NEW SCOTLAND — What’s in a name? Can an industry trademark trump a producer’s sense of place?

In 2016, Jesse Sommer and Patrick Carey, members of the Voorheesville Class of 2001, started a liquor company, New Scotch LLC, an homage to the town where they grew up — New Scotland.

In July, a powerful, and litigious, trade organization that represents the multi-billion dollar Scotch Whisky industry told them to cease and desist.

Before they were legally allowed to drink it, Sommer and Carey had talked about crafting a liquor derived from New Scotland. They knew that grain was available in town, and that there was a wide variety from which alcohol can be distilled.

It was an idea that the friends would return to occasionally over the ensuing 15 years.

“Certainly, by 2016, we decided that we wanted to be serious — seriously produce and manufacture a New Scotland-based alcohol, to some extent, for New Scotland by New Scotland,” said Sommer.

From Indian Ladder Farms, barley was obtained; from Randy and Rebecca Miller, Sommer’s Clipp Road neighbors, wheat, rye, and corn were procured; the malt is from the Hudson Valley; and the distillery is the Albany Distilling Company, on Montgomery Street, in Albany.

Sommer and Carey’s hooch isn’t available for purchase yet — it’s still being aged. By 2020, Sommer said, they will be selling apple brandy, vodka, bourbon, and whiskey.

It’s two planned lines of whiskey that have drawn the ire of the Scotch Whisky Association: New Scotch LLC has filed trademark applications for the names, “Auld Lang Syne” and “New Scotch” whiskey.

Cease and desist

“In protecting the identity of Scotch Whisky,” says the cease-and-desist letter from Reed Smith LLP, attorneys for the association, to Adam Kotok, Sommer and Carey’s attorney, “the Association routinely monitors the sale of Scotch Whisky-related goods that are potentially misleading as to the origin or identity of goods sold.”

“I can’t stress to you enough the scale,” Sommer said. “We’re producing [not yet for sale] fewer bottles than there exists people of drinking age in New Scotland — and the town has fewer than 10,000 people in 68 square miles.”

The United States Census Bureau bears this out, estimating that New Scotland has a population of 8,758, according to the most recent data available. About 24 percent of residents are under the age of 19; while about 8 percent of the town’s population is between the ages of 20 and 24.

But, according to the association, size is not the issue.

“We are under a duty to prevent the intellectual property attaching to Scotch Whisky from being infringed regardless of the size of the infringement,” said Lindesay M. Low, the deputy director of legal affairs for the Scotch Whisky Association, in an email to The Enterprise. “It is also important to remember that New Scotch have applied to register federal trademarks which if granted will give them exclusive rights in those terms across the United States.”

Sommer, who is himself an attorney, says Low’s remark is a total misstatement of the law, and a willful misrepresentation of his and Carey’s position.

“First, nothing about issuance of the [trade]mark ‘New Scotch’ would permit us to impede, interfere, stop, influence, profit from, or alter any scotch whisky distiller from using the term ‘scotch,’ " Sommer wrote in a follow-up email to The Enterprise. “Our company’s name is ‘New Scotch Spirits’ (New Scotch, LLC), and every single type of alcohol we produce we describe on the label as a New Scotch vodka, or a New Scotch whiskey, or a New Scotch bourbon. By applying for the [trade]mark ‘New Scotch,’ we are asserting our right to use that phrase on our labels, and to protect our brand should another distiller seek to use the phrase New Scotland.”

For example, Sommer wrote, there is a New Scotland Brewing Company, in Nova Scotia, Canada.

“The second reason this argument is specious has to do with what the Scotch Whisky Association has been doing from the beginning,” Sommer said in the email. “Imagine if instead of ‘New Scotland’ our town were known as ‘Dew Scotland.’  Our brand would thus be ‘Dew Scotch spirits.’ The Scotch Whisky Association knows this … They know that our filing is for a two-word phrase referencing our town … Yet they insist on trying to undermine our claim to it by making it sound like what we’re doing is leveraging the word ‘New’ to suggest we’re distilling a version of scotch whisky. We do not distill scotch!  Scotch whisky is distilled only in Scotland. We are proud that our alcohol is American made!”

