Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976)

“A mark’s strength depends on where it lies on the spectrum of distinctiveness.”

Short Description

This U.S. case established the famous spectrum of trademark distinctiveness (or Abercrombie classification), dividing marks into categories (generic, descriptive, suggestive, arbitrary/fanciful) with differing levels of legal protection. The decide whether “Safari” could be protected by Abercrombie depended on whether it had become distinctive (or even generic) for certain goods.

Facts

⦁ Abercrombie & Fitch (“A&F”) had been using the mark “Safari” since 1936 on various clothing goods (outer garments, jackets, etc.). It had several U.S. trademark registrations for “Safari.”

⦁ Hunting World, Inc. (“HW”) began using “Safari” in connection with clothing items, hats, shoes etc., sometimes alone (“Safari hat”) or in variants like “Minisafari”, “Safariland”, “Safari Chukka”, “Camel Safari”, “Hippo Safari”.

⦁ A&F sued HW for trademark infringement and sought cancellation of registrations, claiming that HW’s use of “Safari” infringed on its rights.

Issues / Key Legal Principles / Findings

⦁ Spectrum of distinctiveness: The court sets out that trademarks fall into categories:

⦁ Generic — common name of the product; never protectable.

⦁ Descriptive — describes a characteristic or quality of the goods; protectable only if secondary meaning has developed.

⦁ Suggestive — requires imagination to connect to the product; protectable without proof of secondary meaning.

⦁ Arbitrary / Fanciful — inherently distinctive; strongest protection.

⦁ The court examined whether “Safari” was generic in certain uses, or merely descriptive, or suggestive, etc.

⦁ It found that in many clothing items “Safari” had become generic (or so widely used descriptively) such that A&F could not prevent others from using it (for example “Safari hat”, “Safari jacket”) because consumers generally use “Safari” descriptively in those apparel contexts.

⦁ On the other hand, for some goods like boots/shoes, “Safari” had not necessarily become generic; A&F’s registration might still hold provided secondary meaning, etc.

Judgment

⦁ The court canceled A&F’s trademark registrations for “Safari” to the extent that the use was generic or descriptive in a way that consumers no longer associated the term exclusively with A&F.

⦁ But some registrations were upheld or partially maintained in goods where “Safari” had not become generic (e.g. certain shoes / boots) and where A&F had incontestable registrations.

Date

Decided on: January 16, 1976