# Petition — Miller Brewing Co. v. Jos. Schlitz Brewing Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385006_1313%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition - **Published:** January 1, 1980 - **Citation:** 444 U.S. 1102 ## Text ———- i t-"" Supreme Court, U. FILED Nov 29 979 October Term, 1979 No. 279-837 MILLER BREWING COMPANY, Petitioner, v. ; JOS. SCHLITZ BREWING COMPANY, Respondent. PETITION FOR WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SEVENTH CIRCUIT —— ——-——- ——- a AntHony L. FLETCHER 20 Exchange Place New York, New York 10005 AuLan W. LEISER 780 North Water Street Milwaukee, Wisconsin 53202 Guen H. Kanwirt One First National Plaza Chicago, Illinois 60603 Attorneys for Petitioner Consoy, Hewitt, O’Brien & BoarpMAN QuarRLes & Brapy Hopkins, Sutter, Munroy, Davis & CROMARTIE Of Counsel ee TABLE OF CONTENTS PAGE occ issccsasensaccarnsrovsncersovee 1. BEE 2 os ve osncicecncsvavssucccavcess 2 Constitutional Provisions and Statutes 0.000.000.0000... 3 EE 3 Reasons for Granting the Writ .........0.0000.00.0....0cce. 11 1. The decision below conflicts with principles estab- lished in this Court as well as in other Courts of Appeals by giving collateral estoppel effect to a factual conclusion made on appeal of a motion in which that factual question was neither at issue a 12 A. Whether a term is ‘‘generic’’ involves a factual inquiry, the burden of persuasion of which is upon the challenger of the trademark 13 B. The prerequisites for collateral estoppel are SLES SET I 15 C. The refutation of the underlying premises of Miller’s case by the Court below is unwar- sc onieeccsarsnneeesencs scenes 20 2. The trademark law articulated by this decision and in Heileman is sufficiently important and er- roneous to merit correction by this Court; the error also constitutes further reason for denying the opinion collateral estoppel effect ..........0.00.000... 24 II A. The issue is important and the law erroneous B. Failure to grasp the essential issue in the entopping GOCksION 0.0.2... Ausesiecscesseonsttasecnses 3. Cancellation of Miller’s registrations of LITE pre- sents sufficiently serious questions concerning the workings of statutory trademark registration to NE IIE soos cnvsinn te ep I yn SRIMUES Peter nem ae hy Ramee rence eRe ae cctv) a who Appendices : A. Opinion in Miller v. Schlitz (7th Cir. 1979) ...... B. Opinion in Miller-v. Schlitz, 449 F.Supp. 852 5 RR | Ran emeacepmanrin paene aor Spent (. Opinion in Miller v. Heileman, 561 F.2d 75 (7th COR BE eh ete ene icet ete D. Opinions in Miller v. Heileman, 427 F.Supp. RIDE, TORR CFE w. WI BED skeet ee en en eae F. Excerpts from Gilson, Trademark Protection anu Practice (1978 Cum. Supp.) ..............: G. Excerpts from Arthur J. Greenbaum, The Thirty-First Year of Administration of the Lanham Trademark Act of 1946, 68 The Trade- mark Reporter No. 6 (B76) «......0:...-...c..scssees. H. Excerpts from Kleinman Supplement to Call- man, The Law of Unfair Competition Trade- marks and Monopolies (1978) ...................ccc00 PAGE 16a 23a 35a 62a 70a 73a III TABLE OF AUTHORITIES PAGE Cases: Abercrombie & Fitch Co. v. Hunting World, Inc., 537 pe ok! Og | RDN an ene 25, 26, 27 Aloe Creme Laboratories, Inc. v. Aloe 99, Inc., 188 U.S.P.Q. 316 (Trdmk. Tr. & App. Bd. 1975) ....... 37 Aloe Creme Laboratories, Inc. v. Milsan, 423 F.2d 845 (5th Cir.), cert. denied 398 U.S. 928 (1970) .......... 38 Aluminum Fab. Co. of Pittsburgh v. Season-All W. Corp., 259 F.2d 314 (2d Cir. 1958) «0.0.0.0... 14, 35 American Aloe Corp. v. Aloe Creme Laboratories, Inc., 420 F.2d 1248 (7th Cir.), cert. denied 398 ie SS Bie Be: ee 37, 38 Armstrong Co. v. Nu-Enamel Corp., 305 U.S. 315 (1938) Barbasol Co. v. Jacobs, 160 F.2d 336 (7th Cir. 1947)... 35 Bayer Co. v. United Drug Co., 272 Fed. 505 (S.D.N.Y. pe AAC eer sc SIAR IO pee Ne SE AR aN eR OPE Io) RR 13, 21 Blonder-? sngue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313 (1971) ........ 11, 15, 16, 17, 33 Carter v. Kubler, 320 U.S. 243 (1943) Dallas Cowboys Cheerleaders, Inc. v. Scoreboard Posters, Inc., 600 F.2d 1184 (5th Cir. 1979) ............ 18 DuPont Cellophane Co. v. Waxed Products Co., 85 Be re rs ons roses ei ecereceinacaeancg ee ocivas 22, 23 Feathercombs, Inc. v. Solo Products Corporation, 306 F.2d 251 (2d Cir. 1962) International Ass’n. of Mach. & Aero. Wkrs. v. Nix, SES We BES COG Che, TOTG) oncacnccncecccccccisssessscascicss. 17 Iv PAGE Kellogg Co. v. Nat. Biscuit Co., 305 U.S. 111 (1938) ....24, 25 Mishawaka Rubber & Woolen Mfg. Co. v. 8.8. Kresge Co., 316 U.8. 3B (R988): ..:........ eee 37 Nationwide Amusements, Ine. v. Nattin, 452 F.2d 651 (4th Cig. 2902). -.....vcccnc. ccc 18, 19 Parklane Hosiery Co. v. Shore, 439 U.S. 322 (1979)... 15 Philip Morris, Inc. v. R.J. Reynolds Tobacco Co., 188 U.S.P.Q.:269 (B.DA.E. SOPRP .5554-. oe 14 Singer Mfg. Co. v. Briley, 207 F.2d 519 (5th Cir. 1953) 28 Sperry Rand Corporation v. Sunbeam Corporation, 443 F.2a 979 (CAPM. BORED nel canes 37 Standard Paint Co. v. Rubberoid Roofing Co., 224 Fed. G96 (7th Cis. MURR 3.6. eee 38 Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 406 (2088) | .63. cig 38 State of N.C. v. Chas. Pfizer & Co., Inc., 537 F.2d 67 (4th Cir. 1096). «......cccn eee ee 18 Stix Products, Inc. v. United Merchants and Manufac- turers, Inc., 295 F.Supp. 479 (S.D.N.Y. 1968) ...... 26 Union Carbide Corp. v. Ever-Ready, Ine., 531 F.2d 366 (7th Cir.), cert. den’ 2d 429 U.S. 836 (1976) .... 35 United States v. Dilman, 146 F.2d 572 (5th Cir. 1944), cert. denied 325 U.S. 870 (1945) 2.0... 16 In re Warren Petroleum Corp., 192 U.S.P.Q. 405 (Trdmk. Tr. & Asp. Bb. RGB gic... cddec cree 37 v PAGE Statutes and Rule: Lanham Trademark Act of 1946 Sections— Pa I 520s can scvenianvapsedaseoerstevcatees 26, 35, 36 esc scssucrasvannnassbveleernesiscserssare: 35 cov ecasvanecasiacousvaizeyreveiosceacse 35 Bs MI 0555 scans cacvacsecansssussccsecopsccssdssccessauns 35 ps cucu sasanctansscevacssivsesdoccessy 25, 35 RR Se 1 ) 0 ae ee 36 I, eae da.o.scsssnnedseeesecvsbeseneees 8, 26, 35, 39 OB SCR OS re I I ia csasvpiiansccinesanssdssennovcvisdindvsacdesses 3 a Te coy fore ch nav ig (a dodasededncateven 6 IA I MDD 650 co0isscnkscxentcasncdscacscvacesveseveviocesess 7 Other Authorities: Callman, Unfair Competitiun Trademarks & Monopo- I oi csis, Rcaghas veshabscesiessveseuctey.dslnces 13 Kleinman 1978 Supplement 00.0000... 30, 31, 32 Gilson, Trademark Protection and Practice (1978)... 18, 28, 32 Greenbaum, The Thirty-First Year of Administration of the Lanham Trademark Act of 1946, 68 The Trademark Reporter No. 6, (1978) .............. 28, 29, 30, 32 McCarthy, Trademarks and Unfair Competition RR TIERS tn eR A ie eal eR 13 Pattishall & Hilliard, Trademarks, Trade Identity and Unfair Trade Practices (1974) 000. 13 Seidel-Dubroff-Gonda, Trademark Law and Practice RESIS RODRIG SRB T “Oe NS ea Oe 13 IN THE Supreme Court of the United States October Term, 1979 No. $$$ —t Mitten Brewinc Company, Petitioner, v. Jos. Scuuitz Brewrne Company, Respondent. PETITION FOR WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SEVENTH CIRCUIT Petitioner Miller Brewing Company (‘‘Miller’’) re- spectfully prays that a writ of certiorari be issued to review the judgment of the United States Court of Ap- peals for the Seventh Circuit entered in the above pro- ceeding. Opinions Below The Opinion by the Court of Appeals is unreported as of this writing. It is printed in Appendix A hereto. 2 The Opinion of the District Court which was reviewed in the Opinion below is reported at 449 F.Supp. 852 and is printed in Appendix B hereto. The Opinion of the Court of Appeals in Miler v. Heile- man, which the Opinion below held to be a collaterally estopping decision, is reported at 561 F.2d 75 and is printed in Appendix C hereto. The Opinions of the Dis- trict Court which were reviewed in Miler v. Heileman are reported at 427 F.Supp. 1192 and 1204 and are printed in Appendix D hereto. Jurisdiction The Judgment of the Court of Appeals was dated and entered September 6, 1979. The Jurisdiction of this Court is invoked under 28 U.S.C. §1254(1). Questions Presented 1. Whether the erroneous reversal of the grant of a preliminary injunction, on factual grounds neither liti- gated before nor considered by the District Court, col- laterally estops litigation of that factual issue in another suit. 2. Whether, as a matter of collateral estoppel or other- wise, the conclusion can be justified that a brand name is ‘‘generic’’ (and not a valid trademark) rather than ‘‘de- scriptive’’ (and thus subject to being a valid trademark) because it has been used extensively in a descriptive manner, en ee 3 3. Whether, even if the adjective-noun combination ‘‘light beer’’ is generic, seven- and nine-year old registra- tions of the phonetic equivalent of the adjective alone, LITE, continuously used and relied upon by its owners, should be cancelled. Constitutional Provisions and Statutes The Fifth Amendment to the Constitution of the United States provides, insofar as it is pertinent here, that ‘‘No person shall ... be deprived of .. . property, without due process of law.”’’ The following statutes and their official citations are printed in Appendix E hereto: Lanham Trademark Act Sections 2(d), (e) and (f), 7(b), 10, 12(a), 13, 14, 32(1), 33(a), 33(b)(4) and 43(a), respectively 15 U.S.C. Sections 1052(d), (e) and (f), 1057(b), 1060, 1062(a), 1063, 1064, 1114(1), 1115(a), 1115(b)(4) and 1125(a). Statement of the Case The commercial background underlying these litiga- tions is both critical and undisputed. Meister Brau, Inc., a Chicago brewer, began brewing and selling reduced calorie beer under the brand name LITE in May, 1967. Meister Brau subsequently obtained registrations on the Principal Register of the United States Patent Office of LITE as a trademark for beer with no available carbohydrates.’ 1. Those Registrations which remain have been since amended to cover “beer with reduced caloric content.” 4 In 1972, Meister Brau, shortly prior to its bankruptcy, sold its LITE trademarks, their registrations and accom- panying good will to Miller, which continued selling LITE beer for a time in Meister Brau’s marketing area. Concur- rently, beginning in 1973, Miller began test marketing a reformulated LITE in new packaging (reproduced below) promoted by new advertising. i i ; In its now familiar label, LITE quickly attained a pub- lic acceptance unprecedented for reduced calorie beer. Sales rose from 100,000 barrels in 1973, LITE’s first year in test markets, to more than four million barrels in 1976, only its second year of nationwide distribution. Advertis- ing support rose from $500,000 in 1973 test markets to more than twelve million dollars in 1976. (Since then, an- nual sales volume and advertising investment have more than doubled again.) A Miller survey showed ‘‘that between December, 1975 and March, 1976, a substantial percentage of beer drinkers 4) perceived LITE (43%), Miller LITE (11%) or LITE from or by Miller (1%) as a distinct brand name indicative of a low-calorie or less filling beer.’ See Miller v. Heile- mam, 561 F.2d 75, 77, Appendix C p. 25a (7th Cir. 1977), cert, demed 434 U.S. 1025 (1978). Success bred imitation. On October 21, 1975, less than ten months after Miller’s nationwide introduction of LITE, this action was commenced in the Eastern District of Wis- consin to enjoin Jos. Schlitz Brewing Co. (‘‘Schlitz’’) from introducing its reduced-calorie beer under the labelling shown below. 2. Indeed, as early as 1969, a Schlitz Executive Vice President had acknowledged in writing that “Everyone in the beer business is well aware that ‘LITE’ is the distinctive brand name for beer intro- duced by Meister Brau.” Appellant’s Record on Appl. A-8. 6 Trademark infringement, false representation of origin (15 U.S.C. §1125(a)) and unfair competition were alleged. Jurisdiction was founded on 28 U.S.C. $1338. One year later, on November 1, 1976, Miller filed a sim- ilar action in the Western District of Wisconsin against G. Heileman Brewing Co. (‘‘Heileman’’), simultaneously moving for a preliminary injunction. (The opinion below incorrectly states that at the time Heileman was commenced, Miller had previously sued Schlitz and ‘‘six . . . other competitors’’—Appendix A 7 p. 2a°; it also states that Miller sought a preliminary injunction against Heileman ‘‘despite the extensive prepa- ration that had already gone into the Schlitz case’’—Ap- pendix A p. 4a‘.) Miller’s motion for a preliminary injunction against Heileman was heard on supporting and answering affida- vits, briefs and oral argument. The hearing was not consolidated with a trial on the merits as is permitted by Fed. R. Civ. P. 65(a)(2), and the District Court, in mak- ing its finaings of fact, carefully limited them as being 3. On October 31, 1975, Miller also filed suits against Genesee Brewing Company of Rochester, New York (S.D.N.Y. 75 Civ. 5443) and Peter Hand Brewing Company of Chicago (N.D. Ill. 75C 3573). By November 1, 1976, Genesee had significantly modified its labelling, and Peter Hand was an insignificant brewer (that since has gone out of business). Subsequent to the commencement of Heileman, Miller filed suits against Pittsburgh Brewing Co. and 9-0-5 Stores, Inc. (E.D. Mo. 77-0104-C(4)), Erie (Penna.) Brewing Co. (W.D. Pa. 77-18 Erie), Olympia Brewing Company of Olympia, Washington (W.D. Wash. C. 77 65T), Rheingold Breweries, Inc. of Orange, New Jersey (D.N.J. 77-1405), Rainier Brewing Company of Seattle (W.D. Wash. C77-519) and General Brewing Company of San Francisco (N.D. Cal. C 79 0797 AJZ) and was sued for a declaratory judgment by Anheuser-Busch, Inc. in St. Louis (E.D. Mo. 77-0100(c) (2) ). 4. The “short record” certified to the Court below shows that on November 1, 1976, when Heileman was commenced, 4 sets of inter- rogatories had been answered, there had been responses to 3 sets of requests for admissions, and 12 depositions had been taken in Schlitz. After November 1, 1976, there were responses to 8 more sets of requests for admissions, and 31 more depositions were taken. While there had been extensive discovery in Schlitz by the time Heileman was commenced, more remained than had been completed. The lingering concern of the Court below as to why Miller chose to seek preliminary relief against Heileman instead of Schlitz is easily answered. When Heileman broke the status quo in the industry, while Schlitz was moving toward trial, Miller believed itself entitled to protection pending the Schlitz determination. Miller’s burden was not to try its case against Heileman, but to establish probability of success based on the case as it then stood. As will be seen, Miller met that burden to the satisfaction of the District Court. 