Shoe Company v. Wolf Brothers Company

• Decision Date: 21 February 1916
• Docket Number: HAMILTON-BROWN,No. 37,37
• Citation: 36 S.Ct. 269,60 L.Ed. 629,240 U.S. 251
• Parties: SHOE COMPANY, Petitioner, v. WOLF BROTHERS & COMPANY
• Court: U.S. Supreme Court

240 U.S. 251

36 S.Ct. 269

60 L.Ed. 629

HAMILTON-BROWN SHOE COMPANY, Petitioner,

v WOLF BROTHERS & COMPANY.

No. 37.

Argued October 28 and 29, 1915.

Decided February 21, 1916.

[Syllabus from pages 251-253 intentionally omitted] Messrs. Luke E. Hart, Joseph W. Bailey, H. S. Priest, Morton Jourdan, and Charles B. Howry for petitioner.

Messrs. Lawrence Maxwell, Simeon M. Johnson, and Percy Werner for respondent.

Mr. Justice Pitney delivered the opinion of the court:

Respondent, an Ohio corporation engaged in the manufacture of shoes, filed its bill of complaint on January 29, 1906, in the circuit court of the United States for the eastern district of Missouri, eastern division, against petitioner, a Missouri corporation engaged in the same business, seeking an injunction to restrain infringement of an alleged trademark for shoes consisting of the words 'The American Girl,' by the use of the words 'American Lady' as a colorable imitation, and also unfair competition in trade, carried on by means that included the use of the latter words; and praying an accounting of damages and profits. On final hearing the circuit court dismissed the bill. Upon appeal, the circuit court of appeals (91 C. C. A. 363, 165 Fed. 413) held that 'The American Girl' was a geographical name, and, as applied to women's shoes, was descriptive merely of shoes manufactured in America and to be worn by women, and not an arbitrary or fanciful name to indicate the maker, and hence that the term as applied to shoes was not the subject of a valid trademark. But the court held that complainant was entitled to be protected against unfair trade; that the record disclosed that it and its predecessors in business had employed the words 'The American Girl' as a trademark continuously since the year 1896, had extensively advertised their shoes under that name, with the catch phrase 'A shoe as good as its name,' in trade journals and newspapers throughout the United States, and largely throughout the southern states, and thus established an extensive trade therefor; and that defendant, by adopting in the year 1900 and thereafter using the name 'The American Lady,' with certain catch phrases, in connection with shoes made by it, and this with full knowledge of complainant's rights, was guilty of unfair competition, tending to and resulting in confusion in the trade, and that complainant was entitled to relief. The decree of the circuit court was therefore reversed, with directions to decree an injunction and an accounting limited to the time since the commencement of the suit.

Complainant petitioned this court for a writ of certiorari to review that decision, but this was denied. 214 U. S. 514, 53 L. ed. 1063, 29 Sup. Ct. Rep. 696.

Thereafter the circuit court, pursuant to the mandate of the court of appeals, made a decree granting an injunction in accordance with the opinion of that court, and referring to a master an accounting of the damages and profits for which defendant might be liable, 'limited to shoes sold by the defendant since the filing of the bill in this case, and which were marked with the name 'American Lady,' and not accompanied with any other matter clearly indicating that such shoes were of the manufacture of the Hamilton-Brown Shoe Company.' An accounting was had, extending from the date of the commencement of the suit to March 10, 1910. Complainant made no attempt to introduce substantial proof as to the amount of its damages, declaring that they were practically incapable of exact computation. All the testimony was directed to the question of defendant's profits.

The master reported that during the period covered by the accounting defendant sold 'American Lady' shoes, which, because of differences in marking, he divided into three classes:

Class 1. 974,016 pairs of shoes bearing the words 'American Lady' stamped upon the sole, and bearing no other impression or distinguishing mark. The profits upon these were found to be $254,401.72.

Class 2. 961,607 pairs of shoes marked 'American Lady,' with the words 'Hamilton-Brown Shoe Co.,' but without the word 'Makers,' or other matter indicating that the shoes were of defendant's manufacture. The profits upon these were found to be $190,909.83.

Class 3. 593,872 pairs of shoes marked 'American Lady,' but bearing also the marks 'Hamilton-Brown Shoe Co., Makers.' The profits upon these were found to be $132,740.77.

The master recommended that a judgment be entered for the profits accruing from the first two classes, aggregating $445,311.55. The profits accruing from the third class he held complainant was not entitled to recover under the opinion of the court of appeals and the decree of the circuit court, entered in accordance with it. Both parties having filed exceptions, the district court (successor of the circuit court), overruled those of complainant, sustained those of defendant, and adjudged a recovery of $1 nominal damages. 192 Fed. 930.