The trademark is closely guarded by the Scotch Whisky Association as the industry is so important to the country’s economy. In 2017, according to the Scotch Whisky Association, the equivalent of 1.23 billion bottles of scotch whisky were exported globally. Whisky is Scotland’s third-largest industry, behind energy and financial services.

The Scotch Whisky industry, in 2017, posted record-breaking exports of £4.37 billion, about $5.7 billion, according to the Scotch Whisky Association; it accounts for 78 percent of all the United Kingdom’s spirits exports, and about 20 percent of all the UK’s food and drink exports.

The Scotch Whisky industry accounts for about 15 percent of all of Scotland’s exports. For comparison, food, beverage, and feed, the United States’ largest goods export, accounts for about 6 percent of all exports; travel and transportation, a service export, is the United States’ largest export overall, accounting for about 10 percent of all exports.

The whisky industry in Scotland — like the auto industry at one time in the United States — is so deeply identified with a place and people that, according to the Irish Times, “few organizations are as litigious” as the Scotch Whisky Association, which is “on the go around the world in a never-ending battle to protect its members’ brands and reputation.”

The Scotch Whisky Association is not alone in protecting its members’ trademarks.

The European Union, in an effort to shield the “quality” products of its member countries, in 2012, enacted a law to protect, from unfair competition, “agricultural products or foodstuffs with identifiable specific characteristics, in particular those linked to their geographical origin.” So, for example, Stilton cheese can be produced only in the three English counties of Nottinghamshire, Derbyshire, and Leicestershire.

Filing lawsuits

The most recent legal report from the Scotch Whisky Association, for 2015-16, said that the pace of work in the legal department had been relentless, and “frenetic.”

Twenty-two cases went to legal proceedings, according to the report, in Armenia, China, Ecuador, Germany, India, Italy, Myanmar, Nigeria, South Africa, and Spain.

In addition, the legal department raised objections to over 238
trademark applications in 55 countries, the report said.

“At any one time, we will have several hundred pending trademark objections across the world,” said Low, in an email to The Enterprise.

The Scotch Whisky Association isn’t punching down when it goes after Sommer and Carey; it goes after everyone.

The definition of Scotch Whisky is precise, legal, and excessive: A “Scotch Whisky,” is a whisky produced in Scotland, distilled at a distillery in Scotland from water and malted barley; has been matured for a period of not less than three years; and has been matured only in Scotland. The United States Department of Treasury Code of Federal Regulations recognizes and accepts the Scotch Whisky Association’s definition of Scotch Whisky, and enforces its intellectual property rights.

The association, in its cease-and-desist letter, claims that Sommer and Carey, with their Auld Lang Syne and New Scotch Whiskies, intend to market and sell a line of “new” Scotch Whisky, which infringes on the distinct product made by its members.

This claim is one for the grammar police.

The Scotch Whisky Association, said Sommer, is attempting to present the “New” in his New Scotch Whiskey as an adjective, a word used to describe or modify the noun — in this case, Scotch. The intention is to specify the noun, Scotch, as a distinct product.

The “New” in New Scotch Whiskey “is more accurately referenced as part of a singular pronoun,” according to Sommer, meaning the whiskey comes from New Scotland and is therefore New Scotch.

The Scotch Whisky Association alleges that, among other things, New Scotch LLCs whiskies are “geographically misdescriptive,” a trademark-law term that means Sommer and Carey may be misleading consumers about the qualities of New Scotch LLC whiskey; i.e., someone could hypothetically be tricked into buying New Scotch LLC “Auld Lang Syne” whiskey, from Albany, when they were expecting “Scotch Whisky,” from Scotland.

The cease-and-desist letter further states that United States Treasury regulations specifically forbid the use of words that could cause someone to think that a product is wholly produced in Scotland, when it is not; for example, “Scotch,” “Scots,” and “Highland,” are words commonly associated with Scotland.

Sommer points out that U.S. Treasury regulations also say it is legal to use a geographic name for a product, if that region serves as the source of the product — which is what he and Carey are trying to do.

