Abercrombie & Fitch Company v. Hunting World, Incorporated
537 F.2d 4 (1976)
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Rule of Law:
A term's eligibility for trademark protection depends on its classification on a spectrum of distinctiveness, from generic (unprotectable), to descriptive (protectable with secondary meaning), to suggestive, arbitrary, or fanciful (all inherently distinctive and protectable). A term may be generic for one class of goods but suggestive or descriptive for another, thereby retaining trademark protection for the non-generic uses.
Facts:
- Abercrombie & Fitch Company (A&F), a well-known sporting goods retailer, began using the mark 'Safari' on various articles of clothing and other goods starting in 1936.
- A&F successfully obtained several U.S. trademark registrations for the word 'Safari' for use on goods such as men's and women's outer garments, hats, shoes, and woven cloth.
- A&F invested substantial sums in advertising and promoting products identified by its 'Safari' mark.
- Hunting World, Incorporated (HW), a competitor, began marketing and selling sporting apparel and other goods.
- HW used the word 'Safari' to identify certain products, such as hats, and also used expressions like 'Minisafari' for smaller hats, 'Safariland' for a section of its store, and 'Camel Safari' and 'Hippo Safari' for its boots.
Procedural Posture:
- Abercrombie & Fitch Co. (A&F) filed a trademark infringement suit against Hunting World, Inc. (HW) in the U.S. District Court for the Southern District of New York.
- HW answered and filed a counterclaim seeking cancellation of all of A&F's 'Safari' trademarks.
- The district court granted partial summary judgment in favor of HW, which A&F appealed.
- The U.S. Court of Appeals for the Second Circuit reversed the summary judgment and remanded the case for a full trial.
- Following a trial on remand, the district court entered a judgment dismissing A&F's complaint and canceling all of A&F's registered 'Safari' trademarks.
- A&F (appellant) appealed the district court's final judgment to the U.S. Court of Appeals for the Second Circuit, with HW as the appellee.
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Issue:
Did the district court err in canceling all of Abercrombie & Fitch's 'Safari' trademark registrations and dismissing its infringement complaint on the grounds that the term is generic for all the goods to which it is applied?
Opinions:
Majority - Friendly, J.
Yes, the district court erred by ordering a wholesale cancellation of all of A&F's 'Safari' registrations, although it correctly dismissed the infringement complaint. A word's status as a trademark is not universal; it must be analyzed in the context of the specific goods to which it is applied. The court established a four-category framework for classifying terms: generic, descriptive, suggestive, and arbitrary or fanciful. A generic term, which refers to the genus of which the product is a species, can never receive trademark protection. The term 'Safari' has become generic for a specific type of clothing outfit (e.g., safari hat, safari jacket) and thus A&F cannot prevent HW from using it in that context. However, for other goods like boots, luggage, and portable grills, 'Safari' is not generic; it is either suggestive or descriptive. For these non-generic uses, A&F's registrations are valid. Although A&F's mark is valid for boots, HW established a 'fair use' defense, as it used the term descriptively (referring to the boots' origin and use) rather than as a trademark. Therefore, the complaint was properly dismissed, but only the registrations covering goods for which 'Safari' has become generic should be canceled.
Analysis:
This landmark opinion by Judge Friendly established the 'Abercrombie spectrum,' which has become the foundational framework for analyzing trademark distinctiveness in American law. The case is significant for clarifying the four categories of marks and articulating that a term's classification is context-dependent, varying with the product to which it is applied. This principle prevents a single word from being wholly generic or wholly protectable in all circumstances, introducing critical nuance to trademark analysis. The decision ensures that competitors can use generic terms to describe their products while still allowing companies to protect terms that function as source-identifiers for other types of goods.
