Trademark Review - Stacked Wine, SUPERJAWS and Subway (October 2013)

by Knobbe Martens

The Downfall of a “Stacked” Wine

Stacked Wines, LLC makes individually-packaged glasses of wine that vertically stack to form one full bottle of wine.

The Downfall of a Stacked Wine - In Re Stacked Wines, LLC

Stacked Wines sought to register the mark STACKED in the design form shown above, but the Trademark Trial and Appeal Board confirmed refusal of the application unless the applicant disclaims “STACKED.”  The Board explained that the mark STACKED is merely descriptive because it immediately refers to a significant feature of applicant’s wine, which is sold in vertically “stacked” disposable single-serve wine glasses.   

Stacked Wines argued that the packaging does not form an integral part of the applicant’s wine product, and as such, the term “stacked” describes only the packaging but not any characteristic, property or function of the goods. The Board disagreed and asserted that the goods and packaging are necessarily intertwined in this case because wine has to be sold in a container of some sort.  In making this argument, the Board pointed to a 1960 case, where 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).

The Board noted that Stacked Wines was the first to use the term STACKED in relation to wine, but found this fact to be of no consequence.  Accordingly, the Board affirmed the refusal to register in the absence of a disclaimer of STACKED.

In re Stacked Wines, LLC, Serial No. 85129206 (September 4, 2013) [not precedential].

SUPERJAWS is Found Merely Descriptive for Machine and Hand Tools

Positec Group sought to register SUPERJAWS for a gripping hardware device.  The Board affirmed the Examining Attorney’s rejection and found SUPERJAWS merely descriptive of machine tools and hand tools. 

Positec Group presented third party registrations to show that the word “super” is at most suggestive.  By contrast, the Examining Attorney referred to dictionary definitions and presented third party registrations to show that the term “super” is used as a laudatory descriptive term, while the term “jaws” is used to denote opposite parts that open and close for holding or crushing something. 

The Board noted that when two or more descriptive terms are combined, the new term has to have a new significance for it to be non-descriptive.  First, the Board found that the dictionary definition for the term “jaws” describes a gripping device.  The Board also noted that although Positec Group’s identification of goods includes tools other than “jaws” or gripping devices, a mark is deemed merely descriptive if it describes even one of the identified goods. 

As to the term “super,” the Board found helpful guidance in In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1052 (TTAB 2002), where the Board affirmed a refusal of SUPER SILK.  In Phillips-Van Heusen, the Board found that if the term “super” is combined with a word which names the goods or services or a principal component, grade or size, then the composite term is merely descriptive. 

The Board concluded that SUPERJAWS is merely descriptive, because the term conveys information about Positec Group’s gripping device which has a tremendous clamping pressure. 

In re Positec Group Limited, Serial No. 77920346 (September 13, 2013) [precedential].

Subway’s Bid to Register “Footlong” Falls Short

Subway has been using the term “Footlong” on sandwiches since at least as early as 1967, and has sold over four million sandwiches under the “Footlong” name.  From 2000 to 2009, Subway ran a “$5 Footlong” marketing campaign, which nearly doubled the sales of “Footlong” sandwiches from $541 million to $936 million per year.  Subway applied to register FOOTLONG in 2007. 

Sheetz, a Pennsylvania-based chain of roughly 450 gas stations and convenience stores, filed an opposition claiming that granting a registration to Subway would hurt other businesses that use the term to describe long sandwiches.  Sheetz argued that the mark is incapable of distinguishing Subway’s food from the similar food of others. 

Both parties submitted consumer survey results.  In Subway’s survey, 54% of the respondents replied that “Footlong” was a brand name, whereas 80% of the respondents in Sheetz’ survey said that it was a common name for 12-inch sandwiches.  

The Board found a number of flaws in Subway’s survey.  On the other hand, the survey by Sheetz addressed some of the flaws identified in the Subway survey, such as having a broader universe of respondents and a mini-test to see whether the respondent understood the difference between common names and brand names.  The Board accepted the results of the Sheetz survey to be probative of consumer perception.  On that basis, the Board found that “footlong” is a generic term when used in connection with sandwiches.

Although it found the term to be generic, the Board also addressed whether the term “Footlong” has acquired distinctiveness.  Subway argued that “Footlong” serves as a source indicator and has acquired distinctiveness through Subway’s extensive sales and advertising.  The Board found that sales success is not necessarily indicative of acquired distinctiveness, but can be attributed instead to the fact that Subway offers quality products at a competitive price.  Thus, in the event the Board’s ruling that “footlong” is generic is overturned on appeal, the Board ruled that the term has not acquired distinctiveness. 

Sheetz of Delaware, Inc. v. Doctor’s Associates Inc., Opposition No. 91192657 (September 5, 2013) [precedential].



DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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