8 ‘‘[fjor purposes of this motion only.’’ 427 F.Supp. at 1195, Appendix D p. 36a. Among the issues (preliminarily) assessed on the mo- tien for preliminary injunction was what kind of terms LITE and ‘‘light’’ are for beer. Despite some semantic confusion, all parties and courts below agree upon four possible categories and their at- tendant trademark consequences, if not on the precise nomenclature for them. See Appendix A pp. 6a-8a, foot- notes 7, 8. (1) generic [e.g. ‘‘beer’’ or ‘‘ale’’], in which event a term is not susceptible to protection as a trade- mark; (2) descriptive [e.g. ‘‘delicious’’ or ‘‘sparkling’’] in which event a term is susceptible to limited pro- tection as a trademark only if it has acquired dis- tinctiveness or ‘‘secondary meaning’”; (3) suggestive, normally of a desirable characteristic [eg. BLUE RIBBON—suggesting a prize win- ner—or RHEINGOLD—suggesting the ‘‘golden’’ fruit of the Rhine] in which case a term is sus- ceptible to trademark protection at the outset; and 5. The limits of protection afforded such trademarks are spelled out in Section 33(b) (4) of the Trademark Act, 15 U.S.C. §1115(b) (4), which permits others to use words comprising registered trade- marks if such use is (i) non-trademark, (ii) good faith, (1ii) descrip- tive use. Miller conceded that Schlitz and Heileman could use “light” within those parameters ; but the uses in issue plainly constitute trade- mark (brand name) use, and may well fall outside the good faith descriptive requirements also. 9 (4) arbitrary [eg. ROLLING ROCK or TECH], which carries the same consequences as (3). It was the District Court’s (and Miller’s) understand- ing that ‘‘ Defendant [Heileman] contend[ed] that Miller’s trademark [LITE] is defective because it is merely descrip- tive.’? 427 F. Supp. at 1199, Appendix D p. 44a.° The Dis- trict Court held LITE and ‘‘light’’ to be suggestive for re- duced calorie beer (albeit ‘‘light’’ was recognized to be de- scriptive of other types), but found that even if they were descriptive, secondary meaning in LITE had been shown. 427 F'. Supp. 1199-1201, Appendix D pp. 46a-49a. For these and other reasons, the District Court granted Miller’s mo- tion for a preliminary injunction against Heileman. Heileman appealed. On appeal, the Court of Appeals reversed the grant of the preliminary injunction issued ‘‘To]n the basis of affidavits and other written material’’ (561 F.2d at 78, Appendix C p. 26a), stating, inter alia: 6. We recognize that the Opinion below states: “Miller also argues that whether ‘LITE’ was generic was not focussed upon in the district court in Heileman. This is belied by the description of the ‘district court’s holding in the brief Miller submitted to this court in that case.” Appendix A p. 8a, note 8. What the District Court “focussed upon” in Heileman is best shown by its opinion, not upon what Miller (or anyone else) may have said about it subsequently. That opinion (Appendix D) reflects no focus whatever on the question whether LITE or “light” is generic. (For that matter, the Court’s vague reference to Miller’s brief, which it quotes and cites by page for other purposes, is baffling upon a rereading of that brief. Had the Court searched the Heileman record, it would have discovered that Heileman counsel, before the District Court, conceded that LITE was the type of mark that could, upon acquisition of secondary mean- ing, acquire trademark status—true of descriptive terms, but not of generic names.) Only on rehearing, did the District Court (or Miller) recognize any attempt by Heileman to raise the issue that “light” was generic, and then it was in the context that users (and defendants in other suits, such as Schlitz) had caused the term to become generic, not that it was generic ab initio. This contention was rejected as un- proven by Heileman on the then-extant record. 427 F.Supp. 1206-07, Appendix D pp. 58a-59a. 10 because ‘‘light’’ is a generic or common descriptive word when applied to beer, neither that word nor its phonetic equivalent may be appropriated as a trade- mark for beer. 561 F.2d at 77, Appendix C p. 24a. Three considerations are critical to evaluating the sig- nificance of that Heileman opinion: First, the criterion for determining a term is generic is basically factual—the fact of public understanding of the meaning of the term’; Second, the stated bases for the Appellate Court’s deter- mination in Heileman that ‘‘light’’ is generic for beer bear almost no relation to that factual question of public under- standing’; Third, the authorities expressing an opinion of Heileman agree unanimously that it is wrong.’ Miller sought certiorari of the Court of Appeals’ reversal of the preliminary injunction. Certiorari was denied without disclosure of any reason. 434 U.S. 1025 (1978). At that time, however, it was not certain that the judgment reversing a preliminary injunction was intended as a final determination of the merits in Heideman or else- where, and the authorities had yet to condemn the decision. Schlitz moved for summary judgment on Miller’s trade- mark infringement and unfair competition claims’® and sought cancellation of Miller’s registrations of LITE on the ground that Heileman collaterally estopped Miller from 7. See p. 13, infra. 8. See pp. 13-14, infra. 9. See pp. 28-32, infra. 10. There was also a disparagement claim based on early Schlitz advertising for its LIGHT brand of beer. © sats aaa Se ee ve Sa, Be i ge See 35a APPENDIX D Opinion and Order of James E. Doyle, District Judge, Dated January 21, 1977 UNITED STATES DISTRICT COURT W. D. Wisconsin Mrer Brewine Company, Plaintiff, v. G. Hememan Brewine Co., Inc., Defendant. No. 76-C-584 Jan. 21, 1977 John D. Winner, Winner, McCallum & Hendee, Madison, Wis., Anthony Fletcher, Conboy, Hewitt, O’Brien & Board- man, New York City, Allen W. Leiser, Quarles & Brady, Milwaukee, Wis., for plaintiff. James Van Santen, Hill, Gross, Simpson, Van Santen, Steadman, Chiara & Simpson, Chicago, Ill., Steven E. Keane and John S. Skilton, Foley & Lardner, Milwaukee, Wis., for defendant. James EB. Doyiz, District Judge. This is an action for trademark infringement, false designation of origin, and unfair competition by plaintiff (Miller). Miller seeks a preliminary injunction to prevent defendant’s (Heileman’s) continued sale, advertising, and distribution of beer under a brand name incorporating the word ‘‘LIGHT,’’ the word ‘‘LITE,’’ or any colorable 36a Appendix D imitation of either word. For the purposes of this motion only, I make the findings of fact set forth hereinafter under the heading ‘‘Facts.’’ Jurisdiction exists for the trademark infringemert cause of action under 15 U.S.C.A. §1121 (1974) and 28 U.S.C.A. §1338(a) (1976). Facts Miller and Heileman are brewers and sellers of beer. Miller distributes its beer nationally ; Heileman, in several regions. As of the end of 1975, Miller was the nation’s fourth largest brewer, selling 12.8 million barrels of beer in 1975; Heileman was seventh, selling 4.5 million barrels of beer. About May 1967, Meister Brau, Inc. (Meister Brau), a Chicago brewer, began brewing and selling a reduced calorie beer which it sold under the trademark (MEISTER BRAU) LITE. In November 1968, Meister Brau applied to register LITE as a trademark for beer on the principal register in the United States Patent Office. The Patent Office initially refused registration under 15 U.S.C. §1052(e) on the ground that LITE was ‘‘merely descriptive’? and might cause confusion with similarly registered trade- marks of other non-beer products. Meister Brau over- came this objection by demonstrating to the satisfaction of the Patent Office that the mark had acquired a ‘‘dis- tinctiveness’’ in the commerce of beer and thus was entitled to registration under id. §1052(f). The evidence sup- porting this finding of distinctiveness consisted of affidavits by Meister Brau executives showing sales of over 60 mil- lion bottles and cans of this brand of beer, extensive ad- vertising of the brand on television and in the print media, and letters from five competing beer producers recognizing ee Ee Oe ee ee eS %, 37a Appendix D LITE as a distinct brand name cultivated by Meister Brau.' On the basis of Meister Bran’s showing, the Patent Office approved three registrations on the principal register for beer with no available carbohydrates. Reg. No. Date \ Trademark 905,236 Dec. 29, 1970 LITE label (Color blue) 929,276 Feb. 15, 1972 Meister Brau Lite design (color blue) 929,277 Feb. 15, 1972 LITE design (no color)? Meister Brau continued producing and marketing LITE beer during the time these trademark registrations were pending, changing the labeling by 1971 to eliminate the Meister Brau designation above LITE. In 1970 and 1971, Meister Brau sold over 75,000 and 65,000 barrels of LITE, respectively. Facing bankruptcy in 1972, Meister Brau sold several of its recipes, trademarks and other indicia of good will to Miller. Included in the sale was the assignment of Meister Brau’s entire interest in its LITE trademarks and the registrations thereof, and the good will. Miller continued the brand in the core of the Meister Brau mar- keting area, with its and Meister Brau’s (earlier) sales exceeding 55,000 barrels in 1972, and Miller’s sales ex- ceeding 50,000 barrels in 1973 and 40,000 barrels in 1974. Concurrently, Miller re-examined the LITE brava and its marketing, concluding a broader market might exist if several aspects of the brand could be improved. First was taste; Miller believed it could improve the taste quality of LITE, and after a year or more of experimentation, 1. The five companies were P. Ballantine & Sons, Falstaff Brew- ing Corporation, Pabst Brewing Company, Jos. Schlitz Brewing Com- pany, and the Stroh Brewing Company. 2. Amended by Miller on June 3, 1975. 38a Appendix D adopted a modified recipe for LITE. Second was packag- ing; a revised more vigorous label was designed. Third was advertising; a new, straightforward, ‘‘more mascu- linely’’ oriented campaign was developed. Miller tested its revised recipe, packaging and adver- tising approach, found them successful, expanded its mar- keting of LITE (replacing the former packaging with the new in the old Meister Brau marketing areas in 1974) and by early 1975 was distributing the brand nationally. The label Miller adopted had the word ‘‘LITE”’ in the most prominent position, the words ‘‘A Fine Pilsner Beer’’ in a somewhat less prominent position, and the Miller name in relatively very smali letters. Miller introduced the revised LITE in four markets in July of 1973, selling over 50,000 barrels (and spending over $500,000 advertising the brand). More than a dozen more markets were added during 1974; sales exceeded 400,000 barrels, advertising expenses, $4,000,000. With national distribution and advertising in 1975, sales ex- ceeded two and one-half million barrels, advertising ex- penses, $10,000,000. In 1976, more than four million barrels were expected to be sold with more than $12,000,000 to be spent on advertising. The effect of this advertising has been that between December, 1975 and March, 1976, a substantial percentage of beer drinkers perceived LITE (43%), Miller LITE (11%), or LITE from or by Miller (1%) as a distinct brand name indicative of a low-calorie or less-filling beer.* In August, 1975, The Peter Hand Brewing Company, a small brewery in Chicago, launched a reduced calorie beer under a label which included the words: ‘‘Peter Hand’’; ‘‘ A Special Pilsner extra Light Beer’’; ‘‘Smoother Less-Filling.’? The word ‘‘Light’’ was by far the most 3. The percentages are based upon the results of a survey, the validity of which I accept in these findings. However, of course, I find that the percentages are approximations of consumer perceptions. 39a Appendix D prominent word on the label, much more prominent than the Peter Hand designation. An overwhelming majority* of beer-drinking consumers who were allowed to view three different cans of beer—including Péter Hand (extra) Light—for 15 seconds each, identified the Peter Hand product as ‘‘LIGHT”’ or ‘‘LITE”’ and not as a Peter Hand product when asked to identify the beers which they had just seen but were no longer in view. Suit has been brought by Miller against Peter Hand for trademark infringement and is pending in the United States District Court for the Northern District of Illinois. In November, 1975, the Jos. Schlitz Brewing Company, the nation’s second largest brewer, launched a reduced calorie beer bearing a generally yellow label that displayed the word ‘‘Light’’ in by far the most prominent position. The words ‘‘Schlitz,’’ ‘‘Beer,’’ and ‘‘Special Lager’’ were in the proximity of the word ‘‘Light’’ but were consider- ably less prominent. There have been numerous examples of actual confusion on the part of consumers between “LITE”? and (Schlitz) ‘‘Light.’’ Suit was brought by Miller against Schlitz and is pending in the United States District Court for the Eastern District of Wisconsin. Now, Heileman has introduced a reduced calorie beer in five scattered test markets bearing a label (Exhibit E to the complaint herein) which also prominently displays the word ‘‘LIGHT.’’ While this word appears on the ‘‘House of Heileman’’ seal and the word ‘‘Heileman’’ appears three times in the immediate vicinity of the word ‘“‘LIGHT,’’ the word ‘‘LIGHT’’ is by far the most prom- inent and eye-catching word on the label. Heileman has 4. The survey upon which this statement is based employed the methodology of intercepting and interviewing 284 beer drinkers in two shopping malls in the Chicago metropolitan area. Since the sample upon which this survey is based was somewhat narrowly drawn, the results could be used for determining the existence of atti- tudes although not for quantifying them. PS ee se: 40a ae Appendix D expended considerable resources in preparation for the introduction of its low-calorie beer under the ‘‘LIGHT”’ label: Production Costs Cases produced through November 11, 1976 $113,007.00 Beer in tanks 8,405.00 Manufacturing Supplies in Inventory as of November 11, 1976 Cans 29,352.00 Can Trays 1,157.00 Tray Die Changes 404.00 Can Die Changes 400.00 Media Advertising Television production 18,500.00 Print production 3,500.00 Purchase of television time 114,938.00 Purchase of print space 23,932.00 Point of Sale Advertising Embossagraph Company 100,558.00 Inland Printing Company 9,710.00 Total $423,863.00 Heileman has been engaged for some time, and intends to continue to engage, in the production and sale of other brands of beer, notably ‘‘Old Style’’ and ‘‘Special Ex- port.’