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Abercrombie & Fitch Company, Plaintiff-appellant, v.

Hunting World, Incorporated,

Defendant-appellee, 461 F.2d 1040 (2d Cir. 1972)

Annotate this Case

U.S. Court of Appeals for the Second Circuit - 461 F.2d 1040 (2d Cir. 1972)

Argued Feb. 15, 1972. Decided April 26, 1972

Roy C. Hopgood, New York City (Sandoe, Hopgood & Calimafde, Paul H. Blaustein, New York
City, and Richard H. G. Cunningham, Stamford, Conn., on the brief), for plaintiff-appellant.

Richard H. Wels, New York City (Sulzberger, Wels & Marcus, New York City, on the brief), for

Before FEINBERG and TIMBERS, Circuit Judges, and THOMSEN, District Judge. *

THOMSEN, District Judge:

Abercrombie & Fitch Co. (plaintiff) sued Hunting World, Inc. (defendant) in the district court,
seeking an injunction against defendant's uses of the word "Safari", which plaintiff had
registered as a trademark for various classes of goods.1 Defendant moved for summary
judgment under Rule 56(b), F.R.Civ.P., on the ground that it had not infringed plaintiff's
trademark rights in the word "Safari". After considering the pleadings, several affidavits and
many exhibits filed by the respective parties, and after hearing argument, the district judge filed
an opinion, 327 F. Supp. 657 (S.D.N.Y. 1971), and entered an order which included the
following provisions: (1) "that the defendant's motion for summary judgment is granted to the
extent of holding that defendant's use of the word 'Safari' to describe its safari hat, 'Minisafari' to
describe its smaller safari hat, and the further use by the defendant of the coined word
'Safariland' to describe a part of its shop, as a corporate name, and as the name of a newsletter,
do not infringe such rights as plaintiff may have in the use of the word 'Safari', and to the further
extent of holding that defendant is entitled to use the word 'Safari' to describe those of its
products which relate to the practice or cult of safari"; (2) "that summary judgment be awarded
to each of the parties against the other in relation to the respective claims of misrepresentation
made by each of them"; and (3) "that in all other respects" defendant's motion for summary
judgment be denied.

Plaintiff sought and was denied a certification by the district court under 28 U.S.C. § 1292(b)
and Rule 54(b), F.R.Civ.P. It then appealed to this court, relying on Sec. 1292(a) (1), which
reads in pertinent part:

"(a) The courts of appeals shall have jurisdiction of appeals from:

"(1) Interlocutory orders of the district courts of the United States * * granting, continuing,
modifying, refusing or dissolving injunctions * *."
For the purposes of this appeal the facts are adequately stated in the opinion of the district
court. 327 F. Supp. at 659 et seq.

* In granting in part defendant's motion for summary judgment, the district court's order in effect
constituted a final denial on the merits of the injunctive relief prayed for by plaintiff as to those
uses by defendant of the word "safari" which the district court found not to violate any trademark
rights plaintiff may have in the word "safari". In these respects the order is appealable as an
interlocutory order refusing an injunction under Sec. 1292(a) (1).

Defendant argues that the order is not appealable, relying on Switzerland Cheese Association,
Inc. v. E. Horne's Market, Inc., 385 U.S. 23, 87 S. Ct. 193, 17 L. Ed. 2d 23 (1966), and Western
Geophysical Co. of America v. Bolt Associates, Inc., 440 F.2d 765 (2 Cir. 1971). Those cases,
however, are distinguishable.

In Switzerland Cheese the Court held that the denial of a plaintiff's motion for summary
judgment seeking injunctive relief was not a denial or refusal of an injunction within Sec. 1292(a)
(1) because it did not "settle or even tentatively decide anything about the merits of the claim. It
is strictly a pretrial order that decides only one thing-that the case should go to trial." 383 U.S. at
25, 87 S. Ct. at 195.2 The present appeal deals with a grant in part of defendant's motion for
summary judgment, which was, in effect, a final denial on the merits of plaintiff's request for an
injunction as to certain uses of the word "safari" by defendant.

In Western Geophysical this court declined to take appellate jurisdiction under Sec. 1292(a) (1)
where the district court had granted in part motions by a plaintiff and a third-party defendant for
summary judgment with respect to portions of several defenses and counterclaims raised by the
defendant, which portions sought injunctive relief against the movants. The rationale of the
decision was that no single counterclaim had been dismissed in its entirety and that the full
extent of injunctive relief prayed for by the defendant could still be secured in each of its
counterclaims. 440 F.2d at 771. In the present case, however, there are no remaining claims for
injunctive relief which would encompass those uses of the word "safari" as to which the district
court granted summary judgment in favor of defendant. Even if plaintiff should prevail on the
remaining issues, the summary judgment in favor of defendant with respect to certain uses of
the word "safari" by defendant would remain in effect.

Although a part of the district court's order is therefore appealable under Sec. 1292(a) (1), the
scope of appellate review is limited to that part of the order which resulted in a final denial of a
major portion of plaintiff's requested injunction. The comments, findings and conclusions of the
district court with respect to the issues on which an injunction was not refused are outside the
scope of a Sec. 1292(a) (1) appeal.


