## Facts

- Miller sold a reduced-calorie beer under the name “LITE” beginning in 1972 and spent substantial sums advertising it.
- Falstaff began bottling and shipping reduced-calorie beer labeled “Falstaff Lite” in July 1980.
- Miller sued under Lanham Act § 43(a) and unfair competition theories, alleging Falstaff’s use of “LITE” falsely designated origin and traded on Miller’s goodwill.
- In earlier litigation (1972–1978), courts had determined, after full litigation, that “lite” as applied to beer was a generic term for reduced-calorie beer and not capable of de jure secondary meaning as a source identifier.
- After an evidentiary hearing, the district court granted a preliminary injunction, finding Miller likely to prove consumers associated “LITE” with Miller and that “LITE” signified Miller’s product to the public.

## Issues

1. Whether collateral estoppel barred Miller from denying that “LITE,” when used for beer, is generic and not capable of de jure secondary meaning.
2. Whether Miller could show a likelihood of success on the merits for preliminary injunctive relief when prior judgments had classified “LITE” as generic for reduced-calorie beer.

## Decision

- The First Circuit reversed the preliminary injunction.
- The court held Miller was collaterally estopped from re-litigating that “LITE” is generic for reduced-calorie beer and not capable of de jure secondary meaning.
- Because Miller could not establish a protectable trademark interest in “LITE,” it could not demonstrate likelihood of success on the merits, making preliminary injunctive relief improper.

## Legal Principles

- Collateral estoppel precludes a party from re-litigating an issue of fact or law that was actually litigated, determined by a valid and final judgment, and essential to the prior judgment, when asserted against that party in a later action.
- A term adjudicated generic for a product category is not entitled to trademark protection for that category, and later evidence of advertising or consumer association does not confer de jure exclusivity in the generic term.
- A plaintiff seeking a preliminary injunction must show likelihood of success on the merits; inability to prove a protectable mark defeats that showing in a trademark-based § 43(a) claim premised on exclusive rights in the term.

## Conclusion

The court dissolved the injunction because prior final determinations that “LITE” is generic for reduced-calorie beer bound Miller, preventing it from claiming exclusive trademark rights and from establishing the merits necessary for preliminary injunctive relief.


Miller Brewing Co. v. Falstaff Brewing Corp., 655 F.2d 5 (1st Cir. 1981)