Union Carbide Corporation v. Ever-Ready Incorporated, a Corporation, and Mark Gilbert, an Individual

Union Carbide Corporation brought this action against Ever-Ready Incorporated 1 alleging trademark infringement and unfair competition. 2 In issue on this appeal are 1) whether the district court erred in declaring Carbide’s trademark, EVEREADY, invalid; 2) whether the district court erred in finding that defendants’ use of Ever-Ready on electrical products was not likely to cause confusion; and 3) whether the district court erred in holding that defendants’ use of Ever-Ready does not constitute unfair competition or dilution under Illinois statutes. In the district court Ever-Ready raised the affirmative defenses of laches and misuse of trademark in violation of the antitrust laws. Prior to trial the antitrust issues were severed for separate trial pursuant to Fed.R.Civ.P. 42(b) and are not involved in this appeal.

In 1898 plaintiff’s predecessor, American Electrical Novelty & Manufacturing Company, adopted the term EVER READY to distinguish its products. In 1901 the mark was changed to EVEREADY. In 1909 the company changed its name to American Ever Ready Company, and in 1914 it assigned all its assets to the National Carbon Company, Carbide’s predecessor.

Currently plaintiff sells under its trademark, EVEREADY, alone or in combination with other words and designs, an extensive line of electric batteries, flashlights, and miniature bulbs for automobile and marine use. Carbide presently is the owner of five United States trademark registrations on its trademark, EVEREADY, alone, and with other words and distinctive designs. Affidavits have been filed pursuant to 15 U.S.C. §§ 1058 (for continued validity) and 1065 (for incontestability). Carbide has advertised these products extensively and since 1966 has had sales of its EVEREADY products in excess of one hundred million dollars per year. From October 1965 through July 1967 Carbide sold certain bulbs under its EVEREADY mark in blister packages which indicated that they were for high-intensity reading lamps. Carbide has continued to sell identical bulbs packaged for automotive and other uses.

In 1944 defendant Mark Gilbert began business as Ever-Ready Fluorescent Company and still continues to conduct a fluorescent light maintenance service. In 1946 a new company was formed to import and distribute electrical supplies, stationery, gift items, and accessories, including lamps, light bulbs, light fixtures, and flashlights. After several changes of form and name, *371 this company became the defendant, EverReady Incorporated. The products listed above are primarily distributed under names other than Ever-Ready, although Ever-Ready’s promotional material, which is distributed within the trade, contains its corporate logo.

In 1969 defendants commenced importing miniature lamp bulbs having the term Ever-Ready stamped on their bases and selling these bulbs in blister packages containing the term Ever-Ready in a four-sided logo and indicating that they are for high-intensity lamps. Ever-Ready also imports the high-intensity lamps with Ever-Ready stamped on them or on labels attached to them. The literature accompanying the lamps also contains the logo. The name of the manufacturer is also indicated on the lamps.

Carbide sought an injunction against Ever-Ready’s use of the term Ever-Ready on or in connection with the advertising or sale of electrical products. Carbide also requested that Ever-Ready be required to deliver up to it all material containing the allegedly infringing marks. No damages were sought. The district court found no infringement, no dilution under Illinois law, no unfair competition, and declared Carbide’s mark, EVEREADY, invalid. 3 This appeal followed.

I. Validity of Plaintiff’s Trademark

A. Validity is in Issue

Plaintiff argues that the validity of its mark was not in issue before the trial court and that it was improper for the trial court to address the issue in its opinion. Plaintiff relies on a stipulation entered before trial which stated that plaintiff’s registrations were in full force; on the statement of issues, which were part of the pretrial order; and on defendants’ proposed findings of facts and conclusions of law, which contained no finding of invalidity.

The stipulation is of little help to plaintiff. That a registration is in force is not necessarily inconsistent with the invalidity of a trademark, for example, where the trademark has become a generic term. At most the stipulation is ambiguous. We are, however, troubled by the failure to include the question of validity in the statement of issues in the pretrial order. Invalidity is, of course, a defense to an infringement action. If the defendants wished to rely on it, it should have been a part of the statement of issues. On the other hand, remarks during trial, at least by defendants’ counsel, indicate that validity, was in issue. The trial judge concluded that it was in issue.

