CUDAHY, Circuit Judge.
Henri's Food Products Co., Inc. ("Henri's"), the owner of a federal registration for the trademark TAS-TEE for use on salad dressings, sued Tasty Snacks, Inc. ("Tasty Snacks") for trademark infringement through the use of the term "tasty" as a trademark for salad dressing. Henri's sought an injunction and damages. Tasty Snacks filed a motion to dismiss Henri's complaint for failure to state a claim upon which relief could be granted under Rule 12(b)(6) of the Federal Rules of Civil Procedure. Tasty Snacks subsequently asked the court to convert this motion into a motion for summary judgment. The district court granted summary judgment in favor of Tasty Snacks on the ground that the word "tasty" was a generic term for
Henri's is a Wisconsin corporation located in Milwaukee, Wisconsin, that manufactures salad dressing which is sold throughout Wisconsin and elsewhere in the United States. One of Henri's products is a salad dressing made with celery seed and onion and sold under the claimed trademark TAS-TEE. Henri's has sold more than 10 million dollars worth of TAS-TEE brand salad dressing since 1947. In 1960, Henri's was refused registration by the United States Patent Office for TAS-TEE as a trademark for use on salad dressings. The mark was considered "so highly descriptive that it does not function as a trademark to distinguish applicant's goods in interstate commerce." Complaint, Exhibit H at 9-10. In 1982, however, Henri's filed a second application for trademark registration, and the Patent Office granted registration for the word TAS-TEE alone.
In 1984, Tasty Snacks, an Illinois corporation, started selling salad dressings and mayonnaise under the designation "tasty," including "Tasty" mayonnaise, "Tasty" Russian dressing, "Tasty" Italian dressing and "Tasty" salad dressing with vinegar, egg yolks and oil. Tasty Snacks placed the registered trademark symbol ® next to the word "tasty" on the label of some of its dressing products.
In December 1984, Henri's began a lawsuit against Tasty Snacks seeking to enjoin Tasty Snacks from using the term "tasty" as a trademark for salad dressing and asking for damages. Henri's complaint alleges that the use of the trademark "tasty" on salad dressings by Tasty Snacks is likely to result in confusion by potential purchasers of salad dressing who may believe that salad dressing bearing the "tasty" trademark came from the same source as dressing bearing Henri's TAS-TEE trademark. Henri's alleges federal trademark infringement in violation of 15 U.S.C. § 1114(1)(1982), unfair competition in violation of 15 U.S.C. § 1125(a)(1982), common law trademark infringement and violation of the Illinois Uniform Deceptive Trade Practices Act, Ill.Rev.Stat. ch. 121-1/2, ¶¶ 311-17 (1985). Henri's contends that Tasty Snacks' dressings were sold in direct competition with Henri's TAS-TEE brand with intent to deceive and unfairly compete and to trade on the goodwill of Henri's TAS-TEE trademark.
With the service of its summons and complaint, Henri's also served upon Tasty Snacks a set of interrogatories and a request for production of documents. Tasty Snacks declined to respond to these discovery requests, and the district court has never ruled on the resulting motion to compel. Subsequently, Tasty Snacks moved to dismiss the complaint for failure to state a claim upon which relief could be granted. Tasty Snacks' motion asserted that Henri's could not have a protectable trademark in the word "tasty" or TAS-TEE because the word "tasty" is a generic word for salad dressings. Henri's filed a timely response to the motion, and Tasty Snacks subsequently filed a reply memorandum in which it asked the district court to convert its motion to dismiss under Rule 12(b)(6) to a motion for summary judgment against Henri's.
In July 1986 the district court, 642 F.Supp. 255, ruled in favor of Tasty Snacks, finding that the word "tasty" (and its phonetic equivalent TAS-TEE) is a generic term for salad dressing and cannot be trademarked. The district court thus granted summary judgment in favor of Tasty Snacks and this appeal followed.
