Rehearing and Rehearing En Banc Denied September 14, 1977.
This appeal presents the question whether a misspelled version of the word "light" can become a trademark for a "less filling, low-calorie beer." The District Court answered the question affirmatively and, based on that determination, granted a preliminary injunction, which this court has stayed pending appeal. We hold that, 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 trademark for beer. We therefore reverse the preliminary injunction order.
In May of 1967 a now defunct Chicago brewer, Meister Brau, Inc., began making and selling a reduced calorie, reduced carbohydrate beer under the name "LITE." Late in 1968 that company filed applications for registration of "LITE" as a trademark on the principal register in the United States Patent Office, which ultimately approved three registrations
In 1972, with its demise imminent, Meister Brau sold its interest in the "LITE" trademarks, the registrations thereof, and the accompanying goodwill to the plaintiff Miller Brewing Company. For a time Miller continued selling beer under that brand in the Meister Brau marketing area in somewhat smaller quantities than Meister Brau had distributed.
Miller then decided to expand its marketing of beer under the brand "LITE." It developed a modified recipe, which resulted in a beer lower in calories than Miller's regular beer but not without available carbohydrates. The label was revised and one of the registrations was amended to show "LITE" printed rather than in script.
Since early 1975 a number of other brewers have introduced reduced calorie beers labeled or described as "light."
Miller began filing trademark infringement actions against competitors to enjoin the use of the word "light" at least as early as October 1975, but none of the cases has yet come to trial. Miller did not seek a preliminary injunction against any competitor until the filing of the instant action in November 1976. Two of the seven other brewers against whom actions are pending, Jos. Schlitz Brewing Co. and Peter Hand Brewing Company, have filed briefs amici curiae in this action.
On the basis of affidavits and other written material, the District Court in the case at bar enjoined Heileman from continuing to sell, advertise, and distribute 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 . . . and under any colorable imitation of" the labels which had been registered with the Patent Office. This interlocutory appeal is taken from that order as later modified. The label used by Heileman at the time the injunction was entered featured the word "Light" in print much larger than the name "Heileman." As an alternative to its motion in the District Court to vacate the injunction order Heileman filed a declaration of intent to change its label to a form in which the name "Heileman" and the word "Light" appeared in the same size print and a motion for a determination that the new label would not be a "colorable imitation" of the registered labels. The District Court declined to decide the alternative motion, noting that Heileman apparently intended to proceed with the change in labels only if the court declared that the new label was not a colorable imitation of the registered trademarks. Heileman nevertheless proceeded to change its label to the new form and, after the appeal had been docketed, filed in this court a "notification of label change" reciting that, effective no later than April 15, 1977, it "will have wholly abandoned use of the word `Light' in the form of the [old] label."
Before reaching the merits, we must consider the effect of Heileman's formal abandonment of the old label. Assuming without deciding that this act deprived Heileman of standing to challenge the part of the injunction directed against that label or rendered moot any issue as to that label, the appeal is nevertheless not moot. The injunction also runs against "any colorable imitation" of three registered labels, two of which consist simply of the misspelled word "lite." This added proscription must be read in the context, first, of the prohibition against use of the old label, which was not a colorable imitation of the registered labels in any sense except its prominent use of the word "light," spelled correctly, and, second, of the district judge's memorandum and supplements thereto, which make it clear that he believed Miller would probably prevail on its claim to the exclusive use of the word "lite" and its phonetic equivalent on low-calorie beer. So read, we believe the colorable imitation clause is intended to enjoin the use of the word "light" in any prominent way on a label for low-calorie beer. Therefore, the case is not moot.
The Effect of Registration
Miller claims the benefit of 15 U.S.C. § 1115(a), which provides that registration on the principal register
The three registrations on which Miller relies specify "beer with no available carbohydrates" as the goods on which the registered mark is to be used. This limitation came about because the Patent Office refused registration on the applications as
The basic principles of trademark law which are applicable here have often been stated, e. g., Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-11 (2d Cir. 1976); Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 378-379 (7th Cir.), cert. denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94 (1976), and may be briefly summarized. 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 trademark spectrum.
