Abercrombie & Fitch Co. v. HUNTING WORLD, INCORPORATED

• Decision Date: 23 April 1971
• Docket Number: No. 70 Civ. 377.,70 Civ. 377.
• Citation: 327 F. Supp. 657
• Parties: ABERCROMBIE & FITCH CO., Plaintiff, v. HUNTING WORLD, INCORPORATED, Defendant.
• Court: U.S. District Court — Southern District of New York

327 F. Supp. 657

ABERCROMBIE & FITCH CO., Plaintiff, v. HUNTING WORLD, INCORPORATED, Defendant.

No. 70 Civ. 377.

United States District Court, S. D. New York.

April 23, 1971.

COPYRIGHT MATERIAL OMITTED

Sandoe, Hopgood & Calimafde, New York City, for plaintiff; Roy C. Hopgood, New York City, of counsel.

Sulzberger, Wels & Marcus, New York City for defendant; Richard H. Wels, New York City, of counsel.

LASKER, District Judge.

Defendant, Hunting World, Inc., moves for summary judgment pursuant to Rule 56(b) of the Federal Rules of Civil Procedure seeking a determination that it has not infringed plaintiff's trademark rights in the word "Safari." The complaint alleges infringements under the Trade-Mark Act of 1946 (Lanham Act), 15 U.S.C.A. §§ 1051-1127, and Article 24 of the General Business Law of New York, McKinney's Consol.Laws, c. 20. Jurisdiction is founded on 28 U.S.C.A. § 1332(a) and 15 U.S.C.A. § 1121.

FACTS

Plaintiff is a New York corporation which since 1904 has specialized in the sale of high quality sporting goods designed to appeal to the more affluent purchaser.

As early as 1919, a trademark in the words "Safari Mills" had been granted to a certain Robert A. Suffern to be used in connection with cotton goods. This trademark was renewed in 1939 and thereafter assigned to Abercrombie & Fitch; it was again renewed by Abercrombie in 1959. The plaintiff began using the word "Safari" in connection with men's and women's outer garments in 1936, and registered a trademark using the word "Safari" for that type of clothing in 1938.

In 1957 "Safari" was registered as plaintiff's trademark for shirts, shoes, belts, fishing vests, wading jackets and swim suits. Between 1957 and 1968 the trademark "Safari" was registered as to further products: woven cloth sporting goods apparel, hats, luggage, a portable grill, insulated ice chests, camping tents, axes, and smoking pipe tobacco. Finally, in 1964, under New York law, plaintiff also registered the trademark "Safari" for luggage, sporting goods apparel (including shoes and hats), camping and outdoor equipment.

Abercrombie has advertised its products using the "Safari" trademark in its catalogues, of which some 400,000 have been distributed over the past eight years, and in newspapers in New York, Chicago, San Francisco and other cities where plaintiff maintains stores. Since 1936 plaintiff asserts that it has retailed some $19,000,000 worth of goods with the "Safari" label. Plaintiff does not state how much of its advertising has been devoted to promoting the "Safari" label. It claims that it has policed its rights to the trademark "Safari" in exchanges of letters or Patent Office proceedings in some 56 instances since 1950, the bulk occurring in the 1960's.

Defendant is a New York corporation which began its business in New York City in 1965 as an outgrowth of Lee Expeditions, Ltd., an organizer of safaris and expeditions in Africa, Asia and India. Lee Expeditions continues to seek products in those areas for distribution through Hunting World. All of Hunting World's merchandise is related to safaris and hunting, either for use in such activity or designed to evoke the spirit of such activity, as, for example, in pictures and art work of wildlife and hunting, hunt trophies, or exotic products such as elephant skin clothing products.

Hunting World markets an ankle-high boot called a chukka, advertised as "The Safari Chukka" with such puffing in the ads as "Safari Shoes from Safariland! —Made in Kenya by Kenya's finest bootmakers —Authenticity." Defendant also markets hats for use on actual safaris and distributes a model with the brim cut down called a "Minisafari" which it had advertised in the New York press with the Code "TM" displayed, indicating its intent to protect the name with trademark registration.

Hunting World describes a section of its New York City store as "Safariland." This is also the title of a New York corporation, Safariland, Ltd., owned by the President of Hunting World, Robert M. Lee. "Safariland" has been used with the code "TM" but appears not to be a registered trademark up to now. Safariland News is the name of a newsletter issued at irregular intervals over the past eleven years by Lee Expeditions and by Hunting World. Defendant also sells some luggage made of elephant leather and zebra skin, and has marketed clothing designed for use on a safari described as "Kalahari" (after the African desert) or as "Safari clothes from Safari Country."

