Wolf Bros. & Co. v. Hamilton-Brown Shoe Co.

• Decision Date: 17 November 1908
• Docket Number: 2,811.
• Citation: 165 F. 413
• Parties: WOLF BROS. & CO. v. HAMILTON-BROWN SHOE CO.
• Court: U.S. Court of Appeals — Eighth Circuit

165 F. 413

WOLF BROS. & CO. v. HAMILTON-BROWN SHOE CO.

No. 2,811.

United States Court of Appeals, Eighth Circuit.

November 17, 1908

Paul Bakewell (Bakewell & Cornwall, on the brief), for appellee.

Before SANBORN and VAN DEVANTER, Circuit Judges, and W. H. MUNGER District Judge.

W. H MUNGER, District Judge.

The record in this case discloses that complainant is a corporation, manufacturing women's shoes, at Cincinnati Ohio; that in 1896, George F. Dana & Co. were manufacturers of shoes in said city, and adopted as a trade-mark for women's shoes manufactured by them the words 'The American Girl.' In May, 1898, a copartnership under the name of Wolf Bros. & Co. acquired said business and trade-mark, and in 1899 said Wolf Bros. & Co. adopted and used in advertising and selling its American Girl shoes the catch phrase, 'A shoe as good as its name,' and used, in advertising, upon the top facing of the shoes, the picture of the head of a lady. In 1901 said Wolf Bros. & Co., for the purpose of designating certain styles of its American Girl shoes, adopted and advertised in its catalogues the numerals 403, 404, 407, and 408, and in its catalogue in 1904, for the same purpose, adopted an additional numeral, 397; and in their fall catalogue for 1904 Wolf Bros. & Co. adopted and had printed on its face cover a picture of Uncle Sam and a lady dancing a minuet. In June, 1905, the partnership of Wolf Bros. & Co. incorporated under the name of 'The Wolf Bros. & Company,' under the laws of the state of Ohio, and complainant then acquired all the assets of the partnership, including the good will and trade-marks.

The defendant is a corporation organized under the laws of the state of Missouri, and a large manufacturer of shoes at St. Louis, in said state. In August, 1900, defendant adopted as a trade-mark for women's shoes the words 'The American Lady,' with the picture of a lady. In October, 1903, it advertised with its American Lady shoes the catch phrase, 'The shoe deserves its name.' The defendant claims that this catch phrase was used by it in advertising upon one occasion only, and we dismiss it from further consideration. Thereafter it changed the phrase to the words, 'With the character of the woman. ' In its fall catalogue of 1904 the defendant designated certain styles of its American Lady shoes by the same numerals used by complainant, to wit, 403, 404, 407, and 408, and in its fall catalogue of 1905 it also adopted the numeral 397. In its catalogue of 1904 defendant placed upon the face cover the picture of George and Martha Washington dancing a minuet.

This action was brought by complainant, in which it charges the defendant with infringing its trade-mark 'The American Girl' by the use of the name 'The American Lady' and the portrait of a young woman. It further charges the defendant with infringing the catch phrase 'A shoe as good as its name' by using the catch phrases 'The shoe deserves its name' and 'With the character of the woman. ' It also charges the defendant with infringement by adopting its numeral numbers before mentioned for similar styles of shoes. It also charges defendant with unfair trade. Proofs were taken, and upon the hearing the Circuit Court dismissed complainant's bill, and the case is brought here on appeal.

The first question for consideration is whether the term 'The American Girl' constitutes a valid trade-mark. We think it settled doctrine that geographical names cannot be appropriated to the exclusive use of one as a trade-name. Columbia Mill Co. v. Alcorn, 150 U.S. 460, 14 Sup.Ct. 151, 37 L.Ed. 1144; Delaware & H. Canal Co. v. Clark, 13 Wall. 311, 20 L.Ed. 581; Genessee Salt Co. v. Burnap, 73 F. 818, 20 C.C.A. 27; Ill. Watch Co. v. Elgin Nat. Watch Co., 94 F. 667, 35 C.C.A. 237; Elgin Nat Watch Co. v. Illinois Watch Co., 179 U.S. 665, 21 Sup.Ct. 270, 45 L.Ed. 365; Allen B. Wrisley Co. v. Iowa Soap Co., 59 C.C.A. 54, 122 F. 796. We also think that the name, as applied to women's shoes is descriptive merely, viz., shoes manufactured in America and to be worn by women, and not an arbitrary or fanciful name to indicate maker; hence the name 'The American Girl,' applied to shoes, is not the subject of a valid trade-mark. Nor can numeral numbers, when used to indicate styles rather than origin and manufacture, be the subject of a valid trade-mark. Shaw Stocking Co. v. Mack (C.C.) 12 F. 707; Dennison mfg. Co. v. Thomas Mfg. Co. (C.C.) 94 F. 651. In this case we think that the numerals used by the complainant were for the purpose of indicating and designating the different styles of shoes, rather than the maker.

While it is true that a geographical name may not be exclusively appropriated as a trade-mark, yet a party, having adopted a geographical name as a designation of its goods, may be protected as against unfair trade. Pillsbury Washburn Flour Mills Co. v. Eagle, 86 F. 608, 30 C.C.A. 386, 41 L.R.A. 162; The French Republic v. Saratoga Springs Co., 191 U.S. 427, 24 Sup.Ct. 145, 48 L.Ed. 247. This is clearly illustrated in the case of Pillsbury Washburn Flour Mills Co. v. Eagle, supra, wherein it was held that complainants, who were manufacturers of flour at Minneapolis, Minn., and had designated their flour as 'Minnesota,' 'Minneapolis,' etc., were entitled to enjoin a party who sold flour manufactured at Milwaukee, Wis., from designating such flour as 'Minnesota,' 'Minneapolis,' etc. This was done because defendant, in using the names 'Minnesota,' 'Minneapolis,' etc., was expressing a falsehood, and endeavoring to palm off upon the public flour manufactured in Wisconsin as and for flour manufactured at Minneapolis. In this case, while complainant is not entitled to relief upon the ground that the words 'The American Girl,' or the numerals applied to its several styles of shoes, are valid trade-marks, yet it is entitled to protection from their use by the defendant in a manner and under circumstances constituting unfair trade; the essence of the rule being that one person shall not, in the sale of his goods, so act as to lead the public to believe that they are the goods of another.

The record discloses that complainant and its predecessors extensively advertised its shoes under the name 'The American Girl,' with the catch phrase before referred to, in various trade journals and in newspapers throughout the United States, but largely throughout out the Southern states, and established an extensive trade therefor. Defendant is a much larger manufacturer of shoes than complainant, and has advertised much more extensively, expending something over $100,000 in advertising American Lady shoes after the bringing of this suit. It is plainly obvious, we think, that the words 'The American Girl' and 'The American Lady' are so similar as to cause confusion, and the evidence fully discloses such to have been the result.

The testimony of the vice president and superintendent of defendant, with reference to adopting the name 'The American Lady,' is that in the latter part of August, or the first of September, 1900, they assembled their traveling salesmen, for the purpose of making a selection of samples for the following season, and it was suggested at such meeting that some name be adopted for that line of women's shoes, and the name 'The American Lady' was selected. He testifies that at that time he had never known or heard of shoes being made by Wolf Bros. & Co. of Cincinnati, or made and sold by any one, under the name of 'The American Girl.' It is further claimed on the part of the defendant that, when it used the catch phrases 'The shoe deserves its...