concluding that registration “means not only that the burden of going forward is upon the contestant of the registration but that there is a strong presumption of validity so that the party claiming invalidity has the burden of proof and must put something more into the scales than the registrant.”
How later courts described this case
- concluding that registration “means not only that the burden of going forward is upon the contestant of the registration but that there is a strong presumption of validity so that the party claiming invalidity has the burden of proof and must put something more into the scales than the registrant.”
- holding that “Safari,” which was an incontestable trademarked term held by Abercrombie, had become a generic term for certain types of clothing, but not when used to refer to boots or shoes
- invalidating Abercrombie & Fitch’s SauaRI trademark on clothing and hats, but not on boots or shoes, the court noted that “[t]he word ‘Safari’ has become part of a family of generic terms which ... have come to be understood ... as terms within the language referring to contemporary American fashion apparel. These terms name the components of the safari outfit well known to the clothing industry and its customers: the ‘Safari hat,’ ... the ‘Safari jacket,’ ... [and] the ‘Safari suit.’ ... A & F stands on stronger ground -with respect to HW’s use of ‘Camel Safari,’ ‘Hippo Safari’ and Chukka ‘Safari’ as names for boots imported from Africa. As already indicated, there is no evidence that ‘Safari’ has become a generic term for boots”
- recognizing that the term “Safari” may be generic and therefore unprotectable when referring to African expeditions but may be a trademark when referring to suburban clothing
Written by the judges who cited it.
The opinion
PER CURIAM:
On Petition of Appellant for Rehearing
By petition for rehearing plaintiff-appellant, Abercrombie & Fitch Company (A&F), *15 requested us to alter our opinion filed January 16, 1976, in two respects: one was that footnote 14, p. 13, describing the scope of cancellation of Trademark Registration No. 703,279, be modified by omitting the word “shirts”. The other was that we should not uphold the “fair use” defense, pp. 13-14, as to Hippo Safari and Camel Safari shoes. We called upon defendant-appellee Hunting World, Inc. (HW) to answer.
We agree with A&F that footnote 14 was in error in indicating that Safari had become generic with respect to shirts. Since the mark has become incontestable, it is of no moment, on the issue of cancellation, that, as HW urges, the mark may now be “merely descriptive,” pp. 12-13. HW’s answer adduces nothing to show that Safari has become the “common descriptive name” for this type of shirt; indeed, HW admits never having advertised its own shirts as such. While HW asserts that “the record is clear that the upper garment of the safari suit is referred to interchangeably as a safari bush jacket and as a safari shirt,” the cited pages do not bear this out.
On the other hand we see no force in A&F’s criticisms of the portion of our opinion relating to the fair use defense with respect to Hippo Safari and Camel Safari shoes sufficient to lead us to change the views previously expressed or, indeed, to require further discussion.
The petition for rehearing is granted to the extent of striking the word “shirts” from fn. 14 on p. 13 and is otherwise denied.