Trademark Law and Practice, Pages 121–126

Abercrombie & Fitch Co. v. Hunting World, Inc.

United States Court of Appeals for the Second Circuit, 1976

Facts:

Plaintiff used the "Safari" registered trademark for almost 60 years quite successfully and formerly prosecuted cases successfully on it. Defendant also used the term for its clothing, so plaintiff sued. Defendant counterclaimed.

Procedural History:

District court dismissed plaintiff's complaint and cancelled all of plaintiff's "Safari" trademarks.

Issue:

What class of terms do plaintiff's "Safari" trademarks fall under and can it enforce them against defendant?

Defendant's Argument:

The word "safari" is a generic, descriptive word understood by the public and is therefore not subject to the exclusivity of a trademark.

Rules:

  • There are four classes of terms in regards to trademark protection. In order of ascending protection, they are:

    1. Generic
      • This means that it is the "common descriptive name" and affords no exclusive right to the mark.
    2. Descriptive
      • This means that it is "merely descriptive" and allows registration if there is "proof of substantially exclusive and continuous use of the mark applied to the applicant’s goods for five years preceding the application". (If it acquires a secondary meaning.)
    3. Suggestive
      • This means that it "requires imagination, thought, and perception to reach a conclusion as to the nature of goods" and is entitled to registration without proof of secondary meaning.
    4. Arbitrary/Fanciful
  • Generic terms referring to the type of product rather than the product cannot be trademarked, even if they acquire secondary meanings.

  • Marks can shift between classes as language changes. If they become the common descriptive name of an article or substance, the trademark can be cancelled.

Reasoning:

"Safari" has become a generic term for certain clothing items. "Safariland" is permissible because of its focus on selling these genericized goods. This is not the case for footwear, where it is either "suggestive" or "merely descriptive" and therefore incontestable. However, defendant had longer names for its footwear, like "Camel Safari" or "Hippo Safari." As defendant's parent company embarks on African safaris, this could be justified fair use by being named such to associate it with the trips.

Holding:

Some of plaintiff's trademarks were generic and some were suggestive. Regardless, it cannot enforce them against defendant. Affirmed and modified.

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