Class Notes (837,447)
United States (325,041)
PUBPOL 373 (27)
Frey (27)
Lecture 11

PUBPOL 373 Lecture 1: Abercrombie Fitch v Hunting World Inc 537 F 2d 4 _2d Cir 1976_

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Public Policy Studies

Abercrombie & Fitch Co. v. Hunting World, Inc. United States Court of Appeals, Second Circuit, 1976. 537 F.2d 4. FRIENDLY , IRCUIT JUDGE : This action in the District Court for the Southern District of New York by Abercrombie & Fitch Company (A & F), owner of well-known stores at Madison Avenue and 45th Street in New York City and seven places in other states, against Hunting World, Incorporated (HW), operator of a competing store on East 53rd Street, is for infringement of some of A & F's registered trademarks using the word "Safari". It has had a long and, for A & F, an unhappy history. On this appeal from a judgment which not only dismissed the complaint but canceled all of A & F's "Safari" registrations, including several that were not in suit, we relieve A & F of some of its unhappiness but not of all. I. The complaint, filed in January, 1970, after describing the general nature of A & F's business, reflecting its motto, "The Greatest Sporting Goods Store in the World," alleged as follows: For many years A & F 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. Its United States trademark registrations include: Trademark Number Issued Goods Safari 358,781 7/26/38 Men's and Women's outer garments, including hats. Safari Mills 125,531 5/20/19 Cotton Piece goods. Safari 652,098 9/24/57 Men's and Women's outer garments, including shoes. Safari 703,279 8/23/60 Woven cloth, sporting goods, apparel, etc. A & F 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. HW, the complaint continued, 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". Continuation of HW's acts would confuse and deceive the public and impair "the distinct and unique quality of the plaintiff's trademark." A & F sought an injunction against infringement and an accounting for damages and profits. HW filed an answer and counterclaim. This alleged, inter alia, 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. HW sought cancellation of all of A & F's registrations using the word "Safari" on the ground that A & F had fraudulently failed to disclose the true nature of the term to the Patent Office. * * * [The court discussed the procedural history, including a prior remand for a trial on the merits.] Judge Ryan, before whom the action was tried on remand, ruled broadly in HW's favor. He found there was frequent use of the word "Safari" in connection with wearing apparel, that A & F's policing efforts thus had evidently been unsuccessful, and that A & F had itself used the term in a descriptive sense not covered by its registration, e.g., in urging customers to make a "Christmas Gift Safari" to the A & F store. After referring to statements by Judge Lasker that "Safari" was a "weak" mark, the judge found the mark to be invalid. "Safari," the court held, "is merely descriptive and does not serve to distinguish plaintiff's goods as listed on the registration from anybody else's"; while such terms are afforded protection by the Lanham Act if they come to identify the company merchandising the product, rather than the product itself, A 4 F had failed to establish that this had become the situation with respect to "Safari". The opinion did not discuss A & F's assertion that some of its marks had become incontestable under § 15 of the Lanham Act, 15 U.S.C. § 1065. The court entered a judgment which dismissed the complaint and canceled not only the four registered trademarks in suit but all A & F's other registered "Safari" trademarks. A & F has appealed. II. It will be useful at the outset to restate some basic principles of trademark law, which, although they should be familiar, tend to become lost in a welter of adjectives. The cases, and in some instances the Lanham Act, identify four different categories of terms with respect to trademark protection. Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. The lines of demarcation, however, are not always bright. Moreover, the difficulties are compounded because a term tha6 is in one category for a particular product may be in quite a different one for another, because a term may shift from one category to another in light of differences in usage through time, 7 because a term may have one meaning to one group of users and a different one to others, and because the same term may be put to different uses with respect to a single product. In various ways, all of these complications are involved in the instant case. A generic term is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species. At common law neither those terms which were generic nor those which were merely descriptive could become valid trademarks, see Delaware & Hudson Canal Co. v. Clark, 80 U.S. (13 Wall.) 311, 323, 20 L.Ed. 581 (1872) ("Nor can a generic name, or a name merely descriptive of an article or its qualities, ingredients, or 4 This finding that A & F did not establish "secondary meaning" for its marks is not here disputed. 6 To take a familiar example "Ivory" would be generic when used to describe a product made from the tusks of elephants but arbitrary as applied to soap. 7See, e.g., Haughton Elevator Co. v. Seeberger, 85 U.S.P.Q. 80 (1950), in which the coined word "Escalator", originally fanciful, or at the very least suggestive, was held to have become generic. characteristics, be employed as a trademark and the exclusive use of it be entitled to legal protection"). The same was true under the Trademark Act of 1905, Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446, 31 S.Ct. 456, 55 L.Ed. 536 (1911), except for marks which had been the subject of exclusive use for ten years prior to its enactment, 33 Stat. 726. 