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Law School Case Brief

William R. Warner & Co. v. Eli Lilly & Co. - 265 U.S. 526, 44 S. Ct. 615 (1924)

Rule:

A name which is merely descriptive of the ingredients, qualities, or characteristics of an article of trade cannot be appropriated as a trademark and the exclusive use of it afforded legal protection.

Facts:

Respondent pharmaceutical company made and sold a liquid preparation of quinine, in combination with chocolate, under the name of Coco-Quinine. Petitioner pharmaceutical company began to sell a similar product called Quin-Coco. Respondent brought suit to enjoin petitioner's sale of the product, alleging infringement of its name and unfair competition. The court of appeals found no infringement, but found petitioner had engaged in unfair competition by inducing pharmacists to palm off its product as that of respondent. The court of appeals then imposed unconditional enjoinment as a penalty for respondent.

Issue:

  1. Did petitioner infringe respondent’s name by selling a similar product called Quin-Coco?
  2. Under the circumstances, did petitioner engage in unfair competition?
  3. Assuming that the petitioner engaged in unfair competition, was the penalty of unconditional enjoinment proper?

Answer:

1) No. 2) Yes. 3) No.

Conclusion:

The United States Supreme Court affirmed the finding that infringement was not sustained because the names of both parties' products were merely descriptive of the ingredients and because such names were incapable of trademark protection. Although the Court agreed that petitioner was guilty of unfair competition based on attempts to induce pharmacists to palm off its products, the Court reversed the unconditional enjoinment as going too far and directed on remand that the decree should require petitioner to clearly distinguish its product from that of respondent on its label. The labels were to also affirmatively state that its product was not to be sold or dispensed as respondent's product or to be used in filling prescriptions calling for respondent's product.

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