A generic or common descriptive term is one which is commonly used as the name or description of a kind of goods. It cannot become a trademark under any circumstances. William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 528, 44 S.Ct. 615, 68 L.Ed. 1161 (1924); Henry Heide, Inc. v. George Ziegler Co., 354 F.2d 574, 576 (7th Cir. 1965); CES Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d 11, 13 (2d Cir. 1975). Using the phonetic equivalent of a common descriptive word, i. e., misspelling it, is of no avail. American Aloe Corp. v. Aloe Creme Laboratories, Inc., 420 F.2d 1248, 1252-1253 (7th Cir.), cert. denied, 398 U.S. 929, 90 S.Ct. 1820, 26 L.Ed.2d 91, 400 U.S. 820, 91 S.Ct. 37, 27 L.Ed.2d 47 (1970).
A merely descriptive term specifically describes a characteristic or ingredient of an article. It can, by acquiring a secondary meaning, i. e., becoming "distinctive of the applicant's goods" (15 U.S.C. § 1052(f)), become a valid trademark. See Abercrombie & Fitch Co. v. Hunting World, Inc., supra, 537 F.2d at 10.
A suggestive term suggests rather than describes an ingredient or characteristic of the goods and requires the observer or listener to use imagination and perception to determine the nature of the goods. Such a term can be protected without proof of a secondary meaning. Id. at 11.
An arbitrary or fanciful term enjoys the same full protection as a suggestive term but is far enough removed from the merely descriptive not to be vulnerable to possible attack as being merely descriptive rather than suggestive. Id.
Although Miller argued in the District Court that "LITE" was suggestive, and persuaded the District Court that this was so with respect to the quality of being reduced in calories, it conceded in oral argument before us that the choice is between (1)
An Adjective as a Generic Term
The fact that "light" is an adjective does not prevent it from being a generic or common descriptive word. See 1 J. T. McCarthy, Trademarks and Unfair Competition § 12:2 at 409 (1973); Application of Preformed Line Products Co., 323 F.2d 1007, 51 CCPA 775 (1963); Application of Helena Rubinstein, Inc., 410 F.2d 438 (Cust. & Pat.App.1969). See also 3 Callman, The Law of Unfair Competition, Trademarks and Monopolies §§ 70.4, 74.1 (3d ed. 1969), which Miller calls "the leading treatise." This must be the law, given the reason for the rule that precludes appropriation of a common descriptive word, viz., otherwise "a competitor could not describe his goods as what they are." CES Publishing Corp. v. St. Regis Publications, Inc., supra, 531 F.2d at 13. Ordinarily, as here, the adjective which is sought to be appropriated in its generic sense
"Light" Is Generic
The record before us (although less complete than that in at least one of the other pending cases
"Light" has been widely used in the beer industry for many years to describe a beer's color, flavor, body, or alcoholic content, or a combination of these or similar characteristics.
The comparable definition in the previous, and for many the classic, edition of the same dictionary is as follows:
Similar definitions and usage are found in reference works on chemical technology, industry publications, and magazines and newspapers generally. Indeed, state statutes even use "light beer" as a generic or common descriptive term.
"Light" is also a common descriptive word in other similar contexts. Miller's president testified in a deposition which has been made part of this record that Miller chose the word "LITE" for its low-calorie beer because of its desire to capitalize on the trend of "consumer products going lighter all over the world, be it foods, be it whiskeys, be it cigarettes," as well as to "convey the message that it would be lighter in taste" and to communicate "the conception of a less filling product." Miller's parent company, Philip Morris, Inc., registered "Light" (Registration No. 878,062) and used that word as a brand name for cigarettes (Marlboro Light). Judge Stewart held the word to be descriptive and ordered the registration cancelled in Philip Morris, Inc. v. R. J. Reynolds Tobacco Co., 188 U.S.P.Q. 289 (S.D.N.Y.1975), a decision from which no appeal was taken. The word is also used by Pepsico, Inc. for "Pepsi Light" a soft drink described as having "half the calories out."
Miller argues that it uses the word as the name for "less filling, low calorie" beer, and that "light" has not heretofore been used in that sense. This argument fails for two reasons. First, "less filling" means essentially light in body and taste and not oppressive to the stomach, which is a common descriptive meaning of "light"; and, as Miller conceded in its brief, the caloric content of beer depends primarily on alcoholic content.
The word "light," including its phonetic equivalent "lite," being a generic or common descriptive term as applied to beer, could not be exclusively appropriated by Miller as a trademark, "despite whatever promotional effort [Miller] may have expended to exploit it." Henry Heide, Inc. v. George Ziegler Co., supra, 354 F.2d at 576; see Abercrombie & Fitch Co. v. Hunting World, Inc., supra, 537 F.2d at 9-10. Because probability of success cannot be established, other issues argued by the parties need not be decided, and the preliminary injunction must be reversed.