Having carefully considered these factors, we conclude that we must face the issue of invalidity. Plaintiff may or may not have been prejudiced before the district court if counsel did not adequately brief or argue the validity of the trademark because he did not view it as in issue; nevertheless, counsel has not shown this court that it was prejudiced because evidence was not introduced which would have been had counsel believed validity was in issue. The legal issues have been fully briefed before this court.

B. Effect of Incontestability

A mark may become “incontestable” if the requirements of 15 U.S.C. § 1065 are met. 4 Defendant does not dispute that Car *372 bide has complied with the requirements of § 1065 on incontestability but disputes the effect and scope of that achievement. Section 1115 prescribes the effects of registration and incontestability in an infringement action. It provides in relevant part:

“(a) Any registration ... of a mark registered on the principal register provided by this chapter and owned by a party to an action shall be admissible in evidence and 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.

“(b) If the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the affidavit filed under the provisions of said section 1065 subject to any conditions or limitations stated therein except when one of the following defenses or defects is established . . ..”

Seven defenses then follow, but none are relevant in this appeal. 5

*373 It is not disputed that the prima facie presumption of § 1115(a) may be used in an infringement action. Contrary to defendants’ assertions, nothing in the statute indicates that the conclusive evidence rule of § 1115(b) cannot be used similarly. Three of the defenses enumerated in the section clearly contemplate the use of incontestability in infringement actions by plaintiffs. Subsections 1115(b)(4), 1115(b)(5), and 1115(b)(6) describe situations where a plaintiff’s mark shall not be conclusive evidence in infringement actions. This implies that in other situations, assuming none of the other enumerated defenses are applicable, incontestability may be used by a plaintiff in establishing his case. Nevertheless, courts have not given the section uniform treatment. Opinions range from strict to liberal.

Defendants argue that incontestability is a narrow defensive device which cannot be used offensively by a plaintiff in an infringement action. Certainly no such limitation is expressed in the statute, but there is a line of cases which provides support for defendants’ position. John Morrell & Co. v. Reliable Packing Co., 295 F.2d 314 (7th Cir. 1961), is procedurally similar to the present case. In Morrell, plaintiff, owner of an incontestable registration, sued for statutory trademark infringement, unfair competition, and dilution under an Illinois statute. The essence of the court’s holding was that plaintiff had failed to sustain its burden to show a likelihood of confusion between its mark, “E-Z Cut,” and defendant’s, “Easy-Carve.” In reaching this conclusion the court relied on the parties’ practices of using these marks in connection with their names (Morrell E-Z Cut and Thompson Farms Brand Easy Carve). Plaintiff had apparently argued that the court could not consider this because its mark was incontestable. The district court did not limit its discussion to holding that confusion was not likely, but cited language in Rand McNally & Co. v. Christmas Club, 105 U.S.P.Q. 499 (Comm. of Pat. 1955), aff’d, 242 F.2d 776, 44 CCPA 861 (1957), which indicated that incontestability has a defensive, not an offensive, effect and that when a mark becomes incontestable, the owner’s rights in the mark are not broadened. We note that in Morrell the court did not declare the plaintiff’s mark invalid.

The language cited was clearly dicta in Rand McNally. In issue in the case was whether the mark, “Christmas Club” was descriptive when used as the title of defendant’s magazine. Plaintiff indicated that he brought the petition to cancel the registration so that it could not become incontestable and prevent him from using the same words in connection with a savings plan as he had been doing. The assistant commissioner who wrote the patent office opinion indicated, in the language cited by the Morrell panel, that the plaintiff’s fears were unfounded. By the defensive/offensive language he apparently was attempting to state in another way that incontestability would not enable the defendant to extend his mark more broadly than he could prior to incontestability. The assistant commissioner went on to hold that the mark as used was valid. The Court of Customs and Patent Appeals affirmed without reference to the dicta regarding incontestability.

The defensive/offensive language cited in Morrell has caused much confusion regarding the effect of incontestability. In Tillamook County Creamery Association v. Tillamook Cheese and Dairy Association, 345 F.2d 158 (9th Cir. 1965), cert. denied, 382 U.S. 903, 86 S.Ct. 239, 15 L.Ed.2d 157, an infringement action, the court introduced a discussion of incontestability with the statement: “Without basing any special argument thereon or seeming to attach significance to it, the appellant suggests that . it had obtained incontestability of that registration.” (Footnote omitted.) Id. at 163. It then held that the appellant properly refrained from arguing incontestability because of the defensive/offensive distinction. Citing Morrell it further stated:

“If plaintiff has attained incontestability of its mark, its registration could not be cancelled by a proceeding to cancel the same. But this does not aid the plaintiff *374 in any claim that it has an exclusive right to the name or mark or that it may rely on the same as a basis for an injunction against the defendant.” Id.

