Hamilton-Brown Shoe Co. v. Wolf Brothers & Co., 240 U.S. 251 (1916)
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Hamilton-Brown Shoe Co. v. Wolf Brothers & Company
No. 37
Argued October 28, 29, 1915
Decided February 21, 1916
240 U.S. 251
CERTIORARI TO THE CIRCUIT COURT OF APPEALS
FOR THE EIGHTH CIRCUIT
Syllabus
The words "The American Girl" as applied to women’s shoes is not a geographical or descriptive term signifying that the articles are manufactured in America, or intended to be sold therein; nor does it indicate qualities or characteristics of the article.
In this case, held that the term "American Girl" is a fanciful designation, arbitrarily selected by a concern manufacturing shoes to designate their product, and as such it is subject to appropriation as a trademark for that purpose.
The record in this case shows that the term "American Girl" was legitimately appropriated and used as a trademark by the complainant and those under whom it claims.
The jurisdiction of this Court to review judgments and decrees of the circuit courts of appeals on certiorari under § 240, Jud.Code, is to be exercised sparingly and only in cases of peculiar gravity and general importance and in order to secure uniformity of decision, and the refusal of the application is in no case equivalent to affirmance.
The fact that the decree sought to be reviewed is not a final one furnishes sufficient ground for refusing the petition.
On certiorari, this Court is called upon to notice and rectify any error that may have occurred in interlocutory proceedings, and is not bound to consider that an interlocutory decree settled the law of the case because it refused to review it on certiorari.
The right to use a trademark is property of which the owner is entitled to exclusive enjoyment to the extent that it has been actually used, and an infringer is required in equity to account for and yield up his gains to the true owner.
In this case, held that one using the label "American Lady" for shoes manufactured and sold by it infringed the rights of complainant as owner of the trademark "American Girl."
While the decree of the court below was based on profits gained by defendant in unfair competition by using an imitation of complainant’s label and not for infringement of trademark, as the proofs and findings were as applicable to a claim of compensation for infringing a trademark to which complainant is found entitled, the decree may be affirmed.
Where defendant is not an innocent infringer and an apportionment between profits attributable to infringing the trademark and those attributable to intrinsic merit of his own article is inherently impossible, complainant is not limited in his recovery to the former, nor is the burden on him to show what such portion of the profits was.
The owner of the trademark is on every principle of reason and justice entitled to so much of the profit as resulted from its use, and it is more consonant with reason and justice that he should have all the profit than that he should be deprived of any portion thereof by the fraudulent act of the infringer.
On matters of fact in estimating the profits to which complainant is entitled, there is no sufficient reason for disturbing the decree based on rulings of the master in this case.
206 F. 611 affirmed.
The facts, which involve rights of the owner of a trademark and the liability of one infringing it and other questions, are stated in the opinion.