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Keywords

plaintiffdefendantequityinjunctiontrademarkcase law
plaintiffdefendantwilltrademark

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Lea v. Deakin, 11 Biss. 23, 18 Am. Law Reg. (N.S.) 322, 15 F.Cas. 95, 11 Chi.Leg.N. 152, No. 8154, 7 Rep. 261

Facts

Charles W. Lea and others filed a bill in equity against Frank Deakin for the infringement of an alleged trademark concerning 'Worcestershire Sauce.' The term has become generic and cannot be exclusively claimed by the plaintiffs, who are manufacturers in Worcestershire, England. The defendant, residing in Wisconsin, sells a similar sauce called 'Improved Worcestershire Sauce' and acts as an agent for its manufacturer. A previous decree in England dismissed the plaintiffs' request for an injunction against the same subject matter, establishing a bar to their current suit.

Issue

Whether the term 'Worcestershire Sauce' can be exclusively appropriated as a trademark by the plaintiffs.

Whether the term 'Worcestershire Sauce' can be exclusively appropriated as a trademark by the plaintiffs.

Rule

A name that has become generic in meaning cannot be appropriated as a trademark. This principle is supported by various case law, indicating that terms widely used in commerce cannot be claimed by a single entity as their exclusive trademark.

A name which has become generic in meaning cannot be appropriated as a trade-mark.

Analysis

The court analyzed the evidence showing that 'Worcestershire Sauce' is a generic term used for a type of sauce, not limited to the plaintiffs' product. The plaintiffs had previously sought an injunction in England regarding the same trademark issue, which was denied, indicating that they had acquiesced to the term's generic use. The court concluded that allowing the plaintiffs to claim exclusive rights would contradict the earlier ruling and create an anomaly in trademark enforcement.

Conclusion

The court dismissed the bill, ruling that the plaintiffs could not claim exclusive rights to the term 'Worcestershire Sauce' as it is generic.

The result will be, therefore, that the bill will be dismissed.

Who won?

Frank Deakin prevailed in this case as the court found that the term 'Worcestershire Sauce' is generic and cannot be exclusively appropriated by the plaintiffs. The court emphasized that the plaintiffs had previously lost a similar case in England, which barred them from pursuing this action in the United States. The ruling reinforced the principle that generic terms cannot be trademarked, thus allowing Deakin to continue selling the sauce without infringement.

Deakin, the defendant here, has acted for Millar, the defendant in that case. It would be an anomaly if it were true that Millar could manufacture and sell his sauce in England, and at the same time Deakin, who sells it here, and obtains it from him, could be restrained here at the instance of the plaintiffs from selling it.

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