The district court found that the word "tasty" (and its phonetic equivalent TAS-TEE) was generic with respect to salad dressing and therefore was incapable of winning protection as a trademark either under federal law, common law or under the Illinois Deceptive Trade Practices Act. We agree with the district court that if "tasty" were generic, it could not be accorded trademark protection. We do not, however, agree that "tasty" is generic.
Id. at 81 (quoting Henry Heide, Inc. v. George Ziegler Co., 354 F.2d 574, 576 (7th Cir.1965)). The district court in the case before us observed that "`[l]ight' or `lite' is a common descriptive word such as `rose' wine, `blended' whiskey, and `white' bread." Henri's Food Products, Inc. v. Tasty Snacks, Inc., 642 F.Supp. 255, 259 (E.D.Wis.1986) ("July 31, 1986 Order") (citing Miller Brewing Co., 561 F.2d at 81). The district court went on to conclude:
Id. at 259. The district court also rejected Henri's argument that a generic word must be a commonly used name of a product, and that since the word "tasty" is an adjective, it cannot be generic. The district court stated that the mere fact that a word is an adjective does not prevent it from being a generic or common descriptive word.
The district court found that the Miller Brewing Co. court had held that "beer" was the name of the product, and that "light" described the qualities of that product. That is, "light" described a certain quality of that type of beer as less filling with reduced calories. In like vein, the district court thought that "salad dressing" is the name of the product and "tasty" describes the qualities of the product:
July 31, 1986 Order at 259.
We do not agree that "tasty" is a generic term or a "common descriptive name" or, for that matter, is comparable to "light" or "lite" in "light beer." The holding in Miller Brewing Co. is that an adjective can be a generic term when that word is part of a common descriptive name of a kind of goods.
It is important to observe the distinction between "common descriptive" (or generic) terms and "merely descriptive" terms:
Park'n Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 193-94, 105 S.Ct. 658, 661-62, 83 L.Ed.2d 582 (1985) (citation omitted) (emphasis added). In many circumstances, the difference between a common descriptive name and a merely descriptive mark is not easily visible to the naked eye.
Here, however, unlike "light beer," "tasty salad dressing" is not a kind, sort, genus or subcategory of salad dressing. Rather, "tasty" is "merely descriptive" and describes a quality found in many genuses of salad dressing. It is not an adjective which in any way serves to classify the noun to which it is attached. This kind of "merely descriptive" word can, at least in theory, convey a secondary meaning. "Merely descriptive" terms convey a quality or characteristic of the product. The term "tasty" describes the quality of the salad dressing. There really can be no suggestion that "tasty dressing" is a kind or type or subcategory of dressing such as, for example, French dressing.
In re Geo. A. Hormel & Co., 227 USPQ (BNA) 813, 813-14 (TTAB 1985) (emphasis added) (citation omitted).
There is no question that the word "tasty" as applied to salad dressing is highly descriptive. There appears to be absolutely nothing suggestive or arbitrary about the use of the adjective in this connection. There is some feeling that words may be so highly descriptive that they ought to be incapable of being removed from the public domain even if they are not in the traditional sense generic. Despite the occasional surfacing of this sentiment, however, it is not the law. The Trademark Trial and Appeal Board (the "TTAB") has recently held, for example, that "law & business" for business law seminar services is so "highly descriptive" that it is incapable of serving as a mark and is unregisterable on the Supplemental Register. In re Harcourt Brace Jovanovich, Inc., 222 USPQ (BNA) 820 (TTAB 1984) (citing other TTAB cases). The Court of Appeals for the Federal Circuit has, however, apparently disapproved of the idea that a term may be so "highly descriptive" that it is incapable of ever becoming a trademark. See In Re Seats, Inc., 757 F.2d 274 (C.A.F.C.1985).
Thus far, at least, only generic terms are viewed as being incapable of gaining protection by acquiring secondary meaning, including, of course, terms that can be reasonably construed as generic names, such
REVERSED AND REMANDED