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 In re Stacked Wines, LLC, Serial No. 85129206 (September 4, 2013) [not precedential].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.

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