The parties here agree that "the word `safari' is a word found in Swahili and Arabic languages, which, since prior to 1892, has been adopted into the English language, and is commonly used and understood 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." (Defendant's General Rule 9(g) Statement, paragraph 3; "Admitted" in Plaintiff's Rule 9(g) Statement).

CONTENTIONS OF THE PARTIES AND ISSUES TO BE DETERMINED

The complaint alleges that defendant's use of the word "Safari" alone or in combination with other words ("Minisafari" or "Safariland") infringes plaintiff's trademark. It presses the usual arguments in a case of this type that (a) the public is confused into believing that defendant's products are those of the plaintiff, (b) defendant's activities have injured plaintiff's reputation and good will, (c) defendant's use of the word derogates the value of plaintiff's trademark, and (d) destroys the natural extension by plaintiff of its use of the word "Safari." Plaintiff further claims that defendant has, in its application for trademark registrations, misrepresented the origins of the terms "Minisafari" and "Safariland" and as to defendant's right to use them exclusively.

In addition to denying these allegations, defendant asserts several defenses and counterclaims. It argues (a) that "safari" is a descriptive word not subject to exclusive trademark use and that defendant has used it only in a descriptive manner; (b) that defendant's use of the word in coined expressions ("Minisafari" and "Safariland") is entitled to protection because of their novelty and distinction; (c) that since "safari" is a common word as to which plaintiff has developed no secondary meaning, the plaintiff has misrepresented the facts in registering its trademark; (d) that plaintiff is guilty of laches in bringing this suit; and (e) that plaintiff has assigned its rights to the trademark and therefore lacks standing to sue.

As indicated in the footnote¹, we find no merit in defendant's contentions of misrepresentation by plaintiff or of laches or lack of standing to sue. We proceed, therefore, to the residual but key issues, which are:

(1) May the word "Safari" alone be validly registered as a trademark?

(2) If so, may summary judgment be granted as to any of the defendant's uses of the word "Safari"?

(1) Can there be a trademark in the word "Safari"?

Defendant argues that a "common, ordinary, descriptive word as `safari' is may not be appropriated through the device of a trademark registration, and others thereby prevented from making use of it." (Memorandum of Law in Support of Defendant's Motion at 3). These contentions, however, are an oversimplification of the law.

We start from the proposition, acknowledged by the parties, that the word "safari" has entered widely into the common vocabulary of English-speaking peoples. Its general meaning is set forth above, and this meaning is substantially correct according to lexicographers.² It is used in a variety of descriptive senses related to its basic meaning. Cf. the use of the word in United States ex rel. Bennett v. Rundle, 419 F.2d 599 (3d Cir. 1969).

It is, of course, true that "descriptive words receive less protection under the law of trademarks than fanciful or coined words because words in our general vocabulary which all can use to describe products or services should not be unduly limited." Safeway Stores, Inc. v. Safeway Properties, Inc., 307 F.2d 495, 498 (2d Cir. 1962). Nonetheless, descriptive words indicative of origin may be registered as trademarks.³ As was concisely stated in W. E. Bassett Co. v. Revlon, Inc., 354 F.2d 868, 871 (2d Cir. 1966):

"The purpose of the trademark laws is to protect the public from the confusion and deception which flows from the copying of marks which, through their distinctiveness or exclusivity of use, identify the origin of the marked products. Marks descriptive of a product seldom perform this function. Moreover, since there are only so many words that can accurately describe a type of product, the law does not favor trademark monopolization of such descriptive terms. See 15 U.S.C. § 1052 (e). Consequently, a mark that is merely descriptive of a class of products will receive no protection against infringement unless it has acquired `secondary meaning,' i. e., unless the `primary significance of the term in the minds of the consuming public is not the product but the producer.' Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118, 59 S.Ct. 109, 113, 83 L.Ed. 73 * * *. See Safeway Stores, Inc. v. Safeway Properties, Inc., 307 F.2d 495 (2 Cir. 1962)." (Emphasis added.)

Although "safari" is a generic word, a genuine issue of fact exists as to whether the plaintiff has created a secondary meaning in its use of the word "identifying the source" and showing that "purchasers are moved to buy it because of its source," Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 697 (2d Cir. 1961); see also American Lead Pencil Co. v. L. Gottlieb & Sons, 181 F. 178, 181 (2d Cir. 1910, Judge Learned Hand). Plaintiff is entitled to establish in the discovery process or on trial its contention that a secondary meaning has been created. Accordingly, summary judgment cannot be granted on this issue.⁴

(2) May summary judgment be granted on any of defendant's uses of "Safari"?

...