The cease-and-desist letter points out that the brand doesn’t originate in New Scotland, New York, since the distillery is elsewhere, and also says that a Facebook page promoting it contains “figures wearing kilts, and one playing the bagpipes, that are highly indicative of Scotland when used with a whisky product.” The letter says further that “Auld Lang Syne,” written by the national poet of Scotland, Robert Burns, “is highly evocative of Scotland.”

Manor of Rensselaerswijck

“There’s actually an interesting backstory to why this is called New Scotland,” Sommer said.

June 12, 1772, is known as “Black Monday,” according to an account of early immigration to the area by Debbie Mahan, in the spring 2017 New Scotland Historical Association newsletter.

The collapse of Neale, James, Fordyce, and Downe, a London banking house, on “Black Monday,” wrought a financial disaster for thousands of Scottish citizens, according to Mahan.

In May 1774, two-hundred-and-nine passengers boarded the Gale for the nine-week trip to New York. Prior to leaving, passengers had learned that the British Parliament had passed the Boston Port Bill, a consequence of the Boston Tea Party.

The Massachusetts Bay Colony port would close on June 1, 1774, and would not be reopened until all of the tea that had been dumped into Boston Harbor, on December 16, 1773, had been paid for. “As they headed for New York,” Mahan writes of the 209 passengers, “they wondered if the port there would also be closed.”

The Gale arrived and docked, without incident, in New York, on July 19, 1774.

The McCoughtry, Bryce, and Ramsay families, according to Mahan, “boarded sloops at New York City for a trip up ‘Hudson’s River,’ to Albany.”

The three Scottish families settled west of the Normanskill in the Manor of Rensselaerswijck, part of a Dutch feudal-like patroon system, covering what is now Albany County and Rensselaer County as well as parts of Schoharie and Greene counties.

The McCoughtry family, Mahan writes, was “urged to settle on 153 acres of leased land in the Van Bael patent in what we now call New Scotland.”

To celebrate New Scotland’s tradition, Sommer said, “You still have to talk about Scotland.”

“We’re not trying to mislead the public, we’re not trying to capitalize off the popularity of Scotch, we’re not trying to compare our product to Scotch. We’re a couple of New Scots producing whiskey, vodka, bourbon, and brandy,” Sommer wrote in an email to The Enterprise. “Together, these are all New Scotch liquors, grown in our hometown and distilled in our county.”

Home

It’s about place.

“I’ve been other places, man, and people are different out there,” Sommer said.

After college, Sommer went to New York City, then to Washington, D.C.; he’s lived in North Carolina and Louisiana; he’s been deployed overseas; and, now, he is stationed in Florida.  

His past decade of military service has made his visits home even more sporadic.

In New Scotland, Sommer said, everyone knows everyone.

“We all come out for the Memorial Day parade — you ever been to the Memorial Day parade?” he asks, before emphatically answering. “You need to go to the Voorheesville Memorial Day parade. You haven’t seen Americana until you see the entire village — my [expletive] mom on the village animal-clinic float with the Voorheesville Fire Department driving behind it.”

Then, he said, there are the Hannaford-sponsored fireworks on Tork’s Hill.

“And you’re surrounded by your extended family because you went to school with everyone, or their kids, or their parents,” Sommer said, passionately. “That’s not left anymore.”

“I love that I can come here, and she knows me from when I was 10,” Sommer said of the Enterprise editor. “These streets don’t change that much. I definitely feel more secure being in this area — for whatever it’s worth.”

Sommer admits that, to a degree, he is sympathetic to the Scotch Whisky Association’s protests, but, he said, “It’s New Scotland; there is a heritage to this location. This municipality derives from the same tradition that Scotland derives from.”

“We appreciate that ‘Scotland’ is used as a place name in other parts of the world, but when the words ‘Scotland’ or ‘Scotch’ are used on a whisky, consumers will think of whisky produced in Scotland, not New York State,” said Low, of the Scotch Whisky Association, in an email.

Sommer said that he and Carey will have to wait to see how things shake out; there is a legal process that is happening. In the meantime, the Scotch Whisky Association has blocked their trademark application, so, most likely, names and labels will have to be changed. But, Sommer said, there’s still time; their liquor is still in barrels.

“This place,” ignorance or otherwise, Sommer quipped of his hometown, has been nothing but supportive.

“None of us realized that we’d be antagonizing the United Kingdom.”