## Facts

- Abercrombie & Fitch Co. (A&F) sold upscale sporting goods and apparel and owned multiple federal trademark registrations incorporating “Safari” for various goods, including outer garments, hats, cloth, and sporting goods.
- A&F had used “Safari” in connection with its merchandise since the 1930s and claimed extensive advertising and policing of the term as a trademark.
- Hunting World, Inc. (HW) operated a competing retail store and used “Safari,” “Minisafari,” and “Safariland” in connection with items such as safari hats and as designations for a store area, corporate name, and newsletter.
- A&F sued under trademark theories, alleging HW’s uses were likely to confuse consumers and would harm the distinctiveness of A&F’s “Safari” marks.
- HW asserted that “safari” is a common term describing an expedition and associated apparel and equipment, and thus incapable of exclusive appropriation; HW also sought cancellation of A&F’s registrations, alleging they were invalid (including a claim of fraud in procurement).
- The district court ultimately dismissed A&F’s complaint and ordered cancellation of all “Safari” registrations, including some beyond the specific infringement disputes.
- A&F appealed to the Second Circuit from the final judgment dismissing its claims and canceling its registrations.

## Issues

1. How should “Safari,” as used on different goods, be classified on the trademark distinctiveness spectrum (generic, descriptive, suggestive, arbitrary, fanciful), and what are the consequences for protectability?
2. Did HW’s uses of “Safari,” “Minisafari,” and “Safariland” infringe any protectable rights A&F held in “Safari,” or were the uses permissible as descriptive usage?
3. Was the district court’s cancellation of all of A&F’s “Safari” registrations proper in scope?

## Decision

- The Second Circuit affirmed dismissal of A&F’s infringement claims, concluding A&F could not stop HW’s challenged uses on the record presented.
- The court articulated and applied a structured classification of marks—generic, descriptive, suggestive, arbitrary, and fanciful—and linked each class to registrability and scope of protection.
- The court held “Safari” was generic for certain goods associated with safari-style clothing and equipment (e.g., “safari” hats/jackets as product types), making the term unprotectable for those goods and subject to cancellation.
- The court modified the judgment to limit cancellation: registrations covering goods for which “Safari” was not generic (including some registrations with incontestable status) were not properly swept into blanket cancellation.

## Legal Principles

- Marks fall on a spectrum of distinctiveness: generic (never protectable), descriptive (protectable only upon secondary meaning), suggestive (inherently protectable), arbitrary (inherently protectable), and fanciful (inherently protectable).
- A generic term is the common name of the product or product type; it is not registrable and cannot function as a trademark, even if consumers associate the term with a single producer.
- A registered mark may be canceled at any time to the extent it is generic for the goods covered by the registration.
- Descriptive terms require proof of secondary meaning to be enforceable; suggestive terms do not.
- Incontestable registrations carry strong presumptions of validity, but they remain vulnerable to defenses such as genericness; cancellation must be tied to the goods for which the term is generic rather than imposed categorically across all registrations.
- Trademark law permits good-faith descriptive use of terms to convey information about goods or their theme, even where the same term appears in another’s mark, particularly when the term has generic or strongly descriptive significance in the relevant market.

## Conclusion

The Second Circuit rejected A&F’s effort to use “Safari” to block a competitor’s uses where the term functioned as the generic name for certain safari-style goods, while also limiting overbroad cancellation by requiring registration validity and cancellation to track the term’s distinctiveness for particular goods, and in doing so established the widely used distinctiveness spectrum for mark classification.


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