In order that he may recover profit under § 19 of the Trademark
Act, the trademark owner is not required to prove that the
purchasers of goods bearing the infringing mark were induced by it
to believe that the goods were the goods of the trademark owner and
purchased for that reason, and that they would otherwise have
bought of him. P. 316 U. S.
119 F.2d 316, reversed.
Certiorari, 314 U.S. 603, to review the affirmance of a decree
in a suit to enjoin infringements of a trademark and for an
accounting of profits.
MR. JUSTICE FRANKFURTER delivered the opinion of the Court.
The petitioner, which manufactures and sells shoes and rubber
heels, employs a trademark, registered under the Trademark Act of
1905, 33 Stat. 724, 15 U.S.C. § 81 et seq.,
a red circular plug embedded in the center of a heel. The heels
were not sold separately, but were attached to shoes made by the
petitioner. It has spent considerable sums of money in seeking to
Page 316 U. S. 204
favor of the consuming public by promoting the mark as assurance
of a desirable product. The respondent sold heels not made by the
petitioner, but bearing a mark described by the District Court
"a circular plug of red or reddish color so closely resembling
that of the plaintiff [petitioner] that it is difficult to
distinguish the products sold by the defendant from the plaintiff's
The heels sold by the respondent were inferior in quality to
those made by the petitioner, and "this tended to destroy the
goodwill created by the plaintiff in the manufacture of its
superior product." Although there was no evidence that particular
purchasers were actually deceived into believing that the heels
sold by the respondent were manufactured by the petitioner, the
District Court found that there was a "reasonable likelihood" that
some purchases might have been induced by the purchaser's belief
that he was obtaining the petitioner's product.
"The ordinary purchaser, having become familiar with the
plaintiff's trademark, would naturally be led to believe that the
heels marketed by the defendant were the product of the plaintiff
Concluding that the petitioner's mark had thus been infringed,
the Court enjoined future infringement and also ordered that the
respondent account to the petitioner for profits made from
"to purchasers who were induced to buy because they believed the
heels to be those of plaintiff and which sales plaintiff would
otherwise have made."
Complaining of this criterion for determining the profits that
improperly accrued to the respondent by reason of the infringement,
the petitioner appealed to the Circuit Court of Appeals for the
Sixth Circuit, which affirmed the decree. 119 F.2d 316. Deeming the
matter to present an important question under the Trademark Act, we
brought the case here, 314 U.S. 603, solely to review the
provisions of the decree dealing with the measure of profits
Page 316 U. S. 205
damages for the infringement found by the two lower courts.
Whether there was such an infringement as to entitle the petitioner
to the remedies provided by the federal trademark laws is therefore
not open here.
The protection of trademarks is the law's recognition of the
psychological function of symbols. If it is true that we live by
symbols, it is no less true that we purchase goods by them. A
trademark is a merchandising shortcut which induces a purchaser to
select what he wants, or what he has been led to believe he wants.
The owner of a mark exploits this human propensity by making every
effort to impregnate the atmosphere of the market with the drawing
power of a congenial symbol. Whatever the means employed, the aim
is the same -- to convey through the mark, in the minds of
potential customers, the desirability of the commodity upon which
it appears. Once this is attained, the trademark owner has
something of value. If another poaches upon the commercial
magnetism of the symbol he has created, the owner can obtain legal
redress. And, in this case, we are called upon to ascertain the
extent of the redress afforded for infringement of a mark
registered under the Trademark Act of 1905.
The "right to be protected against an unwarranted use of the
registered mark has been made a statutory right" by that Act.
Thaddeus Davids Co. v. Davids Mfg. Co., 233 U.
, 233 U. S. 471
Section 19 of the Act provides that,
"upon a decree being rendered in any such case for wrongful use
of a trademark, the complainant shall be entitled to recover, in
addition to the profits to be accounted for by the defendant, the
damages the complainant has sustained thereby, and the court shall
assess the same or cause the same to be assessed under its
direction . . . , and, in assessing profits, the plaintiff shall be
required to prove defendant's sales only; defendant must
Page 316 U. S. 206
prove all elements of cost which are claimed. *
33 Stat. 724, 729; 15 U.S.C. § 99. Infringement and damage
having been found, the Act requires the trademark owner to prove
only the sales of articles bearing the infringing mark. Although
the award of profits is designed to make the plaintiff whole for
losses which the infringer has caused by taking what did not belong
to him, Congress did not put upon the despoiled the burden -- as
often as not impossible to sustain -- of showing that, but for the
defendant's unlawful use of the mark, particular customers would
have purchased the plaintiff's goods.
If it can be shown that the infringement had no relation to
profits made by the defendant, that some purchasers bought goods
bearing the infringing mark because of the defendant's
recommendation or his reputation or for any reason other than a
response to the diffused appeal of the plaintiff's symbol, the
burden of showing this is upon the poacher. The plaintiff, of
course, is not entitled to profits demonstrably not attributable to
the unlawful use of his mark. Cf. Straus v. Notaseme Hosiery
Co., 240 U. S. 179
240 U. S. 183
compare Sheldon v. Metro-Goldwyn Pictures Corp.,
309 U. S. 390
Westinghouse Electric & Mfg. Co. v. Wagner Electric &
Mfg. Co., 225 U. S. 604
burden is the infringer's to prove that
Page 316 U. S. 207
his infringement had no cash value in sales made by him. If he
does not do so, the profits made on sales of goods bearing the
infringing mark properly belong to the owner of the mark.