? Unless enjoined, Heileman will proceed to market its ‘‘Light’’ beer under its mark in competition with Miller’s ‘‘LITE.’’ The respective beers of plaintiff and defendant which bear the trademarks in dispute are similar products, and 4la Appendix D the parties will be attempting to sell them to the same con- suming public through the same general channels of dis- tribution, employing the same general means and media for advertising and promotion. Beer is a relatively in- expensive commodity (as compared with automobiles, clothing, or household furnishings and appliances, for ex- ample) and expenditures for it are likely to be made by consumers with less care than expenditures for more ex- pensive items. Although prior to purchase, purchasers of packages of beer in retail stores may see the rival beers in their respective containers, side by side or in close proximity, this will often not be true. It will seldom be true of purchasers of single glasses, bottles, or cans of beer in taverns, restaurants, and night clubs, where orders are placed orally by the customers to the bartenders or waiters. That ‘‘LITE”’ and ‘‘LIGHT”’ are phonetically identical means, of course, that they cannot be distin- guished in conversation among members of the public, in radio advertising, or in oral communication betwen cus- tomers and waiters or bartenders.® OPINION In order to succeed in its motion for a preliminary in- junction, plaintiff must demonstrate: (I) that it will prob- ably succeed on the merits; (II) that there is a significant threat of irreparable harm to the plaintiff if the injunction is not granted; (III) that the balance of harms to the de- fendant and plaintiff if an injunction is or is not issued favors issuance; and (IV) that the public interest will not be disserved by issuance of the injunction. See generally Doeskin Products v. United Paper Co., 195 F.2d 356, 358-59 5. The findings in this paragraph are made by the exercise of ju- dicial notice of matters of common knowledge. 42a Appendix D (7th Cir. 1952) ; Selchow ¢ Righter Co. v. Western Printing & L. Co., 112 F.2d 430, 431-32 (7th Cir. 1940). I. The Probability or Improbability that Plaintiff Will Succeed on the Merits In order for plaintiff ultimately to prevail on its trade- mark infringement cause of action it must show both that it has a right to the exclusive use of the trademark and that the defendant’s use infringes upon that right. A. Plaintiff’s right or lack thereof to the exclusive use of the trademark A trademark is defined as: . . . any word, name, symbol, or device or any combination thereof adopted and used by a mannfac- turer or merchant to identify his goods and distinguish them from those manufactured or sold by others. 15 U.S.C.A. §1127 (1976). The registration of trademarks is governed by certain statutory provisions, especially 15 U.S.C.A. §§1051, 1052 (1976). The purpose of this registration scheme is not to create a trademark right but simply to provide for trade- mark publication. Nashville Syrup Co. v. Coca Cola Co., 215 F. 527, 529 (6th Cir. 1914), and to allocate burdens of proof in the trial of an action for infringement. The fact of Meister Brau’s (Miller’s assignor’) registra- 6. The owner of a trademark may register his trademaik with the United States Patent Office upon a minimal showing of first-use in commerce. 15 U.S.C.A. §1051 (1976). No trademark shall be re- fused registration on the principal register on account of its nature except when certain fairly specific conditions are met. Jd. §1052. 7. The assignment of the trademarks by Meister Brau to Miller is valid given that Meister Brau assigned its entire interest in the mark and the goodwill. See E. F. Prichard Co. v. Conswmers Brewing Co., 136 F.2d 512, 518-19, 521-22 (6th Cir. 1943), cert. denied, 321 U.S. 763, 64 S.Ct. 486, 88 L.Ed. 1060 (1944). 43a Appendiz D tion® of the marks will be admissible in evidence at trial and ‘‘shall be prima facie evidence of registrant’s exclusive right to use the registered mark in commerce on the goods . specified in the registration ....’’ Jd. §1115(a).° Upon showing at trial Meister Brau’s registration and the assignment to it, Miller will be entitled to the presumption that the registration is valid, that Miller is the owner of the mark, and that Miller has exclusive right to use the mark in commerce under the specified conditions and limitations of the registration, but Heileman is free to challenge on its merits Miller’s right to the exclusive use of the ‘‘LITE”’’ trademark. Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 378 (7th Cir. 1976), cert. denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed. 2d 94 (1976). 8. Leaving aside the question of descriptiveness and secondary meaning, there is no indication in the record that the trademark was not registered according to proper procedures. However, Heileman aileges that the registration of plaintiff's mark is invalid because it in- fringes the previously registered Storz trademark: ‘America’s Light Refreshing Beer.” But since this trademark uses “Light” descrip- tively and in combination with other words, it is not in conflict with plaintiff’s mark. See generally Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609, 611 (7th Cir. 1965); Nashville Syrup Co. v. Coca Cola, 215 F. 527, 530 (6th Cir. 1914). 9. Plaintiff does not argue that the mark has obtained incontest- able status under 15 U.S.C.A. §1065. Such status would limit the alleged infringer to a few defenses explicitly outlined in 15 U.S.C.A. §1115(b) (1974). In particular, if Miller’s “LITE” mark had achieved incontestable status, Heileman would be foreclosed from arguing that Miller did not have exclusive rights to the mark because the mark was merely descriptive. /d. There is some question whether a trademark which has been found to be merely descriptive but to have acquired distinctiveness can ever acquire incontestable status. Compare Flavor Corporation of America v. Kemin Industrics, Inc., 493 F.2d 275, 281-82 (8th Cir. 1974), with Union Carbide v. Ever-Ready, Inc., 531 F.2d 366, 375-76 (7th Cir. 1976). However, because the parties did not address this question in their briefs, I make no determination of the likelihood that the trademark has achjeved i in- contestable status. ~ a a IE BS OC OE RS PUENTE 44a Appendix D 1. The Merits of Miller’s ‘‘LITE”’ Trademark Claim: Descriptiveness Given that Miller almost certainly will be entitled to the above-mentioned presumption at trial, the defendant will have the burden of going forward and proving that the trademark is defective in some manner. Defendant con- tends that Miller’s trademark is defective because it is merely descriptive. If this contention is sound (and unless, as will be discussed below, Miller can then show that the mark has acquired a secondary meaning), Miller’s action for trademark infringement will be defeated. Union Carbide Corp. v. Ever-Ready, Inc., supra, at 378. I am not called upon to resolve definitely the question as to whether ‘‘LITE’’ is merely descriptive; only whether Heileman is likely to be successful at trial in showing that it is. On the evidence before me, there is a strong likelihood that Heile- man will be unable to prove at trial that Miller’s mark is merely descriptive. The case law appears to recognize a continuum of types of trademarks falling into three categories: the merely descriptive, the suggestive, and the purely fanciful or arbi- trary. Union Carbide Corp. v. Ever-Ready, Inc., supra, at 378-79. Marks in the latter two categories are subject to the exclusive appropriation of a producer, whereas marks in the former category are not. It could hardly be said that ‘“‘LITE”’ is a purely fanciful or arbitrary name for a low- calorie, less-filling beer product at least in the same way that ‘The American Girl’’ is a purely fanciful or arbitrary name when applied to women’s shoes. See Hamilton Shoe Co. v. Wolf Brothers, 240 U.S. 251, 256-57, 36 S.Ct. 269, 60 L.Ed. 629 (1916). Thus, the important question is whether ‘“‘LITH’’ actually describes the ingredients, qualities, or characteristics of the beer or merely suggests the existence of some attribute or effect of the beer. 45a Appendix D The line between descriptive and suggestive marks is not vivid. The court of appeals for this circuit has quoted approvingly the distinction between these two terms stated by A. Seidel, S. Dalroff, and E. Gonda, Trademark Law and Practice, §4.06 at 77 (1963): Generally speaking, if the mark imparts information directly, it is descriptive. If it stands for an idea which requires some operation of the imagination to connect it with the goods, it is suggestive. Union Carbide Corporation v. Ever-Ready, Inc., supra, at 379. The court of appeals for this circuit has indicated, al- though not held, that ‘‘Holeproof’’ as applied to stockings and ‘‘EVEREADY’”’ as applied to batteries are not descrip- tive but rather suggestive terms. See Independent Nail & Packing Co., Inc. v. Stronghold Screw Products, Inc., 205 F.2d 921 (7th Cir. 1953), cert. denied, 346 U.S. 886, 74 S.Ct. 138, 98 L.Ed. 391 (1953), citmg Holeproof Hosiery Co. v. Wallach Bros., 172 F. 859 (2d Cir. 1909); Union Carbide Corp. v. Ever-Ready, Inc., supra, at 379. See also General Shoe Corp. v. Rosen, 111 F.2d 95, 98-99 (4th Cir. 1940) (‘‘Friendly’’ as applied to shoes is suggestive of shoes which are friendly to the feet). Both ‘‘Holeproof’’ and ‘““EVEREADY’”’ seem to impart some information about the products to which they are appended, but to impart it in- directly, and to require some operation of the imagination to connect the terms to the products. Likewise, the mark ‘‘LITE’’ does not describe a beer which is light in weight or color, but rather connotes one which is lower in calories or less-filling than regular beer.’® 10. It is commonly known that “light” has been used widely and for many years in the beer industry to connote the quality of light- ness in color or the quality of lightness in body, or both. Such use has undoubtedly been descriptive, rather than suggestive, of those qualities. It appears that Meister Brau was the first to use the word, in a corrupted form (LITE), to connote a third and distinct quality (footnote continued on next page) FO Se en eee as Bisons. 46a Appendix D It requires some operation of the imagination to connect the term ‘‘LITE’’ with a beer which would cause its con- sumers to weigh less, all else being equal, than those who consume regular beer. Thus, it appears unlikely that Heileman will meet its burden of showing that ‘‘LITE”’ is a descriptive term.” 2. The Merits ef Miller’s ‘‘LITE’’ Trademark claim: Secondary Meaning In the event that Heileman does prove at trial that ‘“‘LITE’’ as applied to beer is descriptive, Miller will be entitled to prevail, nevertheless, if it can show that the mark has acquired a secondary meaning in identifying the product of a particular producer. Union Carbide Corp. v. Ever-Ready, Inc., supra, at 380." Although it would be of its new brand of beer, namely, its low caloric content. It may well be unusual that a word which is well established as descriptive of two qualities of a beer is claimed to be merely suggestive of a third quality. But, as I have concluded, “LITE” is indeed no more than suggestive of this third quality. I can discern no basis in precedent, and none in public policy, to deny suggestiveness to a word which is no more than suggestive of one quality of a product simply because it is obviously descriptive of other qualities of the same product. 11. Defendant also argues that “LITE” is deceptively misde- scriptive. However, there has been absolutely no showing as to how the public would be misled as to the ingredients of “LITE” beer from the trademark. See e.g., Nashville Syrup Co. v. Coca Cola Co., 215 F. 527, 531-32 (6th Cir. 1914). 12. The fact that Meister Brau (Miller) has already demon- strated to the Patent Office that “LITE” had acquired a certain dis- tinctiveness does not entitle Miller to any procedural or substantive advantage on the issue of secondary meaning in the instant case—al- though there is some overlap in the type of evidence used to prove dis- tinctiveness, on the one hand, and secondary meaning, on the other. Distinctiveness refers to the consumer popularity and acceptance of the mark whereas secondary meaning refers to consumer identifica- tion of a unique product from a single producer. Alfred Dunhill of London, Inc. v. Ease Distillers Products Corp., 350 F.Supp. 1341, 1359-60 (E.D.Pa. 1972), aff'd, 480 F.2d 917 (3d Cir. 1973). But see Flavor Corp. of America v. Kemin Industries, Inc., 493 F.2d 275, 282 (8th Cir. 1974). 47a Appendia D necessary for Miller to show that consumers are aware that ‘‘LITE”’ beer comes from a single source, it need not show that consumers are aware of the actual name of that source. Union Carbide Corp. v. Ever-Ready, Inc., supra, at 380; Spangler Candy Co. v. Crystal Pure Candy Co., 353 F.2d 641, 647 (7th Cir. 1965), citing Shredded Wheat Co. v. Humphrey Cornell Co., 250 F’. 960, 963 (2d Cir. 1918), mod- ifying 244 F. 508 (D.C.Conn.1917). Thus, whether ‘‘ LITE’’ has acquired a secondary mean- ing is basically a factual question regarding consumer per- ceptions. Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794, 802 (9th Cir. 1970). Clearly, the most direct evidence on this issue is consumer testimony and consumer surveys. Other evidence of some consequence, in order of importance, would be the volume of sales, the length and manner of use of the mark, and the amount and manner of advertising. Umon Carbide Corp. v. Ever-Ready, Inc., supra, at 380-81. Miller has provided fairly persuasive evidence in the form of a national consumer survey that a substantial per- centage of consumers perceived LITE (43%), Miller LITE (11%), or LITE from or by Miller (1%) as the product of a particular producer, that is, as a distinct brand name indicative of a low-calorie or less-filling beer. The timing of this survey (December, 1975 to March, 1976) is partic- ularly noteworthy since it came at a time when Peter Hand and Schlitz were just beginning to market their own low- calorie beers under ‘‘Light’’ trademarks but after Miller had marketed LITE nationally for one year (1975) and regionally for several years prior to 1975. At this time, the confounding effect, if any, on the survey results that might have accrued from the introduction of low-calorie beers under the ‘‘Light’’ trademarks by Schlitz and Peter Hand was just beginning. That such a significant percentage of consumers mentioned and correctly spelled ‘‘ Lite’’ indicates 48a Appendia D that consumers were aware that ‘‘LITE’’ was a product beer, which came from a particular, unique source, although in most cases that source was not identified. See Union Carbide Corp. v. Ever-Ready, Inc., supra, at 381. Additionally, the rapidly increasing volume of Miller’s ‘“‘LITE”’’ beer sales, the use of ‘‘LITE”’’ as a trademark from 1967 to 1974 in several regions and in 1975 and 1976 nationally by Meister Brau and Miller, and the massive ad- vertising by Miller of ‘‘LITE’’ beer as a low-calorie and less-filling beer, all suggest that Miller will be likely to prevail on the issue of secondary meaning even if ‘‘LITE’’ is determined to be descriptive. In the following section of this opinion, I will discuss the question whether there is a likelihood of confusion be- tween plaintiff’s mark and defendant Heileman’s mark. In this connection, plaintiff has offered evidence that there has already developed some confusion between plaintiff’s mark and Schlitz’s ‘‘Light’’ mark, and between plaintiff’s mark and Peter Hand’s ‘‘Light’’ mark. Defendant Heile- man contends that if plaintiff’s mark had acquired a sec- ondary meaning, this secondary meaning had been dis- sipated, before defendant Heileman made its move, by the confusion emanating from the introduction of the Schlitz and Peter Hand ‘‘Light’’ beers in the market. This would be a troublesome point if in the record before me there were evidence not only of confusion, but that the confusion had already created a market situation in which Miller’s ‘“‘LITE’’ is no longer perceived by a substantial number of consumers as the product of a particular producer. Whether the confusion between plaintiff’s mark, on the one hand, and the respective marks of Schlitz and Peter Hand, on the other, whatever the nature and extent of the confu- sion may be, is the result of wrongdoing by Schlitz or Peter Hand, or both, is a question not before this court, but before two other coordinate federal district courts. Even if it 49a Appendix D were the result of wrongdoing on the part of both Schlitz and Peter Hand, it is uncertain whether plaintiff Miller would yet enjoy some protection against the later entry of defendant Heileman into a market situation in which plain- tiff Miller’s mark had lost its secondary meaning. How- ever, the record in this case does not support even a provi- sional finding that the secondary meaning of plaintiff’s mark, once existent, is no longer existent.'* B. The likelihood or lack thereof that Miller will be able to prove infringement of its right to the exclusive use of the ‘‘LITE”’’ trademark Section 32(1) of the Lanham Trade-Mark Act, 15 U.S.C. §1114(1) prohibits the use in commerce, without the consent of the registrant, of ... any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offéring for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mis- take, or to deceive 15 U.S.C. §1114(1) (1963). Under the Lanham Act the test for infringement is the likelihood of confusion on the part of consumers. Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609, 611 (7th Cir. 1965). See also Brown-For- man Distillery Co. v. Arthur M. Block L.I., 99 F.2d 708, 709- 10 (7th Cir. 1938). Among the factors the court should take into consideration in determining the likelihood of confusion are: ... the type of trademark in issue, the similarity of design, similarity of products, identity of retail outlets 13. Well after the present motion for a preliminary injunction had been submitted and was under advisement, and without leave of court having been sought, defendant submitted a series of assertions about yet more entrants into the lists of low-calorie beer c>rapetition. I give no effect to these recent submissions. ‘>> 50a Appendix D and purchasers, identity of advertising media utilized, defendant’s intent, and actual confusion. Union Carbide Corp. v. Ever-Ready, Inc., supra, at 381-82. As I have found above, the two products are similar, sales . of both will be attempted to the same buying public through the same general retail channels, and both parties will be employing the same general means and media for advertis- ing and promotion. es Under these circumstances, the degree of similarity of the marks needed to support a finding of infringement is less than in the case of dissimilar, non-competing products. Stembridge Products, Inc. v. Gay, 335 F.Supp. 863, 867 (M.D.Ga.1971). The Miller and Heileman trademarks are similar in overall design. The word ‘“‘LITE’’ and ‘“‘LIGHT’’ are visually highly similar and phonetically identical. This similarity of ‘‘LITE’’ and ‘‘LIGHT”’ is especially significant in determining the likelihood of con- fusion because these words constitute the dominant portion of each label and are likely to create a more lasting or prime impression on the public than the other words on the label. Ptkle-Rite Co. v. Chicago Pickle Co., 171 F.Supp. 671, 675-76 (N.D.i11.1959). While a visual inspection of the Miller and Heileman marks placed side-by-side reveals an extremely close re- semblance, one can distinguish the Miller product from the Heileman product. However, such a side-by-side test is not the test for the likelihood of confusion. Albert Dickin- son Co. v. Mellos Peanut Co. of Illinois, 179 F.2d 265, 270 (7th Cir. 1950). Consumers are likely to rely on vague impressions and recollections when choosing a product especially when the product is relatively low-priced and 14. The present record permits no findings of fact, and I have made none, as to whether Heileman intended to confuse the buying public, or whether actual confusion has yet occurred as between the Miller and Heileman marks. 5la Appendix D commands a small fraction of an average consumer’s bud- get. Given the imprecision of consumer recollections in such cases, the appropriate test is whether consumers with a rather indefinite recollection of the marks would be able to discriminate between the labels of the competing prod- ucts or would tend to choose one product thinking it is the other, when only one brand is in sight. See e. g. Independ- ent Natl & Packing Co., Inc. v. Stronghold Screw Products, Inc., 205 F.2d 921, 925-26 (7th Cir. 1953). I conclude that plaintiff will probably prevail ultimately in its contention that the similarity in the marks, and most particularly the strong emphasis on ‘‘Light’’ in the Heile- man mark, make consumer confusion between the two prod- ucts highly likely. II. Irreparability of Harm to Miller or Lack Thereof It will be quite some time before this case can be re- solved at trial. Apparently, cases pending in other courts brought by Miller against other brewers which may have a bearing on this case will not be decided for some time. In the absence of a preliminary injunction, Heileman will market its ‘‘LIGHT’”’ beer in competition with Miller “LITEK.’’ I have concluded above that plaintiff will probably pre- vail in its contention that confusion will occur between the two labels whether the purchase is made verbally or after a visual inspection of the product. Such confusing simi- larity has been held to be sufficient for a determination that irreparable harm will occur if an injunction is not entered. P. Daussa v. Sutton Cosmetics (P.R.) Inc., 462 F.2d 134, 136 (2d Cir. 1972), citing Sutton Cosmetics (P.R.) Inc. v. Lander Co., Inc., 455 F.2d 285, 288 (2d Cir. 1972). Conceivably, if Miller ultimately prevails in this action it will be entitled to money damages, measured perhaps by 52a Appendix D the profit Miller would have realized had all those who purchased Heileman’s ‘‘Light’’ purchased Miller’s ‘‘Lite’’ instead. But consumers whose initial experience with a low-calorie beer is with Heilman’s ‘‘Light’’ and is un- favorable, probably will not soon try ‘‘Lite.’’ It is true that because of the confusion, ‘‘Lite’’ may benefit from follow-up purchases of low-calorie beer by those whose first encounter has been with Heileman’s ‘‘Light’’ and has been favorable. However, the results of such difficul- ties in a highly volatile retail market for beer would not be easily reducible to money damages. Miller could possibly alleviate this confusion and irre- parable harm through an advertising campaign directed at distinguishing between the ‘‘LITE’’ and ‘‘LIGHT”’ marks. The cost of this advertising would be susceptible to recovery in money damages. However, it would prob- ably be impossible to determine the effectiveness of such an advertising campaign, and also to determine the finan- cial effects upon plaintiff’s sales arising from the necessity to stress this defensive theme rather than an affirmative theme promoting ‘‘Lite.’’ I conclude that it is probable that unless the motion for a preliminary injunction is granted, Miller will suffer irre- parable harm. Ill. The Balance of Equities Heileman argues that the preliminary injunction will harm it in two ways: loss of reputation, and loss of the resources it has expended in the development of ‘‘LIGHT’’ beer. Particularly in the absence of a judicial finding that it has deliberately sought to create confusion, I am unper- suaded that Heileman will suffer loss of reputation to any significant extent if enjoined temporarily from marketing beer under its ‘‘LIGHT”’ trademark. I consider it unlikely Pee Cre ADE Oe Ie es 53a Appendia D that an injunction so limited in scope and duration will affect Heileman’s sales of its ‘‘Old Style,*’ ‘‘Special Ex- port,’’ or other beer brands. Second, Heileman has not demonstrated what fraction of the costs incurred in developing ‘‘LIGHT’’ beer would be lost as a result of the preliminary injunction. Clearly, some of these expenditures will not be lost even if Heile- man is forced to re-label its beer (e. g., manhours used in developing the beer formula). Other expenses (e. g., point- of-sale advertising expenses) will not have been wholly wasted if Heileman ultimately prevails on the merits. Thus, Heileman will lose only a part of its total expendi- tures to date on the ‘‘LIGHT”’ beer project. It probably will be possible to assign a monetary value to this lost fraction should Heileman prevail on the merits at trial. Perhaps more significantly than either of these two categories of harm is the postponement, during the pend- ency of this suit, of Heileman’s opportunity to enter the low-calorie beer competition on a broad scale and under the particular banner it has chosen. The factors at play in such a market are unquestionably sophisticated and volatile, and I would ne* disparage the possible negative consequences for Heileman. But these potential negative consequences for a producer which is poised for the fray are less serious than would be an interruption in the ac- tivity of a producer already fully engaged. I conclude that the probable harm to plaintiff Miller from the denial of the preliminary injunction outweighs the probable harm to defendant Heileman from its issuance. IV. The Effect of a Preliminary Injunction on the Public Interest The preliminary injunction will tend to maintain the status quo in the market for low-calorie beer. There is no clear indication that preservation of that status quo will d4a Appendix D affect the public interest one way or another. If the effect of the preliminary injunction proves to be only a delay, pending a final decision in the lawsuit, in the introduction of Heileman’s ‘‘Light’’ beer packaged within the intended label, the effect upon the public interest will have been minimal. If a permanent injunction is ultimately entered herein in plaintiff’s favor, presumably the public interest will have been served by the earlier prohibition of the practice finally determined to be unlawful. In this suit involving Miller’s claim for injunctive pro- tection of its ‘‘LITE”’’ trademark, there is no occasion for this court to inquire into the public interest with respect to the production and sale of beer generally in the United States, or with respect to the relative competitive positions of these two parties in the beer market. Order Upon the basis of the entire record, it is ordered that commencing on the 20th day following the entry of this order, and thereafter during the pendency of this action, defendant is enjoined from the continued sale, advertising, and distribution of beer anywhere in the United States, under the brand name incorporating the word ‘‘Light’’ in the manner of the label attached to the complaint herein as Exhibit E, and under any colorable imitation of the follow- ing labels and designs registered on the principal register of the United States Patent Office: No. 905,236 (December 29, 1970) ; No. 929,276 (February 15, 1972) ; and No. 929,277 (February 15, 1972, as amended June 3, 1975). 55a Appendix D Opinion and Order of James E. Doyle, District Judge, Dated February 22, 1977 UNITED STATES DISTRICT COURT W. D. Wisconsin MiLteR Brewinc Company, Plaintiff, v. G. Herteman Brewine Co., Inc., Defendant. No. 76-C-584 Feb. 22, 1977 OPINION AND ORDER James KE. Doyze, District Judge. This opinion and order is addressed to the following pending motions by the defendant: (1) a motion filed Janu- ary 24, 1977 for an order vacating a preliminary injunction entered herein January 21, 1977; (2) a motion filed Febru- ary 4, 1977 (as an alternative to motion (1)) for an order permitting defendant to use a certain alternative label and to provide a period for the change-over; and (3) a motion filed January 24, 1977 for an order suspending the prelim- inary injunction entered January 21, 1977 pending an ap- peal from said injunction. For the purpose of deciding these motions, and for no other purpose, I renew the find- ings of fact set forth in the opinion and order entered herein January 21, 1977, and, with two exceptions, I find as fact those allegations contained in the affidavits of John S. Skilton dated January 24, 1977, John S. Pedace dated Janu- 56a Appendix D ary 28, 1977, Anthony L. Fletcher dated January 28, 1977, Phil A. Grau dated January 27, 1977, John S. Pedace dated February 3, 1977, James Van Santen dated February 8, 1977, Russell G. Cleary dated February 3, 1977 (entitled ‘‘declaration of intent’’), and Anthony L. Fletcher dated February 11, 1977. The two exceptions are as follows: (a) With respect to the Cleary declaration of intent, I con- strue it to mean that defendant intends to use the label at- tached as Exhibit X to the declaration of intent only if this court first declares that such use would not be violative of the January 21, 1977 preliminary injunction; and I con. strue it also to mean that defendant intends to abandon use of the label attached to the complaint as Exhibit E only when the said preliminary injunction becomes effective, whether this be March 2, 1977, or the termination date of some further stay or stays which may be granted. (b) With respect to the Fletcher affidavit of January 28, 1977, I do not find as fact the statements contained in a Meister Brau letter of April 10, 1972 to its Lite beer wholesalers and sales representatives. I also take judicial notice that in general terms, when foods containing carbohydrates are ingested and absorbed by humans, heat measured in calories results, so that the fewer the carbohydrates present in a food, the fewer the calories. (1) Defendant’s motion filed Jamuary 24, 1977 to vacate preliminary imjunction Apart from simple disagreement with the findings and conclusions underlying the grant of the preliminary injunc- tion on January 21, 1977, defendant’s contentions in support of the motion to vacate are: (a) that the registrations relied upon by plaintiff expressly applied to beer with no available carbohydrates, and thus afford plaintiff no procedural ad- vantage in this lawsuit alleging infringement by defendant’s 57a Appendix D use of a label applied to beer containing some available carbohydrates; and (b) that ‘‘light’’ has now become a generic term for low-calorie beer. (a) No available carbohydrates There is no evidence in the record from which I can make an intelligent construction of the word ‘‘available.’’ Con- ceivably, if all the carbohydrates in Heileman’s ‘‘Light’’ are unavailable, then it contains no available carbohydrates and the Miller registration would clearly be applicable to Heileman’s ‘‘Light.’" But I consider this too precious a view of the matter. I will assume that as used by Miller in the registration process ‘‘no available carbohydrates”’ means ‘‘no carbohydrates.’’ Thus it is apparent that Miller is now using the registered mark in distributing a beer which is low in calories but which does contain carbohy- drates, and that Heileman is using its label E? in distribut- ing a beer which also is low in calories, but which also does contain carbohydrates. As I observed in my January 21 opinion, the statutes confer upon a trademark registrant certain significant pro- cedural advantages in litigation involving the trademark. Defendant contends that the registrant should be deprived of those advantages except when the product bearing the allegedly infringing label is the exact functional equivalent of the product described in the successful application for registration. I see no good reason for so severe a rule, nor am I persuaded that there is authority for it. On the con- trary, as plaintiff contends, infringement can occur in some circumstances even when the product bearing the allegedly 1. For convenience, I will speak of the Meister Brau registration as the Miller registration. 2. The label which appears as Exhibit E attached to the com- plaint. 58a Appendix D infringing label is quite different from that described in the application for registration. In any event, there is no significant difference here. Undoubtedly, the practical im- portance of the references to the presence or absence of carbohydrates in the course of registration, if they were of practical importance, was in the context of calories and in the context of the effect of the caloric content upon the weight of humans who might consume the beer. So long as the beer bearing the allegedly offending label is distinctly low-calorie beer, as is true of Heileman’s ‘‘ Light,’’ plaintiff should enjoy in this litigation the procedural advantages conferred upon it by statute. (b) ‘‘Laght’’ now generic The only reasonably hard evidence yet in this record is that offered by plaintiff concerning consumer perceptions of the label ‘‘LITE.”’ From that evidence, the fair conclu- sion is that until Miller was well launched with its promo- tion of ‘‘Lite,’’ the word ‘‘light’’ as applied to beer did not signify to the public generally that the beer was low in calories. Up to a certain point thereafter, then, to the ex- tent that ‘‘light’’ or ‘‘LITE’’ gained this significance, it was in relation to Miller’s campaign and Miller’s product. I cannot ignore the evidence defendant has adduced, nor avoid the exercise of a degree of judicial notice of a matter of common knowledge, to the effect that in recent months this state of affairs has been altered and diffused as a num- ber of Miller’s competitors have entered the low-calorie beer field. In varying ways, they have used ‘‘light’’ to signify this particular attribute, as well as other attributes, of their respective beers. It seems clear that Miller has resisted promptly and diligently in those instances in which the par- ticular conduct of a particular competitor has been arguably illegal, and the outcome of those several contests in the courts is unknown. Whether Miller should be held to have 09a Appendia D lost its legal advantage as a result of this challenged activity by its competitors has been a troublesome point from the start of this present case in this court. I am unwilling to answer the question definitively as a rule of law. But I do conclude at least that Miller should not be held to have lost the legal advantage it once held, unless there is a clear showing by hard evidence that the word ‘‘light’’ as applied to beer is now widely understood by the public to denote a beer with low-caloric content. No such clear and hard showing has been made. (2) Defendant’s alternative motion filed February 4, 1977, for leave to change-over to Label X* Had defendant made an unconditional statement of its intention to discontinue the use of Label E after about 12 weeks, and thereafter, during the pendency of this case, to use Label X, I would have considered that a major change had occurred in the conditions underlying the issuance of the preliminary injunction on January 21, 1977. It would have meant that the plaintiff was facing the threat of the infringing use of Label E for only a relatively short period. It would also have meant that for the longer run, during the pendency of this case, the plaintiff was faced with a new and different threat. This new and different threat would have been that defendant would promote and market its low-calorie beer under Label X. Plaintiff might then have chosen to seek a modification of the preliminary injunction so that it would expressly prohibit the use of Label X as well as Label E. In that context, it would have been neces- sary for plaintiff to persuade the court that there would have been a good chance that it would ultimately succeed in its contention that the use of Label X would be an infringe- 3. Exhibit X to the Cleary “declaration of intent” dated Feb- ruary 3, 1977. 60a Appendix D ment. On the other hand, plaintiff might have elected to do nothing until the use of Label X actually began, and then to commence contempt proceedings on the ground that Label X is a ‘‘colorable imitation’’ of plaintiff’s trademark al- ready banned by the injunction. But this is not what defendant has done. Rather, de- fendant seeks a declaratory adjudication now that Label X is not a ‘‘colorable imitation”’ of plaintiff’s trademark, and therefore is not a violation of the preliminary injunction. Only if defendant obtains such a favorable declaration will it proceed with the change-over. If no judicial declaration is forthcoming, or if it is made but is unfavorable to defend- ant, defendant intends to continue the use of Label E until firmly enjoined. In considering whether to respond to the request for a judicial declaration, I have the following factors in mind. If one were to assume that this present lawsuit had run its course and that plaintiff had obtained a permanent injunc- tion phrased exactly as the preliminary injunction is phrased, and if defendant were then to engage in the use of Label X, and if contempt proceedings were then initiated, the court would be called upon to decide whether Label X is a colorable imitation of plaintiff’s trademark. This decision would not be made in the framework of probable success or failure of plaintiff in its contention that an infringement was occurring. It would be definitive; the court would be holding flatly either that Label X is a colorable imitation or that it is not. It appears that this is exactly what is now sought from the court. Although the present injunction is only prelim- inary, the question whether Label X violates it is identical to the question whether Label X would violate a permanent injunction identically phrased. The answer to this question, either as to the preliminary injunction or the hypothetical 6la Appendia D permanent injunction, would turn upon the likelihood of consumer confusion as between the trademark and Label X. I conclude that the record in this case does not support a definitive judicial declaration on this question, one way or another, and I decline to make such a declaration. (3) Defendant’s motion filed January 24, 1977 for a stay pending appeal I am unwilling to stay the preliminary injunction of January 21, 1977, as modified by my order of February 1, 1977, until an appeal from it is finally decided. However, I conclude that defendant is fairly entitled to seek such a stay from the Court of Appeals before it is compelled to discontinue its use of Label E. 62a APPENDIX E Excerpts from the Trademark Act of 1946, as Amended Pvusuic Law 489, 79rTH ConerEss, cH. 540 Approvep Juty 5, 1946; 60 Stat. 427 Sec. 2 (15 U.S.C. 1052). Trademarks registrable on the principal register* No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— i *« * (d) consists of or comprises a mark which so re- sembles a mark registered in the Patent and Trade- mark Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That when the Commissioner determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limi- tations as to the mode or place of use of the marks or the goods in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in com- merce prior to (i) the earliest of the filing dates of the applications pending or of any registration issued un- der this Act; or (ii) July 5, 1947, in the case of regis- trations previously issued under the Act of March 3, * Headings are not part of the Act, but have been added for con- venience. Headings herein are from the U.S. Department of Com- merce print of the Act. 63a Appendia E 1881, or February 20, 1905, and continuing in full force and effect on that date; or (iii) July 5, 1947, in case of applications filed under the Act of February 20, 1905, and registered after July 5, 197. Concurrent registra- tions may also be issued by the Commissioner when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Commissioner shall prescribe condi- tions and limitations as to the mode or place of use of the mark or the goods in connection with which such mark is registered to the respective persons; (e) consists of a mark which, (1) when applied to the goods of the applicant is merely descriptive or de- ceptively misdescriptive of them, or (2) when applied to the goods of the applicant is primarily geograph- ically descriptive or deceptively misdescriptive of them, except as indications 0° regional origin may be regis- trable under section 4 hereof, or (3) is primarily merely a surname; (f) except as expressly excluded in paragraphs (a), (b), (¢), and (d) of this section, nothing herein shall prevent the registration of a mark used by the appli- cant which has become distinctive of the applicant’s goods in commerce. The Comuinissioner may accept as prima facie evidence that the mark has become dis- tinctive, as applied to the applicant’s goods in com- merce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the 5 years next preceding the date of the filing of the application for its registration (Amended Oct. 9, 1962, 76 Stat. 769). 64a Appendix E Sec. 7(b) (15 U.S.C. 1057b). Certificate of registration on the principal register.—Prima facie evidence A certificate of registration of a mark upon the principal register provided by this Act shall be prima facie evidence of the validity of the registration, registrant’s ownership of the mark, and of registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate, subject to any conditions and limitations stated therein. Sec. 10 (15 U.S.C. 1060). Assignment A registered mark or a mark for which application to register has been filed shall be assignable with the goodwill of the business in which the mark is used, or with that part of the goodwill of the business connected with the use of and symbolized by the mark, and in any such assignment it shall not be necessary to include the goodwill of the busi- ness connected with the use of and symbolized by any other mark used in the business or by the name or style under which the business is conducted. Assignments shall be by instruments in writing duly executed. Acknowledgment shall be prima facie evidence of the execution of an assign- ment and when recorded in the Patent and Trademark Of- fice the record shall be prima facie evidence of execution. An assignment shall be void as against any subsequent purchaser for a valuable consideration without notice, un- less it is recorded in the Patent and Trademark Office within 3 months after the date thereof or prior to such subsequent purchase. A separate record of assignments submitted for recording hereunder shall be maintained in the Patent and Trademark Office. An assignee not domiciicd in the United States shall be subject to and comply with the provisions of section 1(d) hereof (Amended Oct. 9, 1962, 76 Stat. 769). 65a Appendix E Sec. 12(a) (15 U.S.C. 1062a). Examination of application— Publication of mark when entitled to registration Upon the filing of an application for registration and payment of the fee herein provided, the Commissioner shall refer the application to the examiner in charge of the regis- tration of marks, who shall cause an examination to be made and, if on such examination it shall appear that the appli- cant is entitled to registration, the Commissioner shall cause the mark to be published in the Official Gazette of the Patent and Trademark Office: Provided, That in the case of an applicant claiming concurrent use, or in the case of an application to be placed in an interference as provided for in section 16 of this Act, the mark, if otherwise registrable, may be published subject to the determination of the rights of the parties to such proceedings (Amended Oct. 9, 1962, 76 Stat. 769). Sec. 13 (15 U.S.C. 1063). Opposition to registration of marks on the principal register Any person who believes that he would be damaged by the registration of a mark upon the principal register may, upon payment of the required fee, file a verified opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publeation under sub- section (a) of section 12 of this Act of the mark sought to be registered. Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further exten- sions of time for filing opposition may be granted by the Commissioner for good cause. The Commissioner shall notify the applicant of each extension of the time for filing opposition. An unverified opposition may be filed by a duly authorized attorney, but such opposition shall be null and void unless verified by the opposer within a reasonable time 66a Appendia E after such filing to be fixed by the Commissioner. An oppo- sition may be amended under such conditions as may be prescribed by the Commissioner (Amended Oct. 9, 1962, 76 Stat. 769; and Jan. 2, 1975, 88 Stat. 1955). Sec. 14 (15 U.S.C. 1064). Cancellation of registrations A verified petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed by any person who believes that he is or will be damaged by the registration of a mark on the principal register established by this Act, or under the Act of March 3, 1881, or the Act of February 20, 1905— (a) within five years from the date of the registra- tion of the mark under this Act; or (b) within five years from the date of publication under section 12(c) hereof of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905; or (c) at any time if the registered mark becomes the common descriptive name of an article or substance, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 4 or of subsection (a), (b), or (ce) of section 2 of this Act for a registration hereunder, or contrary to similar prohibitory provisions of said prior Acts for a registra- tion thereunder, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services in connection with which the mark is used; or (d) at any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of sub- section (c) of section 12 of this Act; or 67a Appendix E (e) at any time in the case of a certification mark on the ground that the registrant (1) does not control, or is not able legitimately to exercise control over, the use of such mark, or (2) engages in the produciion or marketing of any goods or services to which the certifi- cation mark is applied, or (3) permits the use of the certification mark for purposes other than to certify, or (4) discriminately refuses to certify the goods or serv- ices of any person who maintains the standards or con- ditions which such mark certifies: Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in subsections (c) and (e) of this section any mark registered on the principal register established by this Act, and the prescribed fee shall not be required (Amended Oct. 9, 1962, 76 Stat. 769). Sec. 32(1) (15 U.S.C. 1114(1)). Remedies—Infringement Any person who shall, without the consent of the regis- trant— (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connec- tion with which such use is likely to cause confusion, or to cause mistake, or to deceive; or (b) reproduce, counterfeit, copy or colorably imi- tate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertise- ments intended to be used in commerce upon or in con- nection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection 68a Appendia E with which such u 2 is likely to cause confusion, or to cause mistake, or tu deceive; shall be liable in a civil action by the registrant for the rem- edies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or dam- ages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confu- sion, or to cause mistake, or to deceive (Amended Oct. 9, 1962, 76 Stat. 769). Sec. 33(a) (15 U.S.C. 1115a). Remedies—Certificate of registration on principal register—Prima facie evi- dence of exclusive right to use mark Any registration issued under the Act of March 3, 1881, or the Act of February 20, 1905, or of a mark registered on the principal register provided by this Act and owned by a party to an action shall be admissible in evidence and shall be prima facie evidence of registrant’s exclusive right to use the registered mark in commerce on the goods or serv- ices specified in the registration subject to any conditions or limitations stated therein, but shall not preclude an oppos- ing party from proving any legal or equitable defense or defect which might have been asserted if such mark had not been registered (Amended Oct. 9, 1962, 76 Stat. 769). Sec. 33(b) (15 U.S.C. 1115b). Same—When conclusive evidence of exclusive right to use mark If the right to use the registered mark has become incon- testable under section 15 hereof, the registration shall be conclusive evidence of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the affidavit filed un- der the provisions of said section 15 subject to any condi- 69a Appendia E tions or limitations stated therein except when one of the following defenses or defects is established: (4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a trade or service mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe to users the goods or serv- ices of such party, or their geographic origin; or (Amended Oct. 9, 1962, 76 Stat. 769). Sec. 43(a) (15 U.S.C. 1125a). False designations of origin and false descriptions forbidden Any person who shall affix, apply, or annex, or use in connection With any goods or services, or any container or containers for goods, a false designation of origin, or any false description or representation, including words or other symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce, and any person who shall with knowledge of the falsity of such designation of origin or des¢ription or rep- resentation cause or procure the same to be transported or used in commerce or deliver the same to any carrier to be transported or used, shall be liable to a civil action by any person doing business in the locality falsely indicated as that of origin or the region in which said locality is situated, or by any person who believes that he is or is likely to be damaged by the use of such false description or represen- tation. PRES ESET CE ED OV ORE LS Fe a AF ee ae 70a . APPENDIX F Jerome Gilson, 1 Trademark Protection and Practice, Dee. 1978 Cum. Supp. pp. 22-23. Copyright © 1977, 1978 by Matthew Bender & Company Incorporated. All Rights Reserved. (Reprodueed with permission of. Publisher and Author) The same court which authored the term ‘‘ generically descriptive’’ has created an entirely new category of un- protectible words. In Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 195 U.S.P.Q. 281 (7th Cir. 1977), cert. denied US. (1978), the court reversed a preliminary injunction in favor of the owner of the beer trademark LITE because the legally equivalent word ‘‘light’’ is a ‘‘generic or common descriptive term’’ when used with ‘‘beer.’’ It held the term so clearly unprotectible that no amount of advertising or promotion, even to the point of establishing secondary meaning, could salvage it. To reach this result, however, the court adopted an un- precedented and extremely tortured analysis. Its principal difficulty was the nature of the word ‘‘light,’’ clearly a descriptive adjective modifying the word ‘‘beer.’’ How- ever, the court apparently believed that if it recognized ‘‘light’’ as descriptive, it would have had to grant protec- tion, since there was evidence that LITE (or ‘‘light’’) had attained secondary meaning identifying Miller in the pub-: lic mind as the source of the product. The solution to this dilemma, the court felt, was to hold that LITE (or ‘‘light’’) was the equivalent of a generic term, which is never pro- tectible. To do so, it expanded the category of generic terms, which are almost always nouns, to include the ‘‘com- mon descriptive term.’’ It thus held that a descriptive adjective (‘‘light’’) was, in legal effect, generic: ‘‘If ‘light 71a Appendia F beer’ is a generic name, then ‘light’ is a generic word when used as a part of that name.’’ The court recognized that other types of descriptive words, which it called ‘‘merely descriptive terms,’’ could still be legally pro- tectible if they attained secondary meaning. In the 7th Circuit, therefore, an adjective which the court finds is a ‘‘generic or common descriptive term’’ is unprotectible irrespective of evidence of secondary meaning, but a ‘‘merely descriptive term’’ is protectible if secondary meaning attaches. The court did not attempt to draw a bright line between the two types of descriptive terms. The word ‘‘common’’ may be a clue, but many descriptive terms are common. The word ‘‘merely’’ does not help either, except that it is borrowed from Section 2 of the Lanham Act, which pro- vides for federal registration of ‘‘merely descriptive’’ terms which have become distinctive of an applicant’s goods. Indeed, there seems to be no objective way to distinguish between them. The distinction in Miller Brew- ing appears based on a visceral reaction that certain de- scriptive terms are so commonplace and so widely used that it would be against public policy to enforce them, no matter how extensively they are advertised or promoted. In the opinion of the author, the distinction is so vague as to be unworkable in terms of its application to future trademark infringement cases. If it were applied by many courts it could place a large number of valuable secondary meaning trademarks in jeopardy of being found ‘‘common descriptive terms,’’ irrespective of the degree to which the public relies on them in purchasing products or serv- ices. Other courts with the same problem, however, do not need to adopt the artificial distinction of Miller Brew- ing. They can apply the well-established rule that the owner of a secondary meaning mark cannot obtain injunc- tive relief against a party who uses the same term in a 72a Appendia F purely descriptive manner or in its primary sense: See §§ 2.03 N. 4; 2.09 N. 13 infra. They can also apply the ‘‘fair use’’ defense of Section 33 (b)(4) of the Lanham Act, which allows the use of ‘‘a term or device which is descriptive of and used fairly and in good faith only to describe to users the goods ... of such party.’’ 15 U.S.C. § 1115b(4) ; § 4.03[3] infra. As a last resort, they can apply the ‘‘de facto’’ secondary meaning doctrine, and hold that for reasons of public policy no protection will be forth- coming, even though a degree of single source association has been established. See §2.09 [2] imfra. The Miller Brewing holding is closely analogous to this doctrine, but the court does not purport to follow it. In any event, the court could have upheld LITE as a valid secondary meaning trademark, but allowed Heileman to use ‘‘light’’ in its descriptive sense in relation to low calorie beer under circumstances where confusion was not likely. This approach would have reached roughly the same result, while preserving trademark rights in LITE for enforcement in some future, possibly more compelling, ease. It would also have avoided the creation of an alto- gether artificial distinction which, one assumes, will plague courts and trademark counsel for years to come. 73a APPENDIX G Arthur J. Greenbaum, The Thirty-First Year of Administration of the Lanham Trademark Act of 1946, 68 The Trademark Reporter No. 6 at pp. 783-85. Copyright © 1979 by The United States Trademark Association. All Rights Reserved. (Reprinted with permission of the Publisher and Author) Another case that attracted widespread attention was decided in the Seventh Circuit. In Miller Brewing Co. v. G. Heileman Brewing Co., Inc., that court apparently held that ‘‘light’’ is a generic or common descriptive word when applied to beer and that neither the word nor its phonetic equivalent LITE may be appropriated as a trademark for low calorie beer.*** The commercial stakes in this motion for a preliminary injunction were enormous. Miller had expanded its annual sales of LITE beer in four years from 50,000 barrels to 4,000,000 barrels and incrased its annual advertising ex- penditures from $500,000 to more than $12,000,000. As the plaintiff’s LITE sales increased so did the use of the word ‘‘light’’ by competitors for their versions of a low calorie beer. The basic issue was whether LITE was generic or merely descriptive. If the latter, there seems to be no question but that it would have been deemed to have ac- quired a secondary meaning. The Court defined a generic or common descriptive term as ‘‘one which is commonly used as the name or description of a kind of goods.’’ *** While there is no question that the name of a kind of goods is a good definition of a generic term, confusion creeps in when one speaks about a descrip- tion of a kind of goods. 223. 561 F2d 75, 195 USPQ 281 (CA 7 1977), revg 195 USPQ 16 (WD Wisc 1977), cert denied 196 USPQ 592 (1978). 224. Id 195 USPQ at 284. a ow = 74a Appendix G Perhaps what the court meant was that there are two kinds of generic terms—one which is commonly used as the name of the goods and the other commonly used as the description ef a kind of goods. But what exactly is a term used to describe a kind of goods? Most descriptive terms describe a kind of goods. Does this mean thai most de- scriptive terms are generic? Has the court by accident or design wiped out the concept of descriptive terms acquiring a protectible secondary meaning? Miller was said by the court to have argued that since ‘‘light’’ was an adjective that it could not be a generic term, that generic terms are words for a kind of goods—nouns— while adjectives describe qualities of goods. The Court disagreed: ... given the reason for the rule that precludes appro- priation of a common descriptive word, viz., otherwise ‘‘a competitor could not describe his goods as what they are.’’ CES Publishing Corp. v. St. Regis Publi- cations, Inc., supra, 531 F2d at 13, 188 USPQ at 614-615. Ordinarily, as here, the adjective which is sought to be appropriated in its generic sense as a trademark will be a part of aname. See, e.g., Roselux Chemical Co. v. Parsons Ammonia Co., 299 F2d 855, 863, 132 USPQ 627 ... (‘‘sudsy’? ammonia). If ‘‘light beer’’ is a generic name, then ‘‘light’’ is a generic word when used as part of that name.*” There is no question but that ‘‘light’’ is descriptive of various qualities of beer; it has been used in the industry for years to describe the beer’s color, flavor, body or a com- bination of these or similar characteristics. However, simply because a term has been used descriptively does not make it generic, i.e., the name of the product. Here, the name of the product appears to be beer. An appropriate description of it could be ‘‘light.’’ 