is vague, overbroad and not supported in the law. The use of such a standard by the Association chills small craft distilleries in the United

States that have limited resources to defend a legal challenge by the Association as well as chilling cooperation between American and Scottish whiskey makers.

I. Wigle is acting in complete good faith, and with the intent to both represent and market Kilted Rye as a local product consistent with Wigle’s mission and community orientation.

J. Wigle’s use of of the mark KILTED RYE on its Rye Whiskey product qualifies as a fair use. The mark, KILTED RYE, plainly describes the product and in no way serves to deceive a consumer as to the affiliation, connection or association with another person, merely the production method. Further, the mark, KILTED RYE is not deceptive as to whether any of the Association’s members sponsors or approves of Wigle’s products, but again, merely serves to describe the production process.

Page 10 of 12 K. The Association has failed to state a claim in that has not alleged any false or misleading statement of fact. The fanciful name in no way makes a statement of fact that is deceptive as to origin or characteristics of the product, or is unlikely to deceive in any other material way.

L. Wigle reserves the right to assert other affirmative defenses upon completion of discovery.

REQUEST FOR RELIEF

WHEREFORE, Wigle requests that the notice of opposition be dismissed with ​ prejudice, together with whatever other relief the Board may deem appropriate, including the approval and registration of Serial No. 88/30,192.

Respectfully submitted

Pittsburgh Distilling Company, LLC

Date: November 25, 2019

By: / Alexander H. Grelli / ​ Alexander Grelli Mark C. Meyer Managing Members Attorneys at Law 2401 Smallman St Pittsburgh, PA 15222 (412) 224-2827

Page 11 of 12 CERTIFICATE OF TRANSMISSION

I hereby certify that the foregoing ANSWER AND AFFIRMATIVE DEFENSES OF ​ PITTSBURGH DISTILLING COMPANY, LLC, D/B/A WIGLE WHISKEY TO

OPPOSITION is being electronically transmitted via the Electronic System for Trademark ​ Trials and Appeals (“ESTTA”) at http://estta.uspto.gov/ on the date noted below: ​ ​ Date: November 25, 2019 By: /Alexander H. Grelli/ Alexander H. Grelli One of the Attorneys for Applicant Pittsburgh Distilling Company, LLC D/B/A Wigle Whiskey

CERTIFICATE OF SERVICE

I hereby certify that I served a courtesy copy of the foregoing ANSWER AND ​ AFFIRMATIVE DEFENSES OF PITTSBURGH DISTILLING COMPANY, LLC, D/B/A

WIGLE WHISKEY TO OPPOSITION upon one of the Attorneys for Opposer of Application ​ Serial No. 88/308,192:

Jillian L Burstein Reed Smith LLP 10 South Wacker Drive Suite 4000 Chicago, IL 60606 312 207-2779 [email protected]

Via email on the date noted below:

Date: November 25, 2019 By: /Alexander H. Grelli/ Alexander H. Grelli One of the Attorneys for Applicant Pittsburgh Distilling Company, LLC D/B/A Wigle Whiskey

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