Stacked Wines, LLC

Trademark Trial and Appeal Board

Sep 4, 2013

No. 85129206 (T.T.A.B. Sep. 4, 2013)

Mailed: September 4, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Stacked Wines, LLC
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Serial No. 85129206
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Kathleen G. Mellon of Young Basile Hanlon & MacFarlane PC for Stacked Wines,
LLC.

Scott Bibb, Trademark Examining Attorney, Law Office 109 (Dan Vavonese,
Managing Attorney).
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Before Cataldo, Lykos and Adlin, Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

On September 14, 2010, Stacked Wines, LLC (“applicant”) filed an intent-to-use
application to register the mark displayed below,

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85129206
2
for “wines and sparkling wines” in International Class 33.1 Following issuance of a
notice of allowance, on December 22, 2011, applicant submitted a specimen of use
consisting of a scanned photograph of the goods bearing the mark reprinted below:

Registration has been finally refused in light of the applicant's failure to comply
with the examining attorney's requirement for a disclaimer of the word STACKED
pursuant to Trademark Act § 6(a), 15 U.S.C. § 1056(a), on the ground that the term
is merely descriptive of a feature of the identified goods.

1 The description of the mark is as follows: “The mark consists of the word ‘STACKED’ with
an elongated oval between the ‘K’ and the ‘E’ displayed vertically on the right side, and two
parallel symmetrically curved broken lines displayed vertically on the left side.” Color is
not claimed as a feature of the mark.
Serial No. 85129206
3
Upon final refusal of registration, applicant filed a timely appeal and request for
reconsideration which was denied. The case is now fully briefed. For the reasons
discussed herein, we affirm the refusal to register.
An examining attorney may require an applicant to disclaim an unregistrable
component of a mark otherwise registrable. Trademark Act Section 6(a), 15 U.S.C. §
1056(a). Merely descriptive terms are unregistrable, under Trademark Act Section
2(e)(1), 15 U.S.C. § 1052(e)(1) and, therefore, are subject to disclaimer if the mark is
otherwise registrable. Failure to comply with a disclaimer requirement is grounds
for refusal of registration. See In re Omaha National Corp., 819 F.2d 1117, 2
USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ
46 (CCPA 1975); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977);
and In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
A term is merely descriptive if it immediately conveys knowledge of a
significant quality, characteristic, function, feature or purpose of the products it
identifies. See, e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009 (Fed. Cir. 1987). We must determine the descriptiveness of a mark in relation
to applicant’s goods, the context in which the mark is being used and the possible
significance the mark would have to the average purchaser because of the manner
of its use or intended use. See In re The Chamber of Commerce of the U.S., supra,
citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831
(Fed. Cir. 2007). Descriptiveness of a mark is not considered in the abstract. In re
Serial No. 85129206
4
Bayer Aktiengesellschaft, 82 USPQ2d at 1831. In other words, the question is
whether someone who knows what the products are will understand the mark
immediately to convey information about them. In re MBNA America Bank N.A.,
340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003).
The examining attorney contends that the term STACKED is merely descriptive
because it immediately conveys a significant feature of applicant’s wine, namely
that it is sold in “stacked” packaging.2 The examining attorney submitted evidence
obtained from the Internet consisting of wine blogs, news articles, and excerpts from
applicant's own website showing use of the term “stacked” to describe applicant’s
vertically stacked container for its wines. The examining attorney also argues that
registration of applicant’s mark will inhibit the ability of competitors to use the
term “stacked” to describe their own brand of wine.
Applicant concedes that “its wine is currently packaged in vertically arranged
wine glasses….” However, applicant asserts that while the term STACKED may be
descriptive of applicant’s novel packaging, it does not describe a “characteristic,
function or property” of applicant’s actual products as identified in its application –

2 Insofar as the examining attorney has requested the Board to take judicial notice of the
identical entry from the online United Kingdom version of Oxford Dictionaries, the request
is denied. In any event, the Board cannot rely on that particular version of the Oxford
Dictionaries because it constitutes a foreign publication. See In re Opus One, Inc., 60
USPQ2d 1812, 1815 n.7 (TTAB 2001). Instead, we take judicial notice of the adjective
“stacked” from the American English version of the online Oxford Dictionaries as “(of a
number of things) put or arranged in a stack or stacks,” and “stack” as “a pile of objects,
typically one that is neatly arranged.” The Board may take judicial notice of dictionary
definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594
(TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or have regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 85129206
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wines and sparkling wines. Indeed, applicant maintains that the term STACKED
when used in connection with wine is arbitrary. In addition, applicant argues that
because its unique method of packaging its wine is the subject of a pending patent
and marketed under an entirely different brand name – VINOWARE – the mark
STACKED is not merely descriptive. As applicant further explains, because the
goods consist of wine, its innovative packaging is not an integral part of the product;
rather the goods could be marketed via other traditional methods such as bottles or
boxes.
Applicant’s contention that the concept of mere descriptiveness does not apply
to product packaging is misplaced. In J. Kohnstam, Ltd. v. Louis Marx & Co., 280
F.2d 437, 126 USPQ 362 (CCPA 1960), the term MATCHBOX SERIES was found
merely descriptive for model toy vehicles sold in boxes having the size and
appearance of matchboxes. As the court explained:
It is clear that the word-mark sought to be registered was adopted by
reason of the deliberate simulation, by the packaging for the goods, of
matchboxes and this is further emphasized by some of the advertising
which includes such statements as “Individually packed in small
multicolor Matchboxes (21/4¢¢long),” “Matchbox Display,” and “Best of
all, they're packed in these small 21/4¢¢matchboxes.” Taking full
advantage of the advertising possibilities in the word, appellant promotes
the line as “The Matchless ‘Matchbox’ Series” “for hours of ‘matchless’
fun.” It gave away as a promotion a “Ronson” lighter engraved
“MATCHLESS AS ‘MATCHBOX’ SERIES.”
…
“Matchbox” is, of course, a common English word defined by Webster's
Dictionary as “A box for holding matches.” A matchbox is still a matchbox
if the matches are removed and a toy is put in their place. We think the
word is just as descriptive of a box which is made to look as much like a
matchbox as is feasible so that the toys packaged in it can appropriately
be designated as a “Matchbox Series” of toys.

