Abercrombie & Fitch Company v. Hunting World, Inc.

537 F.2d 4 (1976)

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Nature of the Case

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Facts

For many years P has used the mark 'Safari' on articles 'exclusively offered and sold by it.' Since 1936 it has used the mark on a variety of men's and women's outer garments. It has four United States trademark registrations on the name related to clothing. P has spent large sums of money in advertising and promoting products identified with its mark 'Safari' and in policing its right in the mark, including the successful conduct of trademark infringement suits. Hunting (D) has engaged in the retail marketing of sporting apparel including hats and shoes, some identified by use of 'Safari' alone or by expressions such as 'Minisafari' and 'Safariland'. P sought an injunction against infringement and an accounting for damages and profits. D filed an answer and counterclaim. D alleged that 'the word 'safari' is an ordinary, common, descriptive, geographic, and generic word' which 'is commonly used and understood by the public to mean and refer to a journey or expedition, especially for hunting or exploring in East Africa, and to the hunters, guides, men, animals, and equipment forming such an expedition' and is not subject to exclusive appropriation as a trademark. D sought cancellation of all of P's registrations using the word 'Safari' on the ground that P had fraudulently failed to disclose the true nature of the term to the Patent Office. The judge held that 'safari' is a generic word but that a genuine issue of fact exists as to whether P has created a secondary meaning in its use of the word 'identifying the source' and showing that 'purchasers are moved to buy it because of its source.' The judge held that P had no right to prevent D from using the word 'Safari' to describe its business as distinguished from use in the sale of a particular product. The court held that D had not infringed P's registered mark using the word 'Safari' under its brand name on a 'classical safari hat' or in advertising this as 'The Hat for Safari' since such use was purely descriptive. It held that D had not infringed by using the term 'Minisafari' as a name for its narrower brimmed safari hats and that D was entitled to use the word 'Safariland' as the description of an area within its shop and as the name of a corporation engaged in the wholesale distribution of products imported from East Africa by an affiliate. The court concluded that both parties had used the word 'Safari' in a fanciful rather than a descriptive sense and hence P might have a valid infringement claim if it could establish a secondary meaning. P appealed and the court reversed and remanded for trial. On remand, a new judge ruled in D's favor. The judge found the mark to be invalid and it was merely descriptive and does not distinguish P's goods. The court did not discuss whether some of its marks had become incontestable under §15 of the Lanham Act, 15 U.S.C. § 1065. The judge dismissed the complaint and canceled not only the four registered trademarks in the suit but all P's other registered 'Safari' trademarks. P appealed.