537 F.2d 4 (2d Cir. 1976)
Abercrombie & Fitch Co. v.
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?
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).
"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.
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.