CUDAHY, Circuit Judge.
Plaintiff Liquid Controls Corporation ("Liquid Controls") sued defendant Liquid Control Corporation ("Liquid"), alleging violations of the Lanham Act and the Illinois law of unfair competition and deceptive trade practices. The district court granted the defendant's motion for summary judgment. We affirm.
Plaintiff Liquid Controls is an Illinois corporation, with its principal place of business in Illinois, that manufactures and sells meters for measuring the flow of liquids. It has used "Liquid Controls" both as its corporate name and to identify its products since 1956. Plaintiff obtained federal trademark protection for the term "Liquid Controls" in April 1984. Defendant is an Ohio corporation with its principal place of business in Ohio. It manufactures and sells precision devices that dispense and mix liquids and has used the name "Liquid Control" on these products since 1973.
Plaintiff filed a complaint in district court alleging that defendant had willfully infringed its registered trademark in the name "Liquid Controls," in violation of § 32 of the Lanham Act, 15 U.S.C. § 1114(1); had willfully caused consumer confusion by leading the public to believe that plaintiff made defendant's product, in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and had engaged in unfair competition and deceptive trade practices in violation of Illinois law. After limited discovery, the defendant moved for summary judgment "on the ground that the term is generic and commonly descriptive with respect to plaintiff's goods, such that plaintiff is not entitled to prevent defendant's use of a similar name. This motion, if granted, would be entirely dispositive of the litigation." Defendant's Memorandum in Support of Motion for Summary Judgment, Appendix at 17. The district court granted the motion, finding "that the term liquid control or liquid controls defines a class of goods which the plaintiff manufactures and sells and is a common descriptive or generic term," Liquid Controls Corp. v. Liquid Control Corp., No. 84-C-9303 (N.D.Ill. Aug. 21, 1985) ("District Court Opinion"), at 3 [Available on WESTLAW, DCTU database], and that therefore the trademark was not enforceable against defendants. Plaintiff appeals, arguing that there is a genuine issue of material fact as to whether the phrase "liquid controls" is a generic term and that even if it is a generic term, that circumstance is not dispositive of its section 43(a) claim and state law claims.
A generic or common descriptive term can never function as a trademark. See Technical Publishing Co. v. Lebhar-Friedman, Inc., 729 F.2d 1136, 1139 (7th Cir.1984); Miller Brewing Co. v. Joseph Schlitz Brewing Co., 605 F.2d 990, 994 (7th Cir.1979), cert. denied, 444 U.S. 1102, 100 S.Ct. 1067, 62 L.Ed.2d 787 (1980). On the other hand, a term that is merely descriptive may be used as a trademark if it has acquired secondary meaning. Thus in considering plaintiff's section 32
District Court Opinion at 3.
A generic term is one that is commonly used as the name of a kind of goods. See A.J. Canfield Co. v. Vess Beverages, Inc., 796 F.2d 903, 906 (7th Cir.1986); Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901, 905 (7th Cir.1983); Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 79 (7th Cir.1977), cert. denied, 434 U.S. 1025, 98 S.Ct. 751, 54 L.Ed.2d 772 (1978). Unlike a trademark, which identifies the source of a product, a generic term merely specifies the genus of which the particular product is a species. See Gimix, 699 F.2d at 905; Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.1976). Because a generic term is one commonly used to denote the product, a common source of evidence is the dictionary. See Gimix, 699 F.2d at 905, 906; Miller, 561 F.2d at 80-81.
A merely descriptive term is one that specifically describes a characteristic or an ingredient of a product. Canfield, at 906; Gimix, 699 F.2d at 906; Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 378 (7th Cir.), cert. denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94 (1976). Merely descriptive terms are generally not protectible as trademarks "both because they are poor means of distinguishing one source of services from another and because they are often necessary to the description of all goods or services of a similar nature." M.B.H. Enterprises, Inc. v. WOKY, Inc., 633 F.2d 50, 54 (7th Cir.1980); see Gimix, 699 F.2d at 906.
Plaintiff is correct that its registration must be taken as prima facie evidence that "liquid controls" is not a generic term. The Lanham Act provides that:
15 U.S.C. § 1115(a). This section entitles the plaintiff to a presumption that its registered trademark is not merely descriptive or generic, or, if merely descriptive, is accorded secondary meaning. See Union Carbide, 531 F.2d at 378; J. McCarthy, Trademarks & Unfair Competition § 11:16 (2d ed. 1984). This presumption may, of course, be overcome by proof of descriptiveness, or by proof of genericness. J. McCarthy, Trademarks & Unfair Competition § 11:16 (2d ed. 1984); see, e.g., Vision Center v. Opticks, Inc., 596 F.2d 111, 119 (5th Cir.1979), cert. denied, 444 U.S. 1016, 100 S.Ct. 668, 62 L.Ed.2d 646 (1980); Educational Development Corp. v. Economy Co., 562 F.2d 26, 28 (10th Cir.1977). The burden is on the defendant to overcome the presumption. See Coca-Cola
The evidence presented by the defendant consists largely of dictionary definitions. The noun "control" is defined in Webster's Third New International Dictionary (1967 ed.) as an "automatic mechanism used to regulate or guide the operation of a machine or an apparatus or system."
