APPEAL from the Circuit Court of Cook County; the Hon. WALTER
P. DAHL, Judge, presiding.
MR. JUSTICE BURMAN DELIVERED THE OPINION OF THE COURT:
Rehearing denied November 29, 1972.
Plaintiff, Mars, Incorporated, is seeking a preliminary injunction enjoining the defendants from using the term fun size on or in connection with the advertising or sale of candy products during the pendency of this action.
Mars alleges infringement of its common law trademark rights and of its Illinois trademark registration, common law unfair competition, and violation of the Uniform Deceptive Trade Practices Act. Ch. 121 1/2, Ill. Rev. Stat. 1971, par. 312.
• 1 After a comprehensive evidentiary hearing, the trial court concluded that the probability of plaintiff's ultimate success on the merits was not likely and therefore refused to grant a preliminary injunction. Plaintiff appeals from the trial court's denial of its motion. The sole question for review is whether the trial court abused its discretion in refusing to grant plaintiff a preliminary injunction. Roth v. Daley, 119 Ill. App.2d 462, 470, 256 N.E.2d 166, 170.
It is undisputed that Mars was the exclusive user of the term fun size from its inception in April of 1968 through August of 1971, when defendants began to use it. Mars employed the term on many of its candy products including Snickers, Milky Way, Three Musketeers, Snickers Peanut Munch, Mars Almond Bars, and M & M's.
A brief review of the historical background to the development of fun size candy is contained in the record. It appears that in the fall of 1957, defendant Curtiss (a wholly owned subsidiary of defendant Standard Brands) commenced producing and selling packs of small, multiple packed, individually wrapped, branded candy bars under its Baby Ruth and Butterfinger brands. This was the first time such a marketing concept had been used in the candy industry. Curtiss adopted the term "junior" to designate the size of its products.
In 1961, Mars commenced selling packs of small, multiple packed, individually wrapped candy bars under its various trademarks, including Milky Way, Snickers and Three Musketeers. Mars also employed the designation "junior" to describe the size of these products.
In 1968, Mars discontinued its "junior" size candy product and came out with a larger size of small, individually wrapped, multiple packed branded candy bars. These bars were intermediate in size between the old "junior" bars and the traditional size bars sold over the counter by Mars. It adopted the words fun size to describe this new category.
On this appeal, Mars first challenges the trial court's denial of relief for defendants' alleged infringement of plaintiff's trademark rights. Mars. concedes that the term fun size is a secondary support for its primary trademarks such as Snickers, Milky Way, etc. It stresses, however, that the term fun size was coined and adopted as an umbrella over its many candy products, and that the term acts as a common denominator by which people can identify its products without having prior familiarity with the primary trademark. Mars also emphasizes that the words fun size appear in a distinctive script logo in a prominent position on its packaging so that they create a separate and distinct commercial impression apart from any other trademark on its package.
Defendants contend that Mars never used the term fun size as a means of identifying the source of origin of its products. They argue that Mars never considered the term to be a trademark until just prior to instituting this suit, when it sought and obtained a pro forma Illinois registration. Defendants point out that Mars never sought or obtained any other registration including Federal registration for the term. They note that a west coast firm had obtained a Federal registration of the term "fun" for candy based on a 1926 date of first use. Defendants argue that since Mars could thus not establish proprietary rights in the word "fun" for candy, nor in the unquestionably descriptive word "size", it certainly cannot be entitled to monopolize the combination.
• 2, 3 It is a well established principle of trademark law that the manner in which the party claiming exclusive rights to a term utilizes it affects the existence of those rights. This principle was pointed out in a series of generic name cases which involved coined and fanciful marks of great value, which were nonetheless dedicated to competitive use because the marks had acquired a descriptive connotation to the public. Once a mark (no matter how many millions of dollars of investment it represents) becomes associated by the public as being descriptive of the goods to which the mark is affixed, trademark rights in the mark cannot be maintained, and the mark becomes public domain property.
In Bayer Co., Inc. v. United Drug Co., 272 F. 505, the registered trademark "aspirin" was invalidated because it had become merely a descriptive name of a particular pain reliever pill, and thus no longer protectable as a trademark. The test, as stated by Judge Learned Hand, was,
"What do the buyers understand by the word for whose use the parties are contending? If they understand by it only the kind of goods sold, then, I take it, it makes no difference whatever what efforts the plaintiff ...