Liquid Controls Corp. v. Liquid Control Corp.

• Decision Date: 30 September 1986
• Docket Number: No. 85-2620,85-2620
• Citation: 802 F.2d 934
• Parties: LIQUID CONTROLS CORPORATION, Plaintiff-Appellant, v. LIQUID CONTROL CORPORATION, Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 934

802 F.2d 934

231 U.S.P.Q. 579

LIQUID CONTROLS CORPORATION, Plaintiff-Appellant, v. LIQUID CONTROL CORPORATION, Defendant-Appellee.

No. 85-2620.

United States Court of Appeals Seventh Circuit.

Argued May 6, 1986.

Decided Sept. 30, 1986.

James N. Videbeck, Patnaude Batz & Videbeck, Oak Brook Terrace, Ill., for plaintiff-appellant.

Daniel A. Boehnen, Allegretti Newitt Witcoff & McAndrews, Ltd., Chicago, Ill., for defendant-appellee.

Before CUDAHY and COFFEY, Circuit Judges, and ESCHBACH, Senior Circuit Judge.

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.

I

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 Sec. 32 of the Lanham Act, 15 U.S.C. Sec. 1114(1); had willfully caused consumer confusion by leading the public to believe that plaintiff made defendant's product, in violation of Sec. 43(a) of the Lanham Act, 15 U.S.C. Sec. 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, 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.

II

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 ¹ claim, the crucial question is whether there is a genuine issue of material fact as to whether "liquid controls" is a generic or a merely descriptive term. The district court held that "liquid controls" is a generic term because it defines a class of goods that the plaintiff manufactures and sells.

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 system." Substantially the same definition is contained in the Random House Dictionary, Unabridged Edition (1967). Adding the word "liquid" to the word "control" or "controls" is merely a restriction defining the type of controls manufactured and sold by the parties and make the term more rather than less descriptive of the goods, in our opinion. Defendant has also produced copies of three patents using the term "liquid controls" (Brief, p. 5, Exhibit C-E).

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:

a mark registered on the principal register ... shall be prima facie evidence of registrant's exclusive right to use the registered mark in commerce on the goods or services specified in the registration subject to any conditions or limitations stated therein, but shall not preclude an opposing party from proving any legal or equitable defense or defect which might have been asserted if such mark had not been registered.

15 U.S.C. Sec. 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 Sec. 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 Sec. 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 v. Overland, Inc., 692 F.2d 1250, 1254-55 (9th Cir.1982); Reese Publishing Co. v. Hampton International Communications, 620 F.2d 7, 11 (2d Cir.1980). Thus in the case before us the burden is on the defendant not only to overcome whatever presumption of nongenericness exists, but also to show that there is no genuine issue of material fact as to genericness. ²

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." ³ When "liquid" ⁴ is added to "controls" the effect is to identify the type of mechanism, thus identifying a genus of products. ⁵

Plaintiff's reply to the everyday, dictionary understanding of the term "liquid controls" is twofold. First, plaintiff argues that the term is not generic because "liquid controls" is not found in the dictionary. Second, plaintiff argues that breaking a composite trademark up into parts is improper. As to the first argument, it should suffice to mention that numerous terms have been found to be generic despite their absence from the dictionary. See, e.g., Technical Publishing Co. v. Lebhar-Friedman, Inc., 729 F.2d 1136 (7th Cir.1984) ("software news" probably generic); National Conference of Bar Examiners v. Multistate Legal Studies, 692 F.2d 478 (7th Cir.1982) ("multistate bar examination"), cert. denied, 464 U.S. 814, 104 S.Ct. 69, 78 L.Ed.2d 83 (1983); Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir.1977) ("light beer"), cert. denied, 434 U.S. 1025, 98 S.Ct. 751, 54 L.Ed.2d 772 (1978); see also J. McCarthy, Trademarks and Unfair Competition Sec. 12:3 (2d ed. 1984) (listing other generic terms, including "bag rack," "barrier bag," "body soap," "export soda," "multipoint data service," "rubber rope," "shredded wheat" and "work wear").

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...