Caseflicks

Court of Appeals for the Second Circuit • 1976

Abercrombie & Fitch Company v. Hunting World, Incorporated

537 F.2d 4

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Takeaway

In short, a mark’s protection depends on the particular goods and use: “Safari” was free for competitors to use as a clothing name or fair description, but Abercrombie retained its other registrations.

Background

Abercrombie & Fitch owned several registrations for “Safari” and sued competing retailer Hunting World over its use of the word on clothing, shoes, and store materials. Hunting World argued that “safari” was a common term that Abercrombie could not exclusively control.

After trial, the district court dismissed the infringement complaint and canceled all of Abercrombie’s Safari registrations, finding the mark merely descriptive and lacking secondary meaning. The Second Circuit reviewed both the dismissal and the sweeping cancellation order.

Issues

Issue #1

Whether “Safari” had become generic, making all of Abercrombie’s registrations invalid.

Holding

No. “Safari” was generic for certain safari-style clothing, but not for shoes or the other goods covered by Abercrombie’s registrations. Cancellation had to be limited accordingly.

Reasoning

Trademark status depends on the goods and the way a term is used. Generic terms name a kind of product and cannot be protected even if buyers associate them with one seller. Descriptive terms can gain protection through secondary meaning; suggestive and arbitrary terms do not require that showing.

The record showed that the clothing trade and customers used “safari” to name familiar garments, including safari hats, jackets, and suits. Abercrombie could not prevent competitors from calling those garments by their common names. But the record did not show that “safari” was a generic name for shoes or for the other goods in its registrations.

A registration can be canceled even after becoming incontestable if its mark becomes a product’s common name. That justified canceling the registration for outer garments and only the generic-clothing portions of another federal registration and a New York registration—not every Safari registration. On limited rehearing, the court clarified that the record did not establish generic use for shirts.

The remaining registrations could not be canceled merely because the district court found no secondary meaning. Some covered uses were suggestive, and the incontestable registrations could not be defeated by an unsupported allegation that Abercrombie had obtained them by fraud.

Issue #2

Whether Hunting World infringed the valid Safari mark for shoes by using “Camel Safari,” “Hippo Safari,” and “Safari Chukka” for its boots.

Holding

No. Hunting World used those terms fairly and in good faith to describe its boots, not as trademarks.

Reasoning

The Lanham Act permits fair, good-faith descriptive use of a term even when another party holds an incontestable registration. The question is how the defendant used the words, not whether the words can function as a trademark in another context.

Hunting World’s business involved African safaris, and its boots were imported from Africa. The district court found that the names described the boots’ origin and use rather than invoking Abercrombie’s goodwill. Hunting World also did not use “Safari” alone as a shoe mark.

Hunting World’s other challenged uses concerned safari-style goods or safari activities that it could describe by name. The infringement complaint was therefore properly dismissed, even though the blanket cancellation of Abercrombie’s registrations was not.