What are the facts?
Abercrombie & Fitch, a retailer of outdoor and expedition-themed apparel and gear, owned several federal trademark registrations that included the word "SAFARI" and variants (e.g., for clothing, footwear, and related goods). Some of these registrations had achieved incontestable status under the Lanham Act. Hunting World, a competing retailer of outdoor and "safari-style" clothing and accessories, used the word "safari" in connection with boots, jackets, hats, and related goods, and employed compound phrases that included the term in advertising and labeling. Abercrombie sued in the Southern District of New York for trademark infringement and unfair competition under the Lanham Act and state law, seeking to enjoin Hunting World's use of "safari." Hunting World denied liability, asserted the statutory descriptive fair use defense, and counterclaimed to cancel Abercrombie's "SAFARI" registrations to the extent the term was generic or merely descriptive without secondary meaning for the covered goods. The record reflected extensive third-party and public usage of "safari" to denote a recognized category or style of clothing and accessories (e.g., safari jackets, safari boots, safari hats), rather than a single source.
What is the legal issue?
Is the term "Safari," as applied to clothing and related goods, generic, descriptive, suggestive, or arbitrary/fanciful—and accordingly, does Abercrombie have enforceable trademark rights to preclude Hunting World's use of the term or must the registrations be limited or canceled; and does incontestability bar a genericness challenge or the statutory descriptive fair use defense?
What rule applies?
Marks fall on a spectrum of distinctiveness with different legal consequences: (1) Generic terms name a class of products and can never be trademarks, regardless of secondary meaning; they are subject to cancellation at any time. (2) Descriptive terms directly convey an ingredient, quality, characteristic, function, or feature of the goods and are protectable only upon proof of secondary meaning; competitors retain a statutory fair use right to use such terms descriptively and "otherwise than as a mark." (3) Suggestive terms require imagination, thought, or perception to reach a conclusion as to the nature of the goods and are inherently protectable. (4) Arbitrary or fanciful terms bear no logical relationship to the goods and are inherently protectable. Genericness turns on the primary significance of the term to the relevant public (does it answer "what are you?" rather than "who are you?"). Incontestability does not transform a generic term into a protectable mark and does not bar cancellation or the fair use defense for descriptive use. See Lanham Act §§ 14 (cancellation for genericness), 32, 33(b)(4) (descriptive fair use), and 15 (incontestability).
What did the court hold?
"Safari" is generic—at least for a category or style of apparel and accessories commonly called safari clothes—and thus not protectable as a trademark for those goods. Abercrombie cannot enjoin Hunting World's good-faith, descriptive use of "safari" to identify that style or category. Any registrations covering goods for which "safari" is generic must be limited or canceled to that extent, notwithstanding incontestability. To the extent the term is not generic for particular goods and Abercrombie can prove distinctiveness (or secondary meaning for merely descriptive uses), limited protection may remain. The case was remanded to tailor relief and address modification or cancellation of the registrations consistent with these principles.
What is the reasoning?
Judge Friendly began by formalizing the now-canonical spectrum of distinctiveness and linking each category to registrability and scope of protection. The court emphasized that the determinative question for genericness is the term's primary significance to consumers: does it name the product (a "what-are-you" term) or identify source (a "who-are-you" term)? Whether the word appears as a noun or an adjective is immaterial; a term can be generically descriptive even when used adjectivally (e.g., "safari jacket"), so long as consumers understand it to denote a type or style rather than a single brand. Applying that test, the court credited dictionary definitions, trade usage, and marketplace evidence showing that "safari" in the apparel context had come to denote a recognized style or category—safari jackets, safari boots, safari hats—rather than Abercrombie as a source. Because trademark law preserves generic terminology for all competitors, Abercrombie could not monopolize "safari" for those goods. The court further explained that incontestability does not insulate a registration if the term is or becomes generic; the Lanham Act authorizes cancellation of generic marks "at any time," and incontestability presupposes that the subject is a protectable mark in the first place. Likewise, the statutory descriptive fair use defense permits a competitor to use words like "safari" in their ordinary descriptive sense, in good faith and otherwise than as a mark, even if the plaintiff has a registration. At the same time, the court recognized that a single term can occupy different places on the spectrum for different goods: while generic for safari-style clothing, "safari" could be descriptive, suggestive, or even arbitrary for other items. The court therefore endorsed partial cancellation or narrowing of registrations and a tailored injunction that forbids confusing trademark uses but permits descriptive uses. It remanded for the district court to refine the decree accordingly.
Why is this case significant?
Abercrombie & Fitch v. Hunting World is foundational for trademark doctrine. It supplies the distinctiveness spectrum that appears in casebooks and on exams, anchors the genericness inquiry in consumer perception, and clarifies that incontestability is not a magic wand: generic marks remain unprotectable and cancellable. The decision also foregrounds the descriptive fair use defense and the idea of partial cancellation or tailored relief, both of which are crucial for balancing brand protection with competitive freedom to use common words. Law students should internalize its taxonomy, the "who-are-you vs. what-are-you" test, and the principle that the same word can occupy different rungs of the spectrum for different goods.
What is the Abercrombie spectrum of distinctiveness?
It classifies marks as generic, descriptive, suggestive, or arbitrary/fanciful. Generic terms (product names) are never protectable; descriptive terms are protectable only with secondary meaning; suggestive and arbitrary/fanciful terms are inherently distinctive and protectable without secondary meaning.
How did the court determine that "Safari" was generic for certain goods?
By examining the primary significance of the term to consumers, reflected in dictionary definitions, trade and media usage, and marketplace evidence showing "safari" denoted a recognized category or style of apparel (e.g., safari jackets, boots, hats), naming the product type rather than its source.
Does incontestability prevent a genericness challenge?
No. Incontestability does not convert a generic term into a trademark. The Lanham Act allows cancellation of registrations that are or become generic at any time, and incontestability remains subject to defenses like descriptive fair use.
What is the descriptive fair use defense, and how did it apply here?
Descriptive fair use permits a competitor to use a term descriptively and otherwise than as a mark, in good faith, to describe its goods' characteristics or style. Hunting World could use "safari" in its ordinary descriptive sense to indicate safari-style clothing, though it could not use the term as a source identifier in a confusing manner.
Can a word be generic for some goods but protectable for others?
Yes. The same term can occupy different rungs on the spectrum depending on the goods and consumer perception. "Safari" was generic for safari-style apparel but could be descriptive, suggestive, or arbitrary for other goods, warranting partial cancellation or tailored protection.
What practical relief did the court envision on remand?
The court directed tailoring: cancel or limit registrations insofar as "safari" is generic for certain goods; allow descriptive fair use by competitors; and, where the term is not generic and has distinctiveness or secondary meaning, permit limited enforcement against confusing trademark uses.