10 While, as we shall see, the Lanham Act makes an important exception with respect to those merely descriptive terms which have acquired secondary meaning, see § 2(f), 15 U.S.C. § 1052(f), it offers no such exception for generic marks. The Act provides for the cancellation of a registered mark if at any time it "becomes the common descriptive name of an article or substance," § 14(c). This means that even proof of secondary meaning, by virtue of which some "merely descriptive" marks may be registered, cannot transform a generic term into a subject for trademark. As explained in J. Kohnstam, Ltd. v. Louis Marx and Company, 280 F.2d 437, 440, 47 CCPA 1080 (1960), no matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification, it cannot deprive competing manufacturers of the product of the right to call an article by its name. We have recently had occasion to apply this doctrine of the impossibility of achieving trademark protection for a generic term, CES Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d 11 (1975). The pervasiveness of the principle is illustrated by a series of well known cases holding that when a suggestive or fanciful term has become generic as a result of a manufacturer's own advertising efforts, trademark protection will be denied save for those markets where the term still has not become generic and a secondary meaning has been shown to continue. A term may thus be generic in one market and descriptive or suggestive or fanciful in another. The term which is descriptive but not generic stands on a better basis. Although § 2(e) of the Lanham Act, 15 U.S.C. § 1052, forbids the registration of a mark which, when applied to the goods of the applicant, is "merely descriptive," § 2(f) removes a considerable part of the sting by providing that "except as expressly excluded in paragraphs (a)-(d) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce" and that the Commissioner may accept, as prima facie evidence that the mark has become distinctive, proof of substantially exclusive and continuous use of the mark applied to the applicant's goods for five years preceding the application. As indicated in the cases cited in the discussion of the unregistrability of generic terms, "common descriptive name," as used in §§ 14(c) and 15(4), refers to generic terms applied to products and not to terms that are "merely descriptive." In the former case any claim to an exclusive right must be denied since this in effect would confer a monopoly not only of the mark 10 Some protection to descriptive marks which had acquired a secondary meaning was given by the law of unfair competition. The Trademark Act of 1920 permitted registration of certain descriptive marks which had acquired secondary meaning, see Armstrong Paint & Varnish Works v. Nu–Enamel Corp., 305 U.S. 315, 59 S.Ct. 191, 83 L.E11 195 (1938). See, e.g., W. E. Bassett Co. v. Revlon, Inc., 435 F.2d 656 (2 Cir.1970). A commentator has illuminated the distinction with an example of the "Deep Bowl Spoon": "Deep Bowl" identifies a significant characteristic of the article. It is "merely descriptive" of the goods, because it informs one that they are deep in the bowl portion.... It is not, however, "the common descriptive name" of the article (since) the implement is not a deep bowl, it is a spoon.... "Spoon" is not merely descriptive of the article it identifies the article (and therefore) the term is generic. Fletcher, Actual Confusion as to Incontestability of Descriptive Marks, 64 Trademark Rep. 252, 260 (1974). On the other hand, "Deep Bowl" would be generic as to a deep bowl. but of the product by rendering a competitor unable effectively to name what it was endeavoring to sell. In the latter case the law strikes the balance, with respect to registration, between the hardships to a competitor in hampering the use of an appropriate word and those to the owner who, having invested money and energy to endow a word with the good will adhering to his enterprise, would be deprived of the fruits of his efforts. The category of "suggestive" marks was spawned by the felt need to accord protection to marks that were neither exactly descriptive on the one hand nor truly fanciful on the other a need that was particularly acute because of the bar in the Trademark Act of 1905, 33 Stat. 724, 726, (with an exceedingly limited exception noted above) on the registration of merely descriptive marks regardless of proof of secondary meaning. See Orange Crush Co. v. California Crushed Fruit Co., 54 App.D.C. 313, 297 F. 892 (1924). Having created the category the courts have had great difficulty in defining it. Judge Learned Hand made the not very helpful statement: It is quite impossible to get any rule out of the cases beyond this: That the validity of the mark ends where suggestion ends and description begins. Franklin Knitting Mills, Inc. v. Fashionit Sweater Mills, Inc., 297 F. 247, 248 (S.D.N.Y.1923), aff'd per curiam, 4 F.2d 1018 (2 Cir.1925), a statement amply confirmed by comparing the list of terms held suggestive with those held merely descriptive in 3 Callmann, Unfair Competition, Trademarks and Monopolies § 71.2 (3d ed.). Another court has observed, somewhat more usefully, that: A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods. Stix Products, Inc. v. United Merchants & Manufacturers Inc., 295 F.Supp. 479, 488 (S.D.N.Y.1968) a formulation deriving from General Shoe Corp. v. Rosen, 111 F.2d 95, 98 (4 Cir.1940). Also useful is the approach taken by this court in Aluminum Fabricating Co. of Pittsburgh v. Season–All Window Corp., 259 F.2d 314 (2 Cir.1958), that the reason for restricting the protection accorded descriptive terms, namely the undesirability of preventing an entrant from using a descriptive term for his product, is much less forceful when the trademark is a suggestive word since, as Judge Lumbard wrote, 259 F.2d at 317: The English language has a wealth of synonyms and related words with which to describe the qualities which manufacturers may wish to claim for their products and the ingenuity of the public relations profession supplies new words and slogans as they are needed. If a term is suggestive, it is entitled to registration without proof of secondary meaning. Moreover, as held in the Season-All case, the decision of the Patent Office to register a mark without requiring proof of secondary meaning affords a rebuttable presumption that the mark is suggestive or arbitrary or fanciful rather than merely descriptive. 12 It need hardly be added that fanciful or arbitrary terms enjoy all the rights accorded to suggestive terms as marks without the need of debating whether the term is "merely descriptive" and with ease of establishing infringement. 1As terms of art, the distinctions between suggestive terms and fanciful or arbitrary terms may seem needlessly artificial. Of course, a common word may be used in a fanciful sense; indeed one might say that only a common word can be so used, since a coined word cannot first be put to a bizarre use. Nevertheless, the term "fanciful", as a classifying concept, is usually applied to words invented solely for their use as trademarks. When the same legal consequences attach to a common word, i. e., when it is applied in an unfamiliar way, the use is called "arbitrary.
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