Wednesday, September 25, 2013

Test Your TTAB Judge-Ability: Is STACKED Merely Descriptive of Wine?

This applicant sought to register the mark STACKED & Design (shown below) for "wines and sparkling wines," but the PTO refused registration absent a disclaimer of STACKED. What do you think? Does it matter whether these are "full-bodied" wines? Before you answer those questions, take a look at the specimen of use, depicted further below. In re Stacked Wines, LLC, Serial No. 85129206 (September 4, 2013) [not precedential].

Examining Attorney Scott Bibb contended that STACKED immediately conveys information regarding a significant feature of applicant's wine: it is sold in "stacked" packaging. The evidence showed that applicant and others use the term "stacked" when referring to applicant's wine. Examining Attorney Bibb further argued that competitors need to use the word "stacked" to describe their own wines.

Applicant asserted that, although "stacked" may describe its novel packaging, it does not describe a "characteristic, function or property" of the wine. This innovative packaging is not an integral part of the product, said applicant.

The Board, however, pointed out that applicant was simply wrong: the concept of mere descriptiveness does apply to packaging. For example, in a CCPA precedent, the mark MATCHBOX SERIES was held to be merely descriptive of toy cars sold in packaging sized and shaped like matchboxes. J. Kohnstam, Ltd. v. Louis Marx & Co., 126 USPQ 362 (CCPA 1960). And the Board found SQUEEZE N' SERV merely descriptive of "ketchup," opining that "the package is as much a part of the goods as the ketchup." In re Serv-A-Portion Inc, 1 USPQ2d 1915 (TTAB 1986).

Here, the Board ruled, the goods and packaging are necessarily intertwined: wine must be in a container of some sort, whether in a traditional bottle or in applicant's vertically-stacked single-serve packaging. "[I]t is entirely appropriate to consider whether the term STACKED describes a feature of the packaging for the goods."

Applicant's goods are sold in a container consisting of four disposable, single-serve, plastic wine glasses stacked vertically. Thus the word STACKED immediately refers to a significant feature of applicant's brand of wine. The fact that applicant may be the first to use the term in relation to wine is of no consequence. The term STACKED is still merely descriptive of the goods, and must be disclaimed.

And so the Board affirmed the refusal, but allowed applicant two months within which to submit the required disclaimed.

Read comments and post your comment here.

TTABlog note: Well, how did you do? Since applicant presumably has no monopoly on the concept of stacking wine bottles for sale in a stacked package, then others are free to sell their wine in stacked format and they should be able to describe that arrangement as "stacked."

What if the mark included a drawing of a buxom woman, i.e., "stacked," instead of the drawing of four bottles? Would this double entendre get applicant over the disclaimer hurdle?

Text Copyright John L. Welch 2013.


At 8:59 AM, Anonymous Anonymous said...

I disagree with the Board. This is like the THE DONUT case ( ).

STACKED is not descriptive of wine in general, only the applicant's specific stylization of the goods' packaging, which is decidedly novel. The term STACKED is distinctive when used in connection with wine.

I feel that in order for a mark to be merely descriptive, it has to describe the goods in general.

Also, if the application was filed on a 44(e) basis, or if the applicant had filed just the label as a specimen and not the whole bottle/packaging, this would have sailed right through.

At 11:42 AM, Anonymous Anonymous said...

@Anonymous1 Do you disagree with precedential decisions finding a highly descriptive term for packaging to be merely descriptive of the product contained therein? Or just because factually, no competitor has yet adopted this packaging? And should never be permitted to do so? Which of the following decisions do you find were incorrectly decided?

Merely Descriptive:
MATCHBOX SERIES: toys marketed in safety match box-like containers
SQUEEZE ’N SERV: ketchup
STACKED: wine sold in vertically “stacked” disposable single-serve wine glasses
PUCK: electronic surveillance tags in the size and shape of a hockey puck
Not merely descriptive:
THE DONUT: therapy packs shaped like irregular sleeves, not donut shaped

At 3:25 PM, Anonymous Anonymous said...

I disagree with all of those cases found "merely descriptive" except "SQUEEZE 'N SERVE", because "SQUEEZE 'N SERV" is not particularly novel or distinctive in connection with ketchup and/or ketchup packaging.

