Four different categories of terms have been identified 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 that 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, 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.
For many years plaintiff used the mark "Safari" on articles of clothing sold by it in its sporting goods stores. Plaintiff filed an action for trademark infringement against defendant, which according to the plaintiff, had engaged in the retail marketing of sporting apparel, some identified by use of "Safari" alone or by expressions such as "Minisafari" and "Safariland." The District Court for the Southern District of New York dismissed the complaint and canceled all of plaintiff's trademark registrations for "Safari."
Did the District Court err in dismissing plaintiff’s trademark infringement complaint against defendant?
The Court ruled that although plaintiff for many years had used the mark "Safari" on articles of clothing sold, defendant established its rights to use similar derivations of the term in selling its own line of sporting apparel. Specifically, the Court held that: (1) "Safari" had become a generic term and "Minisafari" could be used for a smaller brim hat; (2) "Safari" had not, however, become a generic term for boots or shoes; it was either suggestive or merely descriptive and was a valid trademark even if merely descriptive because it had become incontestable under the Lanham Act; but (3) in light of the justified finding that "Camel Safari," "Hippo Safari" and "Safari Chukka" were devoted by defendant to a purely descriptive use on its boots, defendant had a defense against a charge of infringement on the basis of fair use.