Regardless of the reason plaintiff did not argue incontestability, it appears on the facts found by the court that plaintiff’s mark was not incontestable with respect to the defendant. The court found that the defendant’s predecessor had acquired the right to use the mark in question prior to plaintiff’s use and that it had not been abandoned. Section 1065 provides that a mark does not become incontestable “to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of the publication under this chapter of such registered mark.” 15 U.S.C. § 1065. 6 Thus, plaintiff had no right to rely on incontestability. Also, the court noted that the geographic location defense might be available to the defendant.

A second problem arises from the court’s statement in Tillamook regarding incontestability preventing cancellation of plaintiff’s registration.' This problem is presented in clearer focus in the recent Eighth Circuit decision of Wrist-Rocket Manufacturing Co., Inc. v. Saunders Archery Co., 516 F.2d 846 (8th Cir. 1975), cert. denied, 423 U.S. 870, 96 S.Ct. 134, 46 L.Ed.2d 100. The lower court in Wrist-Rocket held that plaintiff’s action for trademark infringement, which was based on an incontestable mark, had not been sustained by the evidence; that the defendant was the common law owner of the mark because he had first used it prior to plaintiff’s registration; and that plaintiff’s registration should be can-celled and he be permanently enjoined from using the mark.

The Eighth Circuit first held incontestability was “not a sword” on which plaintiff could rely to establish his exclusive right to use the mark citing, inter alia, Tillamook. It upheld the district court in its finding that defendant had a common law right to use the trademark, but held that the right was not exclusive.

The court then considered the district court’s order cancelling plaintiff’s mark and injunction against its future use. It held these actions were improper. The district court had held that plaintiff’s mark was unprotected because a mark cannot become incontestable against a user’s prior rights established under state law. This exception to § 1065 was quoted, supra, in discussing Tillamook. The Eighth Circuit held the district court’s application of this section was improper because “[ijncontestability is . a shield that protects the registrant from cancellation of his trademark by a prior user claiming superior rights.” 516 F.2d at 851. At first glance this statement appears in conflict with the exception in § 1065. The language is perhaps unfortunate. As authority for this statement the court relied, inter alia, on Tillamook, Morrell, and 4 Callman, Unfair Competition, Trademarks and Monopolies, § 97.3(c)(1) (3d ed. 1970) at 599. Callman discusses incontestability of registration and incontestability of use. Section 1065 is entitled “Incontestability of right to use mark under certain conditions.” Compliance with § 1065 entitles a registration to conclusive evidentiary weight under § 1115(b). Portions of § 1064 indicate that after five years a registration may only be cancelled for specified reasons. Callman refers to these portions of § 1064 as the “incontestability of registration” provisions. The statute does not use this terminology. Section 1064, not incontestability under § 1065, “protects the registrant from cancellation of his trademark by a prior user claiming superior rights” because prior use is not a ground for cancellation under § 1064. Section 1064’s *375 protection is broader than the incontestability rights under § 1065. Also, five years of use after registration entitles a registrant to protection under § 1064 whereas an affidavit must be filed to achieve incontestability under § 1065. References to the protection accorded registrations under § 1064 by the term “incontestability” causes confusion and should be avoided even though the sections were enacted at the same time and complement each other.

Other cases which have drawn the defensive/offensive distinction are: Schwinn Bicycle Company v. Murray Ohio Manufacturing Co., 339 F.Supp. 973 (M.D. Tenn.1971) (relying on Tillamook and Morrell), aff’d per curiam on other grounds, 470 F.2d 975 (6th Cir. 1972); Haviland & Co. v. Johann Haviland China Corporation, 269 F.Supp. 928 (S.D.N.Y.1967) (relying on Tillamook and Morrell); Electrical Information Publications v. C-M Periodicals, Inc., 163 U.S.P.Q. 624 (N.D.Ill.1969).

