Entertainment Law Spring 2021 Chapter 2 Case- Abercrombie & Fitch Co. v. Hunting World, Inc PDF

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Case brief from chapter 2: Abercrombie & Fitch Co. v. Hunting World, Inc...

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Entertainment Law Spring 2021 Chapter 2 Case: Abercrombie & Fitch Co. v. Hunting World, Inc. Abercrombie & Fitch Co. v. Hunting World, Inc. Rule of Law: The distinctiveness of a trademark can vary depending on how the mark is used. Facts: Abercrombie & Fitch Co. (A&F) (plaintiff) had trademarked the term “SAFARI” to describe specific types of clothing and footwear sold in A&F’s stores. Hunting World, Inc. (HW) (defendant) used the term “SAFARI” on HW’s clothing and footwear, in a newsletter, and to describe a portion of the HW store devoted to “SAFARI” products. A&F sued HW for trademark infringement and requested an injunction against HW to prevent HW’s use of the term “SAFARI.” The district court dismissed A&F’s complaint, and A&F appealed. Issue: Can the distinctiveness of a trademark vary depending on how the mark is used? Holding: Yes. A mark must be distinctive to receive trademark protection, but the distinctiveness of a trademark can vary depending on how the mark is used. Case law and the Lanham Act identity five categories of terms in an order reflecting the terms’ registerability as trademarks and the degree of protection afforded. If a term is generic, it may not be trademarked. “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.” This is a term that is so commonly known that according the owner a monopoly on the term would deprive other producers of having the right to refer to their products using common terms. The second category for a term is a descriptive term, which may be trademarked if it comes to be seen as distinctive of the manufacturer’s goods. The third category for a term is a suggestive term, which requires some reflection to connect the term to the nature of the good. Finally, the fourth and fifth categories of terms are fanciful and arbitrary terms, which are inherently distinctive and enjoy full trademark rights. Here, the distinctiveness of the "SAFARI" mark depends on how A&F uses the term. When used to identify apparel typically associated with going on safari in Africa, the term is generic and not entitled to protection. This includes the specific types of clothing advertised by both A&F and HW. However, with respect to footwear, the "SAFARI" mark is descriptive or suggestive, be-

cause footwear is not typically associated with the safari style. However, HW's footwear is a fair use of the mark because HW used the word safari to identify the footwear's African origin. Accordingly, the district court's decision dismissing A&F's action is affirmed....