Abercrombie & Fitch Company V. Hunting World, Incorporated

ABERCROMBIE & FITCH COMPANY v.
HUNTING "becomes the common descriptive name of an article

WORLD, INCORPORATED or substance,"
537 F.2d 4 (2d Cir. 1976) This means that even proof of secondary meaning, by
virtue of which some "merely descriptive" marks may
FACTS: be registered, cannot transform a generic term into a
subject for trademark.
Abercrombie & Fitch Company (A&F), owner of well-
known stores at Madison Avenue and 45th Street in A term is suggestive if it requires imagination,
New York City and seven places in other states sued thought and perception to reach a conclusion as to the
Hunting World, Incorporated (HW), operator of a nature of goods. A term is descriptive if it forthwith
competing store on East 53rd Street, for infringement conveys an immediate idea of the ingredients, qualities
of some of A&F's registered trademarks using the word or characteristics of the goods.
'Safari'.
If a term is suggestive, it is entitled to registration
A & F alleged that since 1936 it has used the mark on without proof of secondary meaning.
a variety of men's and women's outer garments.
It need hardly be added that fanciful or arbitrary
HW countered that the word 'safari' is an ordinary, terms12 enjoy all the rights accorded to suggestive
common, descriptive, geographic, and generic word" terms as marks without the need of debating whether
which "is commonly used and understood by the public the term is "merely descriptive" and with ease of
to mean and refer to a journey or expedition, establishing infringement.
especially for hunting or exploring in East Africa, and
to the hunters, guides, men, animals, and equipment In the light of these principles we must proceed to a
forming such an expedition" and is not subject to decision of this case.
exclusive appropriation as a trademark. HW sought
cancellation of all of A&F's registrations using the word We turn first to an analysis of A&F's trademarks to
'Safari' on the ground that A&F had fraudulently failed determine the scope of protection to which they are
to disclose the true nature of the term to the Patent entitled. We have reached the following conclusions:
Office.
(1) applied to specific types of clothing 'safari'
The court ruled in favor of HW. has become a generic term and 'minisafari'
may be used for a smaller brim hat;
Hence, the instant petition. (2) ‘safari' has not, however, become a
generic term for boots or shoes; it is either
ISSUE: "suggestive" or "merely descriptive" and is
a valid trademark even if " merely
Whether or not the mark “Safari” is covered by descriptive" since it has become
trademark protection. incontestable under the Lanham Act; but
(3) in light of the justified finding below that
RULING: 'Camel Safari,' 'Hippo Safari' and 'Safari
Chukka' were devoted by HW to a purely
Arrayed in an ascending order which roughly reflects descriptive use on its boots, HW has a
their eligibility to trademark status and the degree of defense against a charge of infringement
protection accorded, these classes are (1) Generic, (2) with respect to these on the basis of "fair
Descriptive, (3) Suggestive, and (4) Arbitrary or use." We now discuss how we have
Fanciful. reached these conclusions.
A generic term is one that refers, or has come to be It is common ground that A&F could not apply 'Safari'
understood as referring, to the genus of which the as a trademark for an expedition into the African
particular product is a species. At common law neither wilderness. This would be a clear example of the use
those terms which were generic nor those which were of 'Safari' as a generic term. What is perhaps less
merely descriptive could become valid trademarks, obvious is that a word may have more than one
("Nor can a generic name, or a name merely generic use. The word 'Safari' has become part of a
descriptive of an article or its qualities, ingredients, or family of generic terms which, although deriving no
characteristics, be employed as a trademark and the doubt from the original use of the word and
exclusive use of it be entitled to legal protection"). reminiscent of its milieu, have come to be understood
not as having to do with hunting in Africa, but as
The Lanham Act makes an important exception with terms within the language referring to contemporary
respect to those merely descriptive terms which have American fashion apparel.
acquired secondary meaning, it offers no such
exception for generic marks. The Act provides for the This outfit, and its components, were doubtless what
cancellation of a registered mark if at any time it Judge Ryan had in mind when he found that "the word
'safari' in connection with wearing apparel is widely
used by the general public and people in the trade."
The record abundantly supports the conclusion that
many stores have advertised these items despite A&F's
attempts to police its mark.
In contrast, a search of the voluminous exhibits fails to

disclose a single example of the use of 'Safari', by
anyone other than A&F and HW, on merchandise for
which A&F has registered 'Safari' except for the safari
outfit and its components as described above.
What has been thus far established suffices to support

the dismissal of the complaint with respect to many of
the uses of 'Safari' by HW. Describing a publication as
a "Safariland Newsletter", containing bulletins as to
safari activity in Africa, was clearly a generic use which
is non-enjoinable.
A&F also was not entitled to an injunction against

HW's use of the word in advertising goods of the kind
included in the safari outfit as described above. And if
HW may advertise a hat of the kind worn on safaris as
a safari hat, it may also advertise a similar hat with a
smaller brim as a minisafari.
Although the issue may be somewhat closer, the

principle against giving trademark protection to a
generic term also sustains the denial of an injunction
against HW's use of 'Safariland' as a name of a portion
of its store devoted at least in part to the sale of
clothing as to which the term 'Safari' has become
generic.
A&F stands on stronger ground with respect to HW's

use of 'Camel Safari', 'Hippo Safari' and Chukka 'Safari'
as names for boots imported from Africa.
As already indicated, there is no evidence that

'Safari' has become a generic term for boots.
Since, as will appear, A&F's registration of 'Safari' for
use on its shoes has become incontestable, it is
immaterial (save for HW's contention of fraud which is
later rejected) whether A&F's use of 'Safari' for boots
was suggestive or "merely descriptive."
HW contends, however, that even if 'Safari' is a valid

trademark for boots, it is entitled to the defense of
"fair use" within § 33(b)(4) of the Lanham Act, 15
U.S.C. § 1115(b)(4). That section offers such a
defense even as against marks that have become
incontestable when the term charged to be an
infringement is not used as a trademark "and is used
fairly and in good faith only to describe to users the
goods and services of such party, or their geographic
origin."
We thus hold that the district court was correct in

dismissing the complaint.

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ABERCROMBIE & FITCH COMPANY v.

HUNTING "becomes the common descriptive name of an article

In contrast, a search of the voluminous exhibits fails to

What has been thus far established suffices to support

A&F also was not entitled to an injunction against

Although the issue may be somewhat closer, the

A&F stands on stronger ground with respect to HW's

As already indicated, there is no evidence that

HW contends, however, that even if 'Safari' is a valid

We thus hold that the district court was correct in

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