## Facts

- Wolf Brothers & Co., a shoe manufacturer, used “The American Girl” on women’s shoes beginning in 1896 and developed substantial goodwill through nationwide advertising.
- Hamilton-Brown Shoe Co., a competing manufacturer, began using “American Lady” for women’s shoes in 1900, with knowledge of Wolf Brothers’ prior use.
- Wolf Brothers alleged that “American Lady,” along with similar labels and marketing, was calculated to cause confusion and to appropriate Wolf Brothers’ reputation.
- The trial court dismissed the claims; the court of appeals held “The American Girl” was not a technical trademark but found unfair competition, ordering an injunction and an accounting limited to sales after the complaint was filed (Jan. 29, 1906).
- After an earlier petition for certiorari by Wolf Brothers was denied, later proceedings produced an accounting decree, and Hamilton-Brown sought Supreme Court review.

## Issues

1. Whether “The American Girl,” as applied to women’s shoes, is a protectable trademark or merely geographic/descriptive.
2. Whether a prior denial of certiorari concerning an earlier decree bars later Supreme Court reconsideration of the trademark question.
3. Whether Hamilton-Brown’s use of “American Lady” infringed Wolf Brothers’ rights and constituted unfair competition.
4. Whether a knowing infringer must disgorge all profits from infringing sales when separating profits attributable to the mark from other factors is impracticable.
5. Once certiorari is granted, whether the Supreme Court may review and correct errors in interlocutory proceedings leading to the decree under review.

## Decision

- The Court held “The American Girl” is a valid trademark for women’s shoes because it is a fanciful designation rather than a geographic or descriptive term.
- The Court ruled that denial of certiorari is not an affirmance and does not settle the merits or establish law of the case.
- The Court found Hamilton-Brown infringed the trademark and engaged in unfair competition, given its knowledgeable adoption and the likelihood of confusion.
- The Court upheld an accounting requiring disgorgement of profits where the infringer was not innocent and apportionment between lawful and unlawful sources of profit was inherently impossible.
- The Court affirmed the decree below, while resting the result on trademark infringement as well as unfair competition.

## Legal Principles

- A mark containing national terms may be protectable if, in context, it does not describe origin, qualities, or characteristics but instead functions as an arbitrary or fanciful product designation.
- Denial of certiorari has no merits effect and is not equivalent to affirmance; it does not preclude later review of the same legal question in a proper posture.
- Trademark rights are treated as property to the extent of actual use, and equity may require an infringer to account for gains obtained through infringement.
- When infringement is knowing and profit apportionment is inherently impossible, uncertainty is resolved against the wrongdoer and the plaintiff is not limited to a partial-profit theory.
- Although certiorari is discretionary and reserved for matters of general importance or uniformity, once granted the Court may examine errors in interlocutory steps leading to the decree under review.

## Conclusion

The Supreme Court recognized “The American Girl” as a protectable trademark, rejected any merits effect from a prior denial of certiorari, held that “American Lady” infringed and constituted unfair competition, and approved full disgorgement of profits where a knowing infringer made apportionment impracticable.


Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251 (1916)