MATCHBOX SERIES, STACKED, and PUCK are all distinctive in connection with their respective goods.

At 4:11 PM, Anonymous Anonymous said...

The Applicant made a mistake here trying to register both at once. They should have seen this coming.

I would have first filed for STACKED as a word mark.

Then, the design by itself.

Now, it may make sense to abandon the application, refile the word mark, but then the new examiner may ask if STACKED has any meaning in reference to the goods being "stacked."

Board is technically correct, but still lost at sea far from the real world.

At 5:59 PM, Anonymous Orrin A. Falby said...

Won't the EA be able to use the TTAB decision to preclude the new application?

At 7:42 PM, Anonymous Anonymous said...

What if STACKED was picked as the trademark and then the concept of stackable packaging was adopted to add a visual trigger for the word mark? If I had a juice named "Frog," and put it in a frog-shaped bottle, would "Frog" be descriptive for juice?

At 8:51 AM, Anonymous Anonymous said...

Re: FROG, again, this should not be considered descriptive, because FROG does not describe juice in general, and it is novel and distinctive when used in connection with juice (assuming there are no 2(d) issues with other FROG marks or frog-shaped designs).

This also goes for the shape of the product itself, like with GOLDFISH crackers. (Nabisco Inc. v. PF Brands Inc, 51 U.S.P.Q. 2d 1882 (2d Cir., 1990). The court examined the trademark “Goldfish” owned by Pepperidge Farm, and found the goldfish shape to exhibit distinctiveness. “The fish shape has no logical relationship to a cheese cracker.” See Nabisco, 51 U.S.P.Q. 2d at 1889. The court further held, “In sum, because the use of the goldfish shape has no logical relationship to a bite-sized cheese cracker and for the reasons discussed above, we believe that the Pepperidge Farm’s Senior mark is reasonably distinctive.” See Nabisco, 51 U.S.P.Q. 2d at 1890.)

At 9:52 AM, Anonymous Anonymous said...

Apple's computers have an apple-shaped logo on both the product and the packaging. Does that mean APPLE descriptive as well of computers?

At 10:10 AM, Anonymous Orrin A. Falby said...

The Nabisco decision is no longer good law in light of the Supreme Court decison in Walmart v. Samara Bros. The goldfish is the product and product configuration could never be inherently distinctive. They would have to prove secondary meaning.

At 11:16 AM, Anonymous Freiburger said...

The FROG example is a good one, and I think the determining factor is industry usage. In In re Tier One Brands, L.L.C., Serial Nos. 75702467 and 75980456 (T.T.A.B. June 19, 2003) (non-precedential), the Board reversed a descriptiveness refusal of CRAYONS for hair conditioners, sunscreen, and the like – goods that the applicant admittedly intended to sell in crayon-shaped containers:

“[W]hile we do not disagree with the Examining Attorney that a term which immediately and specifically describes the container or other trade dress in which a product is packaged (or the theme or motif utilized in providing a service) may indeed be merely descriptive of the goods (or services), this record does not support such a finding as to the word mark ‘CRAYONS.’ As the Barrick declaration furnished by applicant makes clear, essentially the only users of crayon-shaped containers in connection with toiletry products have been applicant and its predecessor . . .

( . . . )

“The evidence of record, simply stated, fails to establish that it is a practice or trend in the toiletries trade to package such goods in crayon-shaped or crayon-like containers or other trade dress resembling crayons, so that consumers of those products would regard the word ‘CRAYONS’ as merely describing a significant characteristic or feature of the goods.”

At 12:07 PM, Anonymous Anonymous said...

CRAYONS decision = good one.

STACKED decision = bad one.

That's my opinion.

Whatever your opinion, I've seen this issue come up numerous times and the lack of consistency is astonishing.

At 12:08 PM, Anonymous Anonymous said...

So if in fact "stacked containers" are in common usage with lunch boxes, home storage bins, shipping containers for trains, ships and for non-commercial, personal uses, as well as increasing in marketing processed foods, does that not make STACKED much more like MATCHBOX SERIES -- and unlike the factual situation provided with impeccable logic in the CRAYONS decision?

At 2:45 PM, Anonymous Anonymous said...

To the Anonymi, identify yourself!

- Confused Anonymous


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