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injunctionappealtrademark
trademark

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Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 U.S.P.Q. 769

Facts

Abercrombie & Fitch Company (A&F) sued Hunting World, Incorporated (HW) for trademark infringement, alleging that HW used the term 'Safari' on various garments, which A&F claimed as its registered trademark. A&F had used 'Safari' since 1936 on a range of clothing and sought an injunction against HW's use, arguing it would confuse consumers. The district court dismissed A&F's complaint and canceled its trademark registrations, leading to A&F's appeal. The case involved the classification of the term 'Safari' as either generic, descriptive, suggestive, or arbitrary.

This action in the District Court for the Southern District of New York by Abercrombie & Fitch Company (A&F), owner of well-known stores at Madison Avenue and 45th Street in New York City and seven places in other states, against Hunting World, Incorporated (HW), operator of a competing store on East 53rd Street, is for infringement of some of A&F's registered trademarks using the word 'Safari'.

Issue

Whether the term 'Safari' has become a generic term for certain clothing items and whether A&F's trademark registrations should be canceled.

Whether the term 'Safari' has become a generic term for certain clothing items and whether A&F's trademark registrations should be canceled.

Rule

Under the Lanham Act, a term that has become the common descriptive name of an article is not entitled to trademark protection. Generic terms cannot be registered as trademarks, while descriptive terms may be registered if they acquire secondary meaning. The Act allows for cancellation of a registered mark if it becomes generic, and fair use is a defense against infringement claims.

Analysis

The court analyzed the use of 'Safari' in the context of clothing, determining that it had become a generic term for certain apparel but not for others, such as boots and shoes. The court found that A&F had not established that 'Safari' had acquired secondary meaning for all its uses. The court also noted that HW's use of terms like 'Camel Safari' and 'Hippo Safari' was purely descriptive, providing a fair use defense against A&F's claims.

The district court here found that HW's use of 'Camel Safari', 'Hippo Safari', and 'Safari Chukka' as names for various boots imported from Africa constituted 'a purely descriptive use to apprise the public of the type of product by referring to its origin and use.'

Conclusion

The court affirmed the dismissal of A&F's complaint in part, reversed the cancellation of some trademarks, and remanded the case for further proceedings regarding the remaining registrations.

The court properly followed the course sanctioned by this court in Venetianaire Corp. of America v. A&P Import Co., 429 F.2d 1079, 1081-82 (1970), by focusing on the 'use of words, not on their nature or meaning in the abstract.'

Who won?

Hunting World, Incorporated prevailed in the case as the court upheld the dismissal of Abercrombie & Fitch's complaint regarding the use of the term 'Safari' for certain clothing items. The court found that 'Safari' had become a generic term in the context of specific apparel, allowing HW to use it descriptively without infringing on A&F's trademarks. The ruling emphasized the importance of fair use in trademark law, particularly when a term has shifted to a generic status due to widespread public use.

HW prevailed as the court found that A&F had not established that 'Safari' had acquired secondary meaning for all its uses and that HW's use of the term was descriptive, thus falling under the fair use defense.

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