Defendants also rely on several cases which they assert stand for the general proposition that descriptiveness of a plaintiff’s mark may be raised as a defense in any infringement action. There is no indication in G. Lablanc Corporation v. H. & A. Selmer Inc., 310 F.2d 449 (7th Cir. 1962), cert. denied, 373 U.S. 910, 83 S.Ct. 1299, 10 L.Ed.2d 412 (1963), that the mark involved was incontestable, notwithstanding defendants’ indication to the contrary, or that this court considered that issue. In Jean Patou, Inc. v. Jacqueline Cochran, Inc., 201 F.Supp. 861 (S.D.N.Y.1962), aff’d 312 F.2d 125 (2d Cir. 1963), the district court mentioned incontestability, discussed the descriptive nature of plaintiff’s mark, then assumed the mark’s validity and held there was no infringement because defendant was using the word “Joy,” plaintiff’s mark, in a descriptive sense. Though the court did not cite § 1115(b)(4), we note that under it defendant’s use of the alleged infringing term in a descriptive sense is a defense to incontestability. The Second Circuit specifically declined to review the propriety of other findings of the district court; noted that since plaintiff’s mark was incontestable, the primary issue between the parties was whether the defendant’s use was likely to deceive or cause confusion or mistake; and held that the district court was not clearly erroneous in finding there was no likelihood of confusion. Thus, Patou is of little help to defendants; indeed, if it is relevant at all, the Second Circuit opinion lends support to plaintiff’s position. Finally, we must consider Flavor Corporation of America v. Kemin Industries, Inc., 493 F.2d 275 (8th Cir. 1974).

In Flavor Corporation the Eighth Circuit interpreted the incontestability provisions in relation to descriptiveness in an apparently unique manner. The court first declined to resolve the controversy over the precise effect of incontestable status. It held that a mark registered under § 1052(f) 7 could not become incontestable because of § 1065(4). Section 1065(4) provides: “[N]o incontestable right shall be acquired in a mark which is the common descriptive name of any article or substance, patented or otherwise.” Section 1052(f) permits the registration of marks which might be characterized as “merely descriptive” if the mark has become “distinctive of the applicant’s goods in commerce.” 15 U.S.C. §§ 1052(e), 1052(f). If a mark is the common descriptive name of an item, it does not qualify for registration under § 1052(f). If a mark becomes the common descriptive name of an item, it may be cancelled at any time and incontestability would be of no effect even if subsection (4) had not been enacted. 15 U.S.C. §§ 1064(c), 1065. Subsection (4) was added *376 to the act by the conference committee without explanation, and it is doubtful whether the provision does more than clarify what is already in the act. D. Robert, The New Trade-Mark Manual 138 (1947). In effect the Eighth Circuit has equated a mark that is descriptive, but distinctive of registrant’s goods, with one that is the common descriptive name of an item. We do not believe this was the intention of Congress and decline to follow Flavor Corporation on this point. We note that this aspect of the case has received substantial criticism from commentators. W. Derenberg, The Twenty-Seventh Year of Administration of the Lanham Trademark Act of 1946, 64 Trade-Mark Rep. 339, 419 (1974); A. Fletcher, The Pestlur Case — Collateral Estoppel Effect of CCPA and TTAB Decisions — Actual Confusion as to Incontestability of Descriptive Marks, 64 Trade-Mark Rep. 252, 257 (1974).

Trademark statutes prior to the Lanham Act treated the substantive law of trademarks as primarily a state law matter. In enacting the Lanham Act Congress intended to unify trademark law on a national basis. The Senate Committee Report on the Act stated:

“There can be no doubt under the recent decisions of the Supreme Court of the constitutionality of a national act giving substantive as distinguished from merely procedural rights in trade-marks in commerce over which Congress has plenary power ... a sound public policy requires that trade-marks should receive nationally the greatest protection that can be given.” Sen.Rep.No.1333, 79th Cong., 2d Sess. (1946), U.S.Code Cong.Serv.1946, p. 1277, reprinted in Robert, supra at 265, 269 (1947).

Callman indicates that the incontestability clauses are one of the most significant innovations in the Lanham Act and that they had a “vital effect upon the substantive law of trademarks.” 4 Callman, supra § 93.-3(c)(1) at 598-99 (3d ed. 1970). In evaluating the incontestability clauses analytically, Callman states:

“It would seem self-evident that there is no distinction between an incontestable, exclusive right and a property right, so that, in effect the Lanham Act implicitly demonstrates Congressional willingness to recognize the trademark as a property right. The exceptions to which this clause is subjected do not detract from this highly salutary result. They are nothing more than the usual limitations imposed upon every property right — the existence of its material foundation and the legality of its use.” (Footnotes omitted.) Id. at 601.

