Abercrombie & Fitch Co. v. Hunting World Inc. 461 F.2d 1040 (2d Cir. 1972)
FACTS:
- Abercrombie & Fitch Co. (Plaintiff) sued Hunting World (Defendant) in the district court, seeking an injunction against Defendant’s use of the word “Safari”, which Plaintiff had registered as a trademark for various classes of products.
- Defendant moved for summary judgment on the ground that it had not infringed Plaintiff’s trademark rights in the word “Safari”. After considering the pleadings, the district judge filed an opinion,
- The defendant’s use of the word ‘Safari’ to describe its safari hat and the term ‘Mini safari’ for its smaller safari hat does not infringe any rights the plaintiff may have in the use of the word ‘Safari’.
- Additionally, the defendant’s use of the coined word ‘Safariland’ to describe a part of its shop, as a corporate name, and as the name of a newsletter is also not an infringement.
- Furthermore, the court held that the defendant is entitled to use the word ‘Safari’ for products related to the practice or cult of safari.
- Finally, summary judgment was awarded to both parties regarding their respective claims of misrepresentation.
- The summary judgment by the Defendant was thus denied. The Plaintiff sought and was denied a certification by the district court; it then appealed to this court.
ISSUE:
- Whether the word “safari” alone can be validly registered as a trademark?
- Whether summary judgements may be granted on the Defendant’s use of the word “safari”?
RULE:
- The Doctrine of Trademark Incapacity states that a word that was once generic is denied trademark protection, even in the case that consumers see the word or term as a source signifying the said trademark. This Doctrine is put in place in order to avoid unnecessary and illogical trademarks.
HELD:
- The United States Court of Appeal (2nd Circuit) held that there was no infringement of the patent since there was evidence that “Safari” has become a generic term and that the Defendant’s use of the word was made in a much different context than that alleged by the Plaintiff.
- The Court held that the terms in contention were generic terms and that the Plaintiff was not entitled to an injunction against the use of such words.