Serial No. 85129206
6
As further evidence of descriptiveness, in the toy merchandising field
specifically, opposers’ evidence shows that for nearly 5 years, from 1939
into 1943, when the war put an end to it, it marketed a “Match Box
Construction Set” which was in the size and shape of a safety-match box
with a metal drawer and a paper sleeve, also described as “The Vest
Pocket Builder—100 Toys in One.”

Clearly, there is legal precedent for finding packaging of a product merely
descriptive.
We also find instructive In re Serv-A-Portion Inc., 1 USPQ2d 1915, 1916 n.4
(TTAB 1986), in which the Board, in upholding a requirement for a disclaimer of the
term “SQUEEZE N' SERV” as being merely descriptive of goods identified as
“ketchup,” noted that “whether it is the package itself, or the ketchup, or both which
is (are) squeezed, is immaterial” inasmuch as “it is understood that this kind of food
is necessarily sold in packages” and “hence the package is as much a part of the
goods as the ketchup.” In other words, a consumer would not be able to purchase
applicant’s wine, or for that matter any brand of wine, unless it is sold in a
container of some sort – whether it is the traditional method of selling wine by the
bottle or applicant’s more recently developed methodology of vertically “stacked”
single-serve packaging. In this case, the goods and packaging are necessarily
intertwined, and it is therefore entirely appropriate to consider whether the term
STACKED describes a feature of the packaging for the goods. Cf. In re Metcal Inc., 1
USPQ2d 1334 (TTAB 1986) (holding SOLDER STRAP merely descriptive of self-
regulating heaters in the form of flexible bands or straps); In re H.U.D.D.L.E., 216
USPQ 358 (TTAB 1982) (holding TOOBS merely descriptive of bathroom and
kitchen fixtures in the shape of tubes).
Serial No. 85129206
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According to the record, applicant’s wine is sold in a container consisting of four
disposable single-serve wine glasses stacked in a vertical arrangement. Applicant’s
specimen touts the novelty of the packaging. “Wine in a glass of its own!” As further
clarified by the excerpt from applicant’s own website:
WHAT IS STACKED? Get hip in a sip with STACKED: Wine in a glass
of its own! STACKED was innovated for simple style, top quality taste,
and ultra convenience for the home, the park, or the arena.
…
(R)EVOLUTIONARY PACKAGING. Stacked offers quality wine without
the hassle of a bottle, corkscrew, or stemware. STACKED is a bottle of
wine separated into four stemless wine glasses….STACKED is the
perfect wine solution for a picnic, barbeque, tailgating party, concert,
festival or simply for a glass at home without opening an entire bottle.
…
STACKED’s exclusive Vinoware container was designed by engineers to
offer the look and feel of a wine glass. Vinoware is made with a high
quality plastic that is shatterproof and lightweight, while also protecting
wine from oxidation and spoilage.

May 4, 2012 Office Action (excerpt from stackedwines.com). See, e.g., In re Chamber
of Commerce of the U.S., supra (Board relied in part on evidence obtained from
applicant’s own web site to find the mark NATIONAL CHAMBER merely
descriptive of various chamber of commerce services).
We therefore find that applicant’s proposed mark STACKED is merely
descriptive of applicant’s goods because it immediately refers to a significant feature
of applicant’s particular brand of wine -- that it is sold in vertically “stacked”
disposable single-serve wine glasses. While we acknowledge that applicant may be
the first to use the term STACKED in relation to wine, this does not remove its
descriptive significance. See In re National Shooting Sports Foundation, Inc., 219
USPQ 1018, 1020 (TTAB 1983).
Serial No. 85129206
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Decision: The refusal to register in the absence of a disclaimer of STACKED is
therefore affirmed.
However, this decision will be set aside if, within two months of the mailing
date of this order, applicant submits to the Board a proper disclaimer of STACKED.
See Trademark Rule 2.142(g). The standardized disclaimer format is as follows: No
claim is made to the exclusive right to use the word STACKED apart from the mark
as shown.