Intellectual Property Rights

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

537 F.2d 4 (2d Cir. 1976)

Facts

Abercrombie & Fitch used the word SAFARI on clothing and outdoor products.
It obtained several trademark registrations containing or consisting of “Safari.”
Hunting World also used “Safari” in relation to clothing and accessories.
It used expressions such as:
“Minisafari” for a type of hat;
“Safari” in connection with boots and apparel.
Abercrombie sued for trademark infringement.
Hunting World argued that “Safari” was:
generic for some products;
descriptive for others;
therefore not exclusively controlled by Abercrombie.
The District Court dismissed Abercrombie’s complaint and cancelled multiple registrations.
Abercrombie appealed.

How marks should be classified according to distinctiveness.
Whether SAFARI was generic, descriptive, suggestive or arbitrary for the different goods.
Whether the registrations should have been cancelled completely.

The Court identified the famous spectrum of trademark distinctiveness:
Generic — the common name of the product; never protectable.
Descriptive — directly describes quality, feature, function or characteristic; protectable only with secondary meaning.
Suggestive — requires imagination to connect the mark with the goods; inherently protectable.
Arbitrary — ordinary word used in an unrelated manner; inherently protectable.
Fanciful — invented word created solely as a mark; inherently protectable.
Classification depends upon the goods or services involved.
The same word may be:
generic for one product;
descriptive for another;
suggestive or arbitrary for another.
Generic terms cannot become exclusive trademarks even after extensive advertising.
Descriptive terms can acquire protection through secondary meaning.

The Court rejected the idea that “Safari” had one fixed classification for every product.
In clothing markets, “safari” had become the common name for certain styles.
A safari hat described a recognised type of broad-brimmed outdoor hat.
Similarly, “safari suit” or safari clothing could identify a category or style rather than a particular producer.
For such goods, the word was generic or strongly descriptive.
Abercrombie could not prevent competitors from accurately naming the product type.
However, other uses required separate examination.
Use of SAFARI for boots or products not naturally known by that name might be:
suggestive;
arbitrary;
capable of trademark protection.
“Minisafari,” as used for a smaller safari-style hat, remained closely connected with the generic product designation and could not be monopolised merely because Abercrombie had registrations.
The Court also held that the District Court had gone too far by cancelling registrations that were not properly before it or that covered different goods.
Trademark validity had to be assessed mark by mark and product by product.
The decision sought to preserve two competing interests:
protecting source-identifying marks;
keeping common product vocabulary available to competitors and consumers.

The Second Circuit affirmed that “Safari” was generic or unprotectable for certain safari-style goods.
It reversed the blanket cancellation of all Abercrombie registrations and required a product-specific analysis.
The judgment established the modern distinctiveness spectrum.
Use this case for: trademark protection depends upon whether a term is generic, descriptive, suggestive, arbitrary or fanciful in relation to the particular goods.