Plaintiff's reply to the everyday, dictionary understanding of the term "liquid controls"
Plaintiff's second argument, that a composite trademark should not be broken into its component parts in determining whether it is generic, is also disposed of easily. This circuit has noted: "Dissecting marks often leads to error. Words which could not individually become a trademark may become one when taken together." Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 379 (7th Cir.1976), cert. denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94 (1976). Certain terms may connote more than the sum of their parts and we must take care to decide the genericness of these terms by looking to the whole. For example, the mark "sugar & spice" on bakery products was held to be not merely descriptive, even though both "sugar" and "spice" are descriptive of the products. See In re Colonial Stores, Inc., 394 F.2d 549 (C.C.P.A.1968). Other composite terms are nothing more than the sum of their parts, such as "multistate bar examination" and "light beer." "Liquid controls" falls in the latter category. In any case, we do not believe that the principle that the validity of a mark is to be determined by looking at the mark as a whole precludes a court from examining the meanings of the component words in determining the meaning of the mark as a whole.
Defendant has also introduced other evidence tending to show that "liquid controls" is a generic term, notably three patent applications that use the term to designate various mechanisms for controlling the flow of a liquid or the level of a liquid in a chamber. Plaintiff argues that these patents prove nothing because it does not sell the particular devices described. We believe that this distinction is irrelevant. The devices described in the patents would appear to fall within the same genus as the devices sold by plaintiff — they are all devices to measure and control liquids.
Plaintiff argues that it has produced enough evidence to show that there is a genuine issue of fact. Plaintiff refers to its trademark registration. Defendant has, however, introduced enough evidence of the genericness of the term "liquid controls" to "burst" the presumption created by section 1115(a). Thus plaintiff cannot rely on that presumption to defeat the motion for summary judgment. The presumption really serves only to shift the burden of production to the defendant.
Plaintiff also argues that it has produced evidence of nongenericness by 1) showing that no trade publications, trade shows or trade associations use "liquid controls" in their names; 2) showing that, of the companies listed in The Thomas Register (an industrial trade directory), only the plaintiff and defendant have similar names; 3) showing that defendant did not use "liquid controls" in a generic sense in two of its advertisements.
Plaintiff argues that even if its trademark is generic, it may still be entitled to relief under section 43(a) of the Lanham Act.
15 U.S.C. § 1125(a).
In Miller Brewing Co. v. Joseph Schlitz Brewing Co., 605 F.2d 990, 997 (7th Cir.1979), cert. denied, 444 U.S. 1102, 100 S.Ct. 1067, 62 L.Ed.2d 787 (1980), we held that if a term was generic, use of that term alone could not give rise to an unfair competition claim, even if many people had come to associate the term with the plaintiff. See Miller Brewing Co. v. Falstaff Brewing Corp., 655 F.2d 5, 7 (1st Cir.1981) ("Under no circumstances is a generic term susceptible of de jure protection under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) or under the law of unfair competition.") We implied, however, that an unfair competition claim might be supportable if consumer confusion or a likelihood of consumer confusion arose from the failure of the defendant to adequately identify itself as the source of the product. Miller, 605 F.2d at 997. Thus section 43(a) may not protect the use of a term unless that term is sufficiently distinctive to warrant protection as a trademark, even if some confusion results, but may offer protection against "passing off." In Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604 (7th Cir.1986), we held that the defendant's use of a similar format in a yellow-pages advertisement was not protected under section 43(a) even though the similarity created some confusion because some customers may have called the defendant thinking they were calling the plaintiff.
Blau Plumbing, 781 F.2d at 610. Technical Publishing Co. v. Lebhar-Friedman, Inc., 729 F.2d 1136 (7th Cir.1984), in which we recognized that section 43(a) of the Lanham
We do not believe that plaintiff has alleged or shown evidence of confusion resulting from anything other than the similarity of names.
Plaintiff relies largely on Metric & Multistandard Components Corp. v. Metric's, Inc., 635 F.2d 710 (8th Cir.1980). In Metric, however, the confusion did not arise merely from the use of a similar name, but from the fact defendant's catalogues "were nearly exact copies of appellee's sales materials." Id. at 714. Thus the defendant was in effect falsely describing the origin of the goods sold. Id. In the case before us plaintiff has not presented evidence of conduct similar to Metrics' conduct. Plaintiff also cites King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d Cir.1963) and DuPont Cellophane Co. v. Waxed Products Co., 85 F.2d 75 (2d Cir.1936), cert. denied, E.I. DuPont de Nemours & Co. v. Waxed Products Co., 299 U.S. 601, 57 S.Ct. 194, 81 L.Ed. 443 (1936) and cert. denied, E.I. DuPont de Nemours & Co. v. Waxed Products Co., 304 U.S. 575, 58 S.Ct. 1047, 82 L.Ed. 1539 (1938), as cases in which the courts acted to offer some protection to a generic term. In these cases a formerly exclusive trademark right had been lost because the name had become generic, and the court required a latecomer using that word to state the source of the product. See Miller Brewing Co. v. Jos. Schlitz Brewing Co., 605 F.2d 990, 997 (7th Cir.1979), cert. denied, 444 U.S. 1102, 100 S.Ct. 1067, 62 L.Ed.2d 787 (1980). These cases are thus distinguishable.
15 U.S.C. § 1114(l).
Plaintiff further argues that the affidavit of its vice-president is evidence of nongenericness. The affidavit also only addresses the issue of secondary meaning. Plaintiff argues that affidavit states that the factual portion of the Plaintiff's Memorandum In Opposition to Defendant's Motion for Summary Judgment is true and that the Memorandum states that "liquid controls" is not the name of "any identifiable items, groups of items or any recognized fields of activity in which the Plaintiff, or for that matter the Defendant, are engaged," which is relevant to the determination of genericness. The problem with plaintiff's argument is that the statement quoted does not appear in the factual portion of the Memorandum, but rather in the "Introductory Statement," and thus is not incorporated into the affidavit.
Complaint ¶ 14.