225. Id at 285 (footnote omitted). 75a Appendia G The court does not clearly explain why it concluded that ‘‘light’’ is generic. The reason that generic terms are not protectible is, as stated by the court, that such protection would preclude a competitor from stating what his goods are. Such a competitive disadvantage is unacceptable as a matter of policy. For example, if the word ‘‘chair’’ were to be appropriated by a single competitor, others in the chair trade would be at an enormous disadvantage because they could not use the name of the goods to describe what they were selling. One reason for this is that if a term is a pro- tectible trademark, it cannot as a matter of logic also be generic when applied to the same product sold to the same purchasing class. Aspirin is either a protectible trademark or is generic. It cannot be both. Therefore, if a term is a protectible trademark, it cannot be used as a generic term.*”° However, no such problem exists with respect to de- seriptive terms. A descriptive term, such as ‘‘pure’’ for oil, ean be a trademark when used as a trademark and can be an ordinary adjective when used in copy or on labels as an ordinary descriptive term. Put another way, an adjec- tive can be both a trademark (its secondary meaning) and remain a descriptive term (its primary meaning) available to others. Competition is not unduly hindered because com- petitors can use the descriptive term, even if it also is a trademark, descriptively in a good faith non-trademark manner. The public is protected under this system from confusion and the investment of a producer who has man- aged to obtain a secondary meaning for its descriptive trademark is also protected.?*" Thus, if the court here held that LITE was a descriptive term which had acquired a secondary meaning, competitors 226. See, eg, Stix Products, Inc. v. United Merchants & Manu- facturers, Inc., 295 F Supp 479, 160 USPQ 777 (SDNY 1968) ; see supra fn 33 and infra fn 230. 227. See Lanham Act, Section 33(b) (4). a aa yersicad pee ee RS 76a Appendia G would have been permitted to use the term ‘‘light’’ to de- scribe any characteristic of their beer that the term appro- priately described, but would not have been allowed to use LITE as a trademark or brand name, and presumably would not have been permitted to use ‘‘light’’ as a trade- mark if such use resulted in likelihood of confusion. This problem of the difference between a generic term and a merely descriptive one has long been with us. Courts have not been terribly successful in grappling with the dis- tinction. Here, the Seventh Circuit has managed to define a generic term in such a manner that almost any descriptive term could be deemed to be generic. Hopefully, this unfor- tunately worded decision will not now set off more years of confusion and controversy as to what is protectible and what is not.*8 228. Clarification may be on the way. Miller’s suit against Schlitz, whose reduced calorie beer was most prominently labeled LIGHT, was dismissed on grounds that Heileman raised a collateral estoppel against Miller. The court also ordered Miller’s registrations of LITE canceled. Miller Browing Co. v. Jos. Schlitz Brewing Co., 449 F Supp 852 (ED Wis 1978). That decision is on appeal. Among the issues raised are: (1) how conclusive can the Heileman decision be since it only reversed a preliminary injunction?; (2) can Heileman be recon- sidered as that case (or others) progress?; and (3) does Heileman necessarily doom all protectability of LITE? 77a APPENDIX H Seymour Kleinman, 3 Callman, The Law of Unfair Competition Trademarks and Monopolies, 1978 Cum. Supp. pp. 36-48. Copyright © 1978 by Callaghan & Company All Rights Reserved. (Reprinted with permission of Publisher and Author) “Common Descriptive’ Marks: First-Degree “Genericide.”’ An awesome augury of genericide appears to be threat- ening a broad category of marks, registered or not. It started with the relatively recent ‘‘discovery”’ of a hitherto unidentified trademark substratum—the generic or ‘‘com- mon descriptive’’ term—which now appears to have been lying dormant as a fault beneath the common law of trade- marks and the legislative structure of the Lanham Act. In Miller Brewing Co. v. G. Heileman Brewing Co., Inc. (one of a number of related actions by Miller against rival brewers), the Seventh Circuit held ‘‘Lite,’’ a misspelled version of ‘‘Light,’’ to be the generic equivalent for ‘‘less filling, low calorie beer,’’ and therefore not available for exclusive appropriation, protection or registration as a trademark.**? Summarizing basic principles of trademark law and relying heavily upon Abercrombie & Fitch Co. v. 43561 F2d 75 (CA 7th, 1977), citing this Treatise. The court reversed the issuance of a preliminary injunction by the court below. Some 22 years earlier, the same Circuit used the expression “generi- cally descriptive” in passing on “ju-jus” in Henry Heide, Inc. v. George Ziegler, Co., 354 F2d 574 (CA 7th, 1965). See also §77.3 at p 351 on such use by the Patent Office; Alligator Co. v. Colonial Togs, 107 USPQ 326 (Comm’r Pat 1955). The generic word was not unknown to trademark law. It was understood to relate to words in such common use in specific contexts as to be totally unfit and therefore disqualified for trademark service. For relevant discussions, see §§70.4; 74; 74.2; 97.3(c) (2) ; and 98.8 (b) (3). 78a Appendia H Hunting World, Inc.,**® the Miller opinion offers the follow- ing synthesis: ‘‘A term for which trademark protection is claimed will fit somewhere in the spectrum which ranges through (1) generic or common descriptive and (2) merely descriptive to (3) suggestive and (4) arbitrary or fanciful. As the ease with which hues in the solar spectrum may be classified on the basis of perception will depend upon where they fall in that spectrum, so it is with a term on the trade- mark spectrum.’’ Accordingly, in the ‘‘perception’’ of the court, the low- liest or least discernible ‘‘hue’’ in the protectible trademark spectrum is that cast by the ‘‘merely descriptive’’ term which describes a characteristic or ingredient of an article but can, by virtue of acquiring a secondary meaning, become sufficiently distinctive of the applicant’s goods to be entitled to trademark viability at common law and registration under 2(f) of the Lanham Act. The ‘‘hue”’ of the ‘‘ generic or common descriptive term,’’ which the court defines as ‘‘one commonly used as the name or description of a kind of goods,’’ is so indistinct or diffused that it ‘‘cannot be- come a trademark under any circumstances.’’ In ‘‘light’’ (no pun intended) of the forbidding significance of the deci- sion on trademark law generally, as well as the Lanham Act specifically, its premises require careful analysis and its result calls for limited application. The pioneering expedition which apparently led to the discovery of the generic or ‘‘common descriptive’” sub- stratum appears to have begun, appropriately enough, in the Hunting World contest over the mark ‘‘Safari.’’? There, Judge Friendly began the trek with the following analysis: ‘‘The cases, and in some instances the Lanham Act, identify four different categories of terms with respect to trademark protection. Arrayed in an ascending order 46537 F2d 4, 9-11 (CA 2nd, 1976), citing this Treatise; see §§70.4; 77.1; 82.1(a), sub (8); 82.1(1); 85.1(c); 47.3(c). aR ATL SPIT RON SEAS I” R= se RED, wtscoar PY URI RTS 79a Appendia H which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbi- trary or fanciful. The lines of demarcation, however, are not always bright. Moreover, the difficulties are com- pounded because a term that is in one category for a par- ticular product may be in quite a different one for another, because a term may shift from one category to another in light of differences in usage through time, because a term may have one meaning to one group of users and a different one to others, and because the same term may be put to different uses with respect to a single product. In various ways, all of these complications are involved in the instant case. ‘A generic term is one that refers, or has come to be understood as referring, to the genus of which the particu- lar product is a species. At common law neither those terms which were generic nor those which were merely de- scriptive could become valid trademarks ... The same was true under the Trademark Act of 1905... exeept for marks which had been the subject of exclusive use for ten years prior to its enactment... While... the Lanham Act makes an important exception with respect to those merely de- scriptive terms which have acquired secondary meaning... it offers no such exception for generic marks. The Act pro- vides for the cancellation of a registered mark if at any time it ‘becomes the common descriptive name of an article or substance,’ §14(c). This means that even proof of seec- ondary meaning, by virtue of which some ‘merely descrip- tive’ marks may be registered, cannot transform a generic term into a subject for trademark.’’ (Emphasis added.) Despite the ominous absolutism of that last sentence, it is highly significant (as well as its saving grace) that the Hunting World opinion then went on to hold that the noun ‘‘Safari’’ was generic for products and services related to ep hiet aaee von 12 bred awit ta OOo ais Dien dS aR a A Ri tle i asl ee! SNL tL whwiesiderse 2 hte Te i Nias ili Res oti eit te tities 80a Appendia H an African jungle journey, but not irredeemably generic (and therefore protectible and registrable as a trademark) for other products not so related. Hunting World thus recognized that the stigma of genericism is not all-embra- cive and that it does not condemn a trademark for all purposes. Attracted perhaps by its scholarly disquisition, other courts found it fashionable to rechart the Hunting World trek in most cases by way of dicta) and, in rather quick succession, the following formulations appeared: 1. In Scientific Applications Inc. v. Energy Conserva- tion Group of America,*® the court, passing upon the de- scriptiveness or suggestiveness (not the genericness) of the mark ‘‘ Homefoamers,’’ inverted the order and changed the metaphor as follows: ‘‘The hierarchy of marks, re- flecting the availability of protection accorded by the Lan- ham Act, can be set out as follows: (1) fanciful (e.g., ‘Kodak’) or arbitrary (e.g., ‘Ivory’ for soap) marks are registrable, 15 USC §1052; (2) suggestive (e.g., ‘Strong- hold’ for nails) marks are registrable; (3) descriptive (identifies characteristics or qualities such as, color, odor, function, dimensions, ingredients) marks are registrable only upon proof of an acquired secondary meaning, 15 USC §1052(e)(f); and (4) generic (identifies nature or class of articles or services) marks are not registrable, 15 USC §1064(c).”’ 2. In Anti-Monopoly, Inc. v. General Mills Fun Group, Inc.,*?” the court in holding that ‘‘ Monopoly”’ was not then and had never been a common descriptive term, put it as follows: ‘‘In ascending order of the protective status ac- 49 436 F Supp 354 (DCND Ga 1977). See also §98.3(b) (1). 412__F Supp —, 195 USPQ 634 (DCND Cal 1977). See also §§80.6, note 74; 88.5(b), note 34. 8la Appendix H corded each, they are 1) generic 2) descriptive 3) sug- gestive and 4) arbitrary or fanciful... Generic terms, those which are the common descriptive name of an article or substance, can never be registered or entitled to trade- mark protection. Merely descriptive terms are not ac- corded protection either unless they have become dis- tinctive or have acquired secondary meaning.’’ 3. In Golden Door, Ine. v. Odisho,*® the court’s syn- thesis, here oddly enough stressing the name only (see §14(c) of the Lanham Act), appears as follows: ‘‘(i) Generic names are not entitled to trademark protection. (ii) Descriptive names receive protection only if they have acquired secondary meaning as denoting goods or services provided only by a particular producer... (iii) ‘Sugges- tive’ names are closely related to descriptive terms, and are protected without proof of secondary meaning if they ‘require imagination, thought and perception to reach a conclusion as to the nature of goods [or services].’... (iv) Names which are fanciful or arbitrary are strong trademarks, and are entitled to the greatest protection.’’ (Emphasis added.) 4. In Nature’s Bounty, Inc. v. Basie Organies,*"* the court, in finding ‘‘B-100’’ for a vitamin product to be merely descriptive of its milligram content, and without any secondary meaning, put it thusly: ‘‘In an ascending array of protection, marks are classified as (1) generic, that is the common descriptive name, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful... A mark which is suggestive is entitled to protection against in- 4.15 437 F Supp 956 (DCND Cal 1977), citing this Treatise. See also §76.3(b) (3). 418 432 F Supp 546 (DCEDNY 1977), citing this Treatise. See also §73.1, note 98. 82a Appendia H fringement whereas a mark which is ‘merely descriptive’ of the product is denied that protection unless it has become distinctive, through the development of secondary meaning. §2 of the Lanham Act, 15 USC §1052.”’ The above quotations only illustrate the judicial litany inspired by the Hunting World expedition. Although not wholly consistent in terminology, they are in agreement with respect to the so-called generic or common descriptive terms as a substratum of unprotectible marks. The concept of a generic mark traces its lowly origin to the ‘‘common descriptive name’’ which appears in §14(c) of the Lanham Act. If, by statute, a registered mark is subject to cancella- tion under §14(¢) when it has become the ‘‘common descrip- tive name of an article or substance’’ (the precise language of §14(c)), so the argument goes, why clutter the Register in the first instance with generic common descriptive marks that start life (or should it be death?) in that debilitated state. Such common descriptive marks therefore, are non- protectible and nonregistrable ab initio. In other words, the newly born mark that is generic should be entitled to no better treatment than an old (once fanciful or suggestive) mark which, though registered, has become generic (or senile) ; both are to be consigned to the purgatory of non- protectibility. The Miller court first deprived the plaintiff of the bene- fits of Lanham Act registration by technical knock-out. Ap- parently Miller’s predecessor in interest, complying with the demand of the Patent Office, amended its original appli- cations for ‘‘Lite’’ to expedite processing and the regis- trations issued to Miller’s predecessor were expressly lim- ited to ‘‘beer with no available carbohydrates.’’ Finding, however, that the ‘‘Light’’ beer marketed by Heileman as well as Miller’s ‘‘Lite’’ beer did in fact contain ‘‘available carbohydrates,’’ the court held that the registrations were not prima facie evidence, under §15(a), of Miller’s exclusive 83a Appendia H right to the ‘‘Lite’’ mark on such beer and thereby rele- gated Miller’s claim of trademark rights to evaluation under the common law. Without reference to that all- important acid test—the public perception of ‘‘Lite’’ for beer—the court took judicial notice of the fact that ‘‘al- coholic content and caloric content go hand in hand.’’ On the strength of its premise that ‘‘light’’ was widely used in the beer industry to ‘‘describe a beer’s color, flavor, body or alcoholic content’’ (which by itself might qualify it as ‘‘merely descriptive’’ of some function or ingredient under the definitions quoted above), the court proceeds to its con- clusion: ‘‘light,’’ being a ‘‘generic or common descriptive term as applied to beer’’ [by whose perception is nowhere indicated] it could ‘‘not be exclusively appropriated by Miller as a trademark,’’ and is therefore, nonprotectible, however extensive the promotional efforts by Miller to ex- ploit it or give it secondary meaning! Logically, the court’s syllogism lacks another premise: iLe., ‘‘light’’ is a generic or common descriptive term only because the public perception accords with the court’s premise, intuitive or otherwise. True or false, it is that missing link which converts the court’s conclusory finding of ‘‘genericness’’ from one of fact (which it should be) to one of law (which is erroneous). Whatever the intuitive rea- son or illogie (especially surprising after the court below had determined otherwise), the Miller court christened the ~ new substratum ‘‘Generica’’ and consigned both ‘‘Lite’’ and ‘‘Light’’ to its dark and dismal depths. Dictum thus became gospel and the decision, if carried to its drily logical extreme, can seriously undermine the structure of the Lan- ham Act and impair some fundamental concepts of trade- mark law. Neither the Lanham Act nor any of its antecedents iden- tify anything called a generic mark. Three ‘‘descriptive’’ variants do, however, appear in the Lanham Act in differ- 84a Appendia H ing contexts and for disparate purposes. The ‘‘unholy three’’ are: (1) The ‘‘merely descriptive’? mark, which appears in §2(e) on registrability ;*** (2) The ‘‘common descriptive name of an article or sub- stance,’’ which appears in §14(c) on cancellation, and in §15(4) on incontestability; and (3) The ‘‘descriptive term or device,’’ which appears in §33(b) (4) on the right to fair use of a mark, even one with a claim to incontestability. Bypassing their many verbal differences (only some of which are underscored above), the differing temporal set- tings in which they appear (as evidenced by the different tenses used in each of the sections) and their widely variant purposes, it is obvious, first, that had Congress intended to bar the registration of any or all, the simple expedient of inclusion in the Index Expurgatorius of §§2(a)-(d) was available. Assuming as we must (absent legislative history to the contrary) that different terms were intended to have different meanings, it is the judicial function to interpret those apparently conflicting concepts in a consistent man- ner designed to effectuate such intent. No such judicial attempt has yet been made. If the Miller court intended, as its opinion suggests, that the ‘‘descriptive’’ category requires further sub- categorization, the gradations would appear to be as fol- lows: (1) ‘‘Descriptive,’’ as it appears in §33(b)(4) presumes an existing registration. It is therefore applicable only to a registered mark (the right to the use of which has already 4.22 Tt will be noted that the statutory phrase “merely descriptive” in §2(e) is not qualified by the word “primarily” which precedes “merely geographical” in the very same section. Does this omission mean that a “merely descriptive” mark can be descriptive either in a primary (principal) or secondary (subsidiary) sense? 85a Appendia H become incontestable under $15) and permits fair use on the premise that competitors should have equal right to use that descriptive term; (2) ‘‘Merely descriptive’’ in §2(e) identifies a mark which is non-registrable until ‘‘something new has been added,’’ i.e., secondary meaning. By deduction, therefore, ‘‘merely descriptive’’ would register below ‘‘descriptive’’ but above ‘‘common descriptive’’ (generic) on any Richter scale of distinctiveness. (3) The ‘‘common descriptive’’ mark is stigmatized at birth and in limbo forever after, with no hope or prospect of parole or rehabilitation by acquiring secondary meaning en route. With the available subcategorization, why did the Miller court summarily condemn ‘‘Lite’’ to the purgatory of ‘“Generica’’? As one reads the several judicial definitions of the ‘‘descriptive’’ mark quoted above, it would seem that ‘Lite’? should have qualified. Miller’s ‘‘Lite’’ was ob- viously trying to say something more to the public than ‘‘beer,’’ i.e., to describe or refer to some ingredient, com- ponent, flavor, quality, etc. Thus, it was within the ‘‘merely descriptive’’ and above the wholly noninformative sub- category of ‘‘common descriptive.”’ The Miller court was obviously less concerned with con- gressional intent than it was with its mythic trademark spectrum, with hues ranging from the high-beamed ray cast by the protectible ‘‘arbitrary’’ mark down to the sun- less low of the nonprotectible ‘‘generic’’ mark. Definitions are often as uninformative as the labels they generate and much of the semantic ‘‘prior art’’ on trademark registrability can be likened to a dog chasing its tail. The statutory definition is, of course, prospectively conceived for general application in futuro and it may not always turn out to be as prescient as subsequent develop- ments require. Judicial interpretation is then in order but, 86a Appendix H unfortunately, a judicial definition is often substituted for such interpretation and too often is conceived retrospective- ly to rationalize a determination already made. Using a label to define a label only compounds the error and ob- scures the issue. We can accept the commonplace that every generic word is common but every common word is not necessarily generic, but that turn of phrase avails us nothing. To call a term ‘‘generically descriptive’’ or to say that a word is a generi¢ term descriptive of a product** is circular in the extreme. It would be like saying: ‘‘A de- finition is something that defines something.’’ But why beat a dead dog—especially one that died chasing its own tail? It might be helpful here to refer to another recent judi- cial variation on the same theme. In Waples Platter Co. v. General Foods Corp.,**? the court offers the foliowing formulation: ‘‘Trademarks are characterized as running from strong to weak. The relative strength of a trademark is but a legal shorthand for the breadth of protection to be afforded the mark and is’ based ultimately on the consum- er’s recognition of the trademark as the hallmark for a par- ticular source of a product or a type of products... The traditional analysis of the relative strength of a trade- mark is twofold. The first stage is to characterize the mark as ‘weak’ or ‘strong’ based solely on an investigation of the mark itself. If a mark is ‘generic’ (by virtue of including the proper name of the product or of an essential ingre- dient), it is clearly weak. Conversely, if a mark is ‘arbi- trary or inventive’ (by virtue of being completely non- descriptive or by use of a fanciful name), it is clearly strong. Other marks fall into a nebulous middle ground ranging from suggestive (strong) to descriptive (weak). 4.24 Ductile Iron Society v. Gray Iron Foundries Soc., Inc., 201 NE2d 309 (Ohio Com PI 1964). See generally §§70.4 and 74.1. 4.27 439 F Supp 551 (DCND Tex 1977). See also §80.5, note 73.4. 87a Appendix H A trademark is descriptive if it conveys to potential consumers the characteristics, functions, qualities, ingredi- ents, properties, or uses of the product.’’ Miller’s ‘‘Lite,’’ of course, might have qualified under that court’s definition of the descriptive trademark in the sense that it was attempting to convey to ‘‘potential cus- tomers’’ some characteristic, function, quality, ingredient, property or use of the product. Under that formulation, while a generic mark is deemed ‘‘weak,’’ a ‘‘descriptive’’ or ‘‘merely descriptive’’ mark would be somewhat stronger by virtue of being more informative than a ‘‘common de- scriptive’’ or generic mark. (‘‘ale’’ for ‘‘beer’’ would ob- viously be generic but anything that is not a synonym for ‘*beer’’ should be judged otherwise.) In any event, the Miller court defined the generic mark as ‘*,., one which is commonly used as the name or descrip- tion of a kind of goods.’’ (Kmphasis added.) Here again note the circularity in defining a term with the very words at issue—‘‘common’’ and ‘‘descriptive.’? As any seman- ticist will attest, it is hopelessly unproductive to define an imprecise word with other imprecise words. Labels are tyrannical and the fault lies neither in the stars (nor the spectrum) but in ourselves. The more important question remains: How should a court determine where a mark falls within its own formulation? In an earlier case, the Seventh Circuit itself proclaimed: ‘‘[T]he line between descriptive and suggestive marks is searcely pikestaff plain.’’**° If that line is so indistinct for marks in those 4.30 Union Carbide Corp. v. Ever-Ready, Inc., 531 F2d 366 (CA 7th, 1976). There the court also conceded that the registration of a mark, without requiring proof of distinctiveness, indicates that the Patent Office “must have concluded that the mark was not “merely descriptive.” (That benefit was denied to Miller by the court’s re- strictive reading of the original and “limited” registrations.) The very difficulty of drawing any lines of distinction, “pikestaff plain” or otherwise, the court noted, “emphasizes the need to give due respect to the determinations of the patent office if the distinction is to be drawn in a consistent manner.” 88a Appendix H discrete categories, then certainly the lines between the ‘‘common descriptive’’ mark, the ‘‘merely descriptive’’ mark, and the ‘‘descriptive’’ mark must surely be gossamer stuff. Indeed, as that very same opinion goes on to say, ‘‘pikestaff plain’’ or no, the distinction is ‘‘difficult to draw and is, undoubtedly, often made on an intuitive basis rather than as the result of a logical analysis susceptible of ar- ticulation’’ In making the determination, the courts have admon- ished against reliance upon dictionary definitions and ‘‘hypertechnical philological analysis,’’? suggesting in lieu thereof the determination of ‘‘whether a certain mark is a singularly appropriate word for conveying information with respect to the nature’’ of the product in question.** Regrettably, the admonition appears to have been more honored in the breach than in the observance and, follow- ing precedent, we do likewise here with respect to some of the possible and many-splendored meanings of ‘‘light’’ and its phonetic equivalent ‘‘lite.”’ 4.33 American Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F2d 3, 11 (CA 5th, 1974). The Miller court’s citation of, and heavy reliance on, dictionary definitions, chemical technology reference works and state statutes is all the more mystifying. What lies buried on the desks of bureaucracy or in the depths of esoteric expertise is obviously not what the public knows, assumes or bases its perceptions on. Cf. In re Maximedia Corp., 196 USPQ 335 (TTAB 1977) (contrary administrative inter- pretations and possible adverse action will not bar the issuance of a trademark registration ). Equally surprising is the court’s citation of Philip Morris, Inc. v. R. J. Reynolds Tobacco Co., — F Supp —, 188 USPQ 289 (DC SDNY 1975), which ordered the cancellation of “Lights” as a brand name for Marlboro cigarettes. Is one to assume, from the court’s reference, that “light” cigarettes were also represented to be “less filling” or “low caloried” with or without “available carbohydrates” or that the public so understood it? Or it is to be assumed that “light” for beer meant low tar and nicotine? Obviously, as Judge Friendly noted in Hunting World, the same word has different meanings in differing contexts. 89a Appendix H ‘‘Light,’’ denoting a form of radiant energy, is used as a general term for any luminous effect discernible by the eye, from the faintest phosphorescence to the blaze of the sun. As a noun, it may be associated with bulbs, neon tubes, fire and all forms of illumination. As a verb, one can light candles, light up, on, in, into or out. As an adjective, it may mean pale, airy or even short of funds. One can be lightfingered or lighthearted and trip the light fantastic from light opera to light quantum. In the building trade, light is a window and in our sexually liberated society it is even a synonym for ‘‘gay.’’ The foregoing list, less extensive than it is illuminating, is offered to ‘‘highlight’’ a basic issue. The meaning of ‘‘Light’’ in any context ultimately turns (again, seriously, and with no puns intended) upon the ‘‘light’’ (context) in which it is used and by whose ‘‘lights’’ (perceptions) it is being interpreted. The answer, of course, lies in the public perception, as the court views it, of each such usage in its particular frame of reference and not in the court’s own perception of, or intuitive reaction to, how the public should view it. For lamps, ‘‘light’’ may well be generic; for the name of a bank or insurance company, it may well be arbitrary. Context is all-important. ‘‘Light’’ for a brew could just as readily have been interpreted as a term which to the pub- lic meant an ale, light in color as contrasted with a dark malt. Intuitively or otherwise, however, the Miller court equated ‘‘lite’’ and ‘‘light’’ with ‘‘less filling, low calorie beer,’’ without reference to the public’s perception of that usage. On the permise that ‘‘light’’ has been widely used in the beer industry for many years to describe a beer’s color, flavor, bo [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385006_1313%3A1. Public record. Not legal advice.