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 Pittsburgh 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 Alexander Hamilton 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 George Washington who, in order to make Mt. Vernon profitable, became in his later years one of the largest distillers of rye whiskey 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 Western Pennsylvania 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 Whisky”, 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.