Complainant appealed to the circuit court of appeals, contending that a decree should have been rendered in its favor for the profits upon the first two classes of shoes, in accordance with the master's recommendation, and that it should have included the profits upon the third class, which were denied by the master. The court of appeals reversed the decree, with directions that defendant's exceptions to the master's report be overruled, that the report be confirmed, and that a decree be entered against defendant for the amount recommended by him, with costs, 124 C. C. A. 409, 206 Fed. 611.

This writ of certiorari having been allowed, we proceed to deal with the questions presented by the record.

Regarding the case as one of unfair competition without trademark infringement, it is insisted by petitioner that the normal recovery does not include the gains and profits of defendant, according to the rule admittedly applicable in equity to trademark cases, but that the injured party is limited to such damages as it shows it has sustained; and that the present case is devoid of circumstances to take it out of the ordinary rule.

If, however, complainant was and is entitled to the use of the words 'The American Girl' as a trademark, in the strict sense of the term, and if the proofs adduced before the master, and his findings thereon, are as applicable to a claim of compensation for infringement of the trademark as to a claim of compensation for unfair competition in the absence of trademark, it will not be necessary to pass upon the question of the proper measure of recovery in a non-trademark case. As above pointed out, a claim of trademark right was asserted in the bill, and it has not been abandoned. It was overruled by the circuit court of appeals on the first appeal, upon reasoning with which we are unable to concur. We do not regard the words 'The American Girl,' adopted and employed by complainant in connection with shoes of its manufacture, as being a geographical or descriptive term. It does not signify that the shoes are manufactured in America, or intended to be sold or used in America, nor does it indicate the quality or characteristics of the shoes. Indeed, it does not, in its primary signification, indicate shoes at all. It is a fanciful designation, arbitrarily selected by complainant's predecessors to designate shoes of their manufacture. We are convinced that it was subject to appropriation for that purpose, and it abundantly appears to have been appropriated and used by complainant and those under whom it claims.

The cases cited to the contrary are distinguishable. In Delaware & H. Canal Co. v. Clark, 13 Wall. 311, 324, 20 L. ed. 581, 583, the word 'Lackawanna' was rejected as a trademark for coal because it designated the district in which the coal was produced. In Columbia Mill Co. v. Alcorn, 150 U. S. 460, 466, 37 L. ed. 1144, 1147, 14 Sup. Ct. Rep. 151, it was held that 'Columbia' could not be appropriated for exclusive use as a trademark because it was a geographical name. So, with respect to 'Elgin,' as designating watches (Elgin Nat. Watch Co. v. Illinois Watch Case Co. 179 U. S. 665, 673, 45 L. ed. 365, 378, 21 Sup. Ct. Rep. 270); 'Genesee,' claimed as a trademark for salt (Genesee Salt Co. v. Burnap, 20 C. C. A. 27, 43 U. S. App. 243, 73 Fed. 818); 'Old Country,' as a mark for soap (Allen B. Wrisley Co. v. Iowa Soap Co. 59 C. C. A. 54, 122 Fed. 796). If the mark here in controversy were 'American Shoes,' these cases would be quite in point. (And see Shaver v. Heller & M. Co. 65 L.R.A. 878, 48 C. C. A. 48, 108 Fed. 821, 826.) But 'The American Girl' would be as descriptive of almost any article of manufacture as of shoes; that is to say, not descriptive at all. The phrase is quite analogous to 'American Express,' held to be properly the subject of exclusive appropriation as a trademark for sealing wax in Dennison Mfg. Co. v. Thomas Mfg. Co. 94 Fed. 651, 653.

It is contended that this question is settled otherwise, at least as between these parties, by the decision of the circuit court of appeals on the first appeal, and our refusal to review that decision upon complainant's petition for a writ of certiorari, and that the only questions open for review at this time are those that were before the court of appeals upon the second appeal. This, however, is based upon an erroneous view of the nature of our jurisdiction to review the judgments and decrees of the circuit court of appeals by certiorari under § 240, Judicial Code [36 Stat. at L. 1157, chap. 231], derived from § 6 of the Evarts act of March 3, 1891, 26 Stat. at L. 828, chap. 517, Comp. Stat. 1913, § 1217. As has been many times declared, this is a jurisdiction to be exercised sparingly, and only in cases of peculiar gravity and general importance, or in order to secure uniformity of decision. Re Lau Ow Bew, 141 U. S. 583, 587, 35 L. ed. 868, 869, 12 Sup. Ct. Rep. 43; Re Woods, 143 U. S. 202, 36 L. ed. 125, 12 Sup. Ct. Rep. 417; Lau Ow Bew v. United...