Although Callman indicates that incontestability may lead to misuse “unless the incontestability privilege is counterbalanced or neutralized by judicial efforts to restrict the scope of protection accorded to marks that consist primarily of descriptive or otherwise defective matter,” id., and although he states the defensive/offensive rule, citing the Morrell line of cases, id. at 599, he also states: “When the right to use has become incontestable, the right to sue others for infringement is then fortified by a certificate of registration which is, under section 33(b) [15 U.S.C. § 1115(b)], conclusive evidence of the registrant’s exclusive right to use the mark.” (Footnotes omitted.) Id. § 97.3(c)(3) at 605.

The most recent expression of this court on the effect of incontestability appears in Burger King of Florida, Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968). The case involved cross suits for infringement for use of the name Burger King. Plaintiff’s mark was incontestable. This court held that the incontestability of plaintiff’s mark established conclusively plaintiff’s exclusive right to use the mark. The defendant was allowed to continue to use the mark in a narrow geographic area because of its prior use in that area, a defense to incontestability under the statute. The panel was clearly aware of Morrell because it cited it on another point, and we note that, notwithstanding the defensive/offensive language in Morrell, not every court has viewed the case as holding that a plaintiff may not rely on incontestability in an infringement action.

*377 In Jockey International, Inc. v. Burkard, 185 U.S.P.Q. 201 (S.D.Calif.1975), the court held that the defendants in the suit for infringement could not raise any defense or defect not enumerated in § 1115(b) because plaintiff’s mark had become incontestable. The court cited, inter alia, Morrell in support of this proposition. The Fifth Circuit clearly allows the use of incontestability in infringement actions. In John R. Thompson Co. v. Holloway, 366 F.2d 108 (5th Cir. 1966), the court stated that although plaintiff’s mark should have been refused registration if primarily a surname, this could not be raised as a defense because it was not one of the defenses enumerated under § 1115(b). Although Rand McNally & Co. v. Christmas Club, supra, is the apparent source of the defensive/offensive distinction, today the patent office appeals board apparently does not follow it. In Seiler’s Inc. v. Hickory Valley Farm Inc., 139 U.S. P.Q. 460 (T.T.A.B.1963), it sustained an opposition brought by the holder of an incontestable mark on the grounds that its incontestable registration was conclusive of its exclusive right to use the mark.

In light of this authority, we hold that a plaintiff in an infringement action establishes conclusively, under § 1115(b), his exclusive right to use a trademark to the extent he shows his trademark has become incontestable under § 1065. Incontestability does not broaden a trademark in the sense that it allows a registrant to claim rights over a greater range of products than he would otherwise be entitled to claim; but once incontestability is established, registrant’s mark is immune from challenge on any grounds not enumerated in § 1115(b). There is no defensive/offensive distinction in the statute, and we do not believe one should be judicially engrafted on to it. To the extent that Morrell holds that a plaintiff may not use the conclusive evidence rule of § 1115(b) in an infringement action and to the extent such a holding has not been overruled sub silentio by Burger King, we overrule it now. As stated earlier, it is not altogether clear that this is the holding of Morrell, but it has been so interpreted by other courts, including district courts within this circuit. J. McCarthy, Trademarks and Unfair Competition, § 11:17 (1973), summarizes the effect of incontestability in cases such as the present one:

“But if a mark has become ‘incontestable’ . then lack of distinctiveness of such a mark cannot be raised in litigation. That is, it is conclusively presumed either that the mark is non-descriptive, or if so, has acquired secondary meaning. Defendant faced with an incontestable registered mark cannot defend by claiming that the mark is invalid because it is descriptive.”

The district court in this case failed to consider incontestability. Plainly it was improper for the court to declare plaintiff’s mark invalid even though it did not order the registration cancelled. This would be true even if the defensive/offensive distinction were viable. Plaintiff has established incontestability under § 1065, and defendants in the present appeal have not shown that any of the first six defenses enumerated in § 1115(b) are available to them. These findings establish the validity of plaintiff’s mark and would be sufficient for us to proceed immediately to consider the district court’s conclusions regarding likelihood of confusion. However, even if we were to assume arguendo that the incontestability status of the plaintiff’s mark did not preclude attack by the defendant on validity in the present litigation, we would reach the same result with regard to the mark involved. Because of what we view as serious misconceptions of the law of this circuit in the district court opinion, we deem it advisable to address the merits issue as an alternative ground supporting the validity of the EVEREADY marks. 8