Hamilton-Brown Shoe Co. v. Wolf Bros. & Co.,
240 U. S. 251
There may well be a windfall to the trademark owner where it is
impossible to isolate the profits which are attributable to the use
of the infringing mark. But to hold otherwise would give the
windfall to the wrongdoer. In the absence of his proving the
contrary, it promotes honesty and comports with experience to
assume that the wrongdoer who makes profits from the sales of goods
bearing a mark belonging to another was enabled to do so because he
was drawing upon the goodwill generated by that mark. And one who
makes profits derived from the unlawful appropriation of a mark
belonging to another cannot relieve himself of his obligation to
restore the profits to their rightful owner merely by showing that
the latter did not choose to use the mark in the particular manner
employed by the wrongdoer.
The starting point of the case before us is respondent's
infringement of the petitioner's trademark in violation of the
federal Act. The decree is assailed by the petitioner because, upon
its reading of the decree, it is awarded only those profits which
it can affirmatively prove to have resulted from sales
"to purchasers who were induced to buy because they believed the
heels to be those of plaintiff, and which sales plaintiff would
otherwise have made."
We are not prepared to say that such is not a sensible reading
of the language in which the decree was cast, the purpose of which
was to recover profits that came to the respondent through its
infringement, and that, in good conscience, belong to the
petitioner. The decree, in effect, requires the petitioner to prove
by a procession of witnesses that, when they bought heels from the
infringer, they had a clear, well focussed consciousness that they
were buying the petitioner's heels, and that otherwise they
Page 316 U. S. 208
would not have bought them. But the shoe is on the other foot.
The creation of a market through an established symbol implies that
people float on a psychological current engendered by the various
advertising devices which give a trademark its potency. It is that
which the Trademark Act of 1905 protects. We therefore vacate the
decree in order that the cause be remanded to the District Court
for the entry of a decree in conformity with this opinion. If the
petitioner suffered damages beyond the loss of profits, the decree
should provide for the assessment of such damages.
THE CHIEF JUSTICE and MR. JUSTICE ROBERTS took no part in the
consideration or decision of this case.
* The committee reports upon the bill which became the 1905 Act
make these observations on § 19:
"By section 19, provision is made for proceedings in equity
against the infringer of a registered trademark. This section
corresponds in terms with section 4921 of the Revised Statutes,
relating to patent cases, except that it specially provides the
manner in which profits shall be ascertained. Under existing rules,
it is necessary for the complainant to prove sales and costs with
entire and absolute accuracy. The only persons having knowledge of
making the sales are the defendant or some one in his employ. It
has seemed, therefore, only fair and just that, if the complainant
proves the sales, the defendant should be required to produce
evidence of the expenses he was put to in making such sales as an
offset against the sales proven by the complainant."
Sen.Rep. No. 3278, 58th Cong., 3d Sess., p. 10; H.Rep. No. 3147,
58th Cong., 3d Sess., p. 9.
MR. JUSTICE BLACK, dissenting, with whom MR. JUSTICE DOUGLAS and
MR. JUSTICE MURPHY concur.
Mishawaka does not sell detached rubber heels. The heels bearing
its mark are attached to the rubber boots and shoes it
manufactures, and reach the market only as parts of these larger
products. Kresge, on the other hand, sells in its retail stores
detached rubber heels manufactured by others. Hence, like the
courts below, I find it difficult to conclude that there were
substantial probabilities of deception and that Kresge's sales took
away business that might otherwise have gone to Mishawaka. In any
event, the economic rivalry, if it existed at all, was so remote
and indirect that an injunction alone would seem to have afforded
ample relief against the infringement, found by both courts below
to have been without fraudulent intent.
Moreover, upon the extensive evidence introduced by both
parties, the trial court concluded that there was
"no direct proof of any ordinary purchaser's being misled into
believing that heels marketed by the defendant were products
Page 316 U. S. 209
of the plaintiff company."
The Circuit Court of Appeals reached a similar conclusion:
"No justification is found in the record for an inference that
anyone appears to have been deceived by appellee's trademark into
purchasing its shoe heels and lifts in the belief that he was
purchasing shoe heels produced by appellant."
119 F.2d 316, 324.
If the respondent had willfully palmed off the heels it sold as
products of the petitioner, and if it had been shown that the
petitioner had suffered any injury, I should agree to a decision
resolving doubts about the measure of damages in favor of the
petitioner. But, under the circumstances of this case, I believe
the effect of the decision handed down is to grant a windfall to
the petitioner and to impose a penalty upon the respondent, neither
of which is deserved. Finding nothing in the Trademark Act of 1905
which compels such a result, I can see no abuse of discretion in
the decree of the trial court which the Circuit Court of Appeals
affirmed. Saxlehner v. Siegel-Cooper Co., 179 U. S.
. Cf. Straus v. Notaseme Hosiery Co.,
240 U. S. 179
240 U. S.