*378 C. Merits of Carbide’s Trademark

1. Descriptiveness

In discussing the validity of the EVEREADY mark, the district court noted that the registration of a mark is “ ‘prima facie evidence’ of (1) the validity of the registration, (2) the registrant’s ownership of the mark and (3) the registrant’s exclusive right to use the mark in commerce under the specified conditions and limitations of the registration.” 392 F.Supp. at 285. Section 1115(a), regarding remedies such as actions for infringement, provides that a registration is admissible into evidence to establish registrant’s rights on a prima facie basis but that an opposing party may prove any legal or equitable defense or defect which might have been asserted if the mark had not been registered. This is in contrast to a mark which has attained incontestable status, discussed supra.

A mark which is “merely descriptive” may not be registered, and a holding that Carbide’s mark was merely descriptive would defeat its action for infringement. 15 U.S.C. § 1052. Nevertheless, since the patent office allowed the EVEREADY mark to be registered and proof of distinctiveness under § 1052(f) was not required, it must have concluded that the mark was not “merely descriptive.” This essential premise must be considered prima facie correct by a court in considering the validity of a trademark, or the prima facie evidence rule would be rendered ineffective. It is unclear whether the district court accorded any weight to the patent office’s conclusion that the EVEREADY mark was not descriptive.

Defendants rely on a statement in John Morrell & Co. v. Reliable Packing Co., supra: “[W]here descriptive words are used in the trademark, the assumption of validity can be easily overcome.” 295 F.2d at 316. This statement was made in describing the holding in Wilhartz v. Turco Products, Inc., 164 F.2d 731 (7th Cir. 1947). In Wilhartz this court held that under the circumstances of that particular case, the presumption of validity was easily overcome. The circumstances were that the mark, “Auto Shampoo,” had been refused registration twice and then registration was finally allowed after the representations that “Auto” suggested instantaneous action while “Shampoo” as used suggested foaming, bubbling action as a result of the application by a spray mechanism. The court found these representations were a hoax in light of testimony by the vice-president of the company that he had never heard of such claims until the trial and that the product could be used just as effectively without the spray mechanism. The statement in Morrell is not inaccurate, but it is perhaps unfortunate because it has caused some to overlook the necessity of according prima facie weight to the patent office’s conclusion that particular words as applied to a particular product are not descriptive.

The district court concluded that “Carbide’s mark EVEREADY is descriptive and within the purview of § 2(e) of the Lanham Act. 15 U.S.C. § 1052(e).” 392 F.Supp. at 288. In light of the statutory reference we shall treat this finding as being that the mark is merely descriptive. But see Ex Parte Heatube Corporation, 109 U.S.P.Q. 423, 424 (Comm. of Pat. 1956).

A mark is invalid if it is merely descriptive of the ingredients, qualities, or characteristics of an article of trade. Warner & Co. v. Lilly & Co., 265 U.S. 526, 528, 44 S.Ct. 615, 68 L.Ed. 1161 (1924). Suggestive marks, however, have long been distinguished from descriptive ones. Watkins Products, Inc. v. Sunway Fruit Products, Inc., 311 F.2d 496 (7th Cir. 1962), cert. denied, 373 U.S. 904, 83 S.Ct. 1291, 10 L.Ed.2d 199 (1963); Independent Nail & Packing Co., Inc. v. Stronghold Screw Products, Inc., 205 F.2d 921 (7th Cir. 1953), cert. denied, 346 U.S. 886, 74 S.Ct. 138, 98 L.Ed. 391; Restatement of the Law of Torts § 721 Comment (a) (1938). They may be thought of as a middle ground between arbitrary or fanciful names and descriptive names. E. g. General Shoe Corporation v. Rosen, 111 *379 F.2d 95, 98 (4th Cir. 1940). The line between descriptive and suggestive marks is scarcely “pikestaff plain.” Various tests have been used by courts to make the distinction. The district court, citing General Shoe Corporation v. Rosen, supra; W. G. Reardon Laboratories, Inc. v. B & B Exterminators, 71 F.2d 515 (4th Cir. 1934); and Stewart Paint Manufacturing Co. v. United Hardware Distributing Co., 253 F.2d 568 (8th Cir. 1958), stated:

“Suggestive terms ‘suggest’, but do not describe the qualities of a particular product. The distinction threatens to be one without a difference. Essentially, however, the common and ordinary meaning of the term to the public and the incongruous use of it as it relates to the product determine whether a term is suggestive.” 392 F.Supp. at 286.

Another test which has been used and which was footnoted by the district court is whether competitors would be likely to need the terms used in the trademark in describing their products. See McCarthy, supra, § 11:21 at 391-92 (1973); Restatement of the Law of Torts § 721 Comment (a) (1938).

This court has not adopted a particular test for distinguishing between suggestive and descriptive marks. We disagree with the district court that it is a distinction without a difference, although it is often a difficult distinction to draw and is, undoubtedly, often made on an intuitive basis rather than as the result of a logical analysis susceptible of articulation. This only emphasizes the need to give due respect to the determinations of the patent office if the distinction is to be drawn in a consistent manner. Perhaps the best statement of the distinction appears in A. Seidel, S. Dalroff, and E. Gonda, Trademark Law and Practice § 4.06 at 77 (1963):

“Generally speaking, if the mark imparts information directly, it is descriptive. If it stands for an idea which requires some operation of the imagination to connect it with the goods, it is suggestive.”

The information imparted may concern a characteristic, quality, or ingredient of the product. We do not believe this conflicts with this court’s holding in Independent Nail & Packing Co., Inc. v. Stronghold Screw Products, Inc., supra, even though some language in the opinion arguably indicates the contrary. Incongruity is not essential for a mark to be suggestive, rather than descriptive; but incongruity is a strong indication of non-descriptiveness, and it is probably the unusual case where a mark will be suggestive but not descriptive where there is no incongruity. The more imagination that is required to associate a mark with a product the less likely the words used will be needed by competitors to describe their products.

In analyzing Carbide’s mark, the district court noted the dictionary definitions of “ever” and “ready” and concluded: “Thus, the combination of ‘ever’ and ‘ready’ means constantly prepared or available for service.” Dissecting marks often leads to error. Words which could not individually become a trademark may become one when taken together. E. g., Application of Standard Elektrik, 371 F.2d 870, 54 CCPA 1043 (1967); Food Fair Stores, Inc. v. Food Fair, Inc., 177 F.2d 177 (1st Cir. 1949).

Were we considering de novo whether EVEREADY was descriptive, we might reach a different conclusion than the district court, but it is our opinion that the issue is close. In Independent Nail & Packing Co., Inc. v. Stronghold Screw Products, Inc., supra, this court indicated it considered “Holeproof” as applied to stockings suggestive. The statement was made with reference to Holeproof Hosiery Co. v. Wallach Bros., 172 F. 859 (2d Cir. 1909), although the court in that case did not pause to consider whether the mark was descriptive or suggestive but held that the mark had an established secondary meaning. The court in Holeproof Hosiery also discussed whether the mark was false and misleading. It held that no one would be misled because no one would be fatuous enough to believe the socks would never wear out. The mark EVEREADY is close *380 ly analogous as applied to batteries. It suggests the quality of long life, but no one in our society would be deceived into thinking that this type of battery would never wear out or that its shelf life was infinite. There is less incongruity with regard to flashlight bodies. Nevertheless, we need not decide whether the mark’s reference is too direct for the mark to be considered nondescriptive or whether the district court’s holding to that effect should be overruled because of what we consider overwhelming evidence in the record of secondary meaning.

2. Secondary Meaning

Secondary meaning need only be shown if a mark sought to be registered or sustained is found to be or is conceded to be descriptive. Watkins Products, Inc. v. Sunway Fruit Products, Inc., supra.

For purposes of this section we will assume arguendo the correctness of the finding of the district court that Carbide’s mark is descriptive.

The history and policy behind the secondary meaning doctrine was well stated in G & C Merriam Co. v. Saalfield, 198 F. 369 (6th Cir. 1912), cert. denied, 243 U.S. 651, 37 S.Ct. 478, 61 L.Ed. 947 (1917):

“It contemplates that a word or phrase originally, and in that sense primarily, incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase had come to mean that the article was his product; in other words, had come to be, to them, his trade-mark. So it was said that the word had come to have a secondary meaning, although this phrase, ‘secondary meaning,’ seems not happily chosen, because, in the limited field, this new meaning is primary rather than secondary; that is to say, it is, in that field, the natural meaning.” Id. at 373.