At the conclusion of his discussion of the issue-"May the word 'Safari' alone be validly registered
as a trademark?"-the district judge stated:

"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." 327 F. Supp. at 662.

Then, in proceeding to discuss the other issue-"May summary judgment be granted on any of
defendant's uses of 'Safari'?"- the judge continued:

"Even though plaintiff has registered 'Safari' as a mark for the products in issue here and the
question of secondary meaning remains undecided, ' [t]he registering of a proper noun as a
trademark does not withdraw it from the language, nor reduce it to the exclusive possession of
the registrant which may be jealously guarding it against any and all use by others.' Societe
Comptoir De L'Indus., etc. v. Alexander's Department Stores, Inc., 299 F.2d 33, 36 (2d Cir.
1962). * *" Id.

The judge then discussed several of defendant's uses of the word "Safari", alone or in
compound words. He found that in certain instances defendant uses the word descriptively
rather than as a trademark, despite evidence to the contrary, e. g., the letters "TM" after the
words "Mini-safari" and "Safariland". He concluded that some of the uses of the word were not
infringements, but that a genuine issue of fact exists as to whether plaintiff may be entitled to an
injunction with respect to other items, specifically shoes, and granted defendant's motion for
summary judgment only in part.

We intimate no opinion as to the ultimate merits of the case. But viewing the inferences to be
drawn from the underlying facts in the light most favorable to the party opposing the motion for
summary judgment,3 we conclude that genuine issues of fact exist which made it improper to
enter a summary judgment finally denying even in part the injunctive relief sought by plaintiff.

Reversed and remanded.

ANG V. TEODORO (G.R. NO. L-48226)

Respondent Teodoro has long been using ‘Ang Tibay’ both as trademark and tradename in the
manufacture and sale of its slippers, shoes and indoor baseballs when he formally registered it.
Meanwhile, petitioner Ang registered the same trademark ‘Ang Tibay’ for its products of pants
and shirts. Respondent moved to cancel the registration of petitioner’s mark. The trial court
found for petitioner Ang. CA reversed the judgment. Petitioner argues the validity of the mark
being descriptive; that it had not acquired secondary meaning in favor of respondent; and that
there can be no infringement/unfair competition because the goods are not similar.
(1) Whether or not ‘ANG TIBAY’ is a descriptive term not registrable.
(2) Whether or not the trademark ‘ANG TIBAY’ has acquired a secondary meaning.
(3) Whether or not there is trademark infringement and/or unfair competition between unrelated
(1) NO. The phrase “Ang Tibay” is an exclamation denoting administration of strength or
durability. For instance, one who tries hard but fails to break an object exclaims, “Ang tibay!”
(How strong!”) The phrase “ang tibay” is never used adjectively to define or describe an object.
One does not say, “ang tibay sapatos” or “sapatos ang tibay” is never used adjectively to define
or describe an object. One does not say, “ang tibay sapatos” or “sapatos ang tibay” to mean
“durable shoes,” but “matibay na sapatos” or “sapatos na matibay.” From all of this we deduce
that “Ang Tibay” is not a descriptive term within the meaning of the Trade-Mark Law but rather a
fanciful or coined phrase which may properly and legally be appropriated as a trademark or
tradename. In this connection we do not fail to note that when the petitioner herself took the
trouble and expense of securing the registration of these same words as a trademark of her
products she or her attorney as well as the Director of Commerce was undoubtedly convinced
that said words (Ang Tibay) were not a descriptive term and hence could be legally used and
validly registered as a trademark.
(2) NO. In view of the conclusion we have reached upon the first assignment of error, it is
unnecessary to apply here the doctrine of “secondary meaning” in trade-mark parlance. This
doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with
reference to an article of the market, because geographically or otherwise descriptive, might
nevertheless have been used so long and so exclusively by one producer with reference to his
article that, in that trade and to that branch of the purchasing public, the word or phrase has
come to mean that the article was his product. We have said that the phrase “Ang Tibay,” being
neither geographic nor descriptive, was originally capable of exclusive appropriation as a trade-
mark. But were it not so, the application of the doctrine of secondary meaning made by the
Court of Appeals could nevertheless be fully sustained because, in any event, by respondent’s
long and exclusive use of said phrase with reference to his products and his business, it has
acquired a proprietary connotation.
(3) YES. In the present state of development of the law on Trade-Marks, Unfair Competition,
and Unfair Trading, the test employed by the courts to determine whether noncompeting goods
are or are not of the same class is confusion as to the origin of the goods of the second user.
Although two noncompeting articles may be classified under two different classes by the Patent
Office because they are deemed not to possess the same descriptive properties, they would,
nevertheless, be held by the courts to belong to the same class if the simultaneous use on them
of identical or closely similar trade-marks would be likely to cause confusion as to the origin, or
personal source, of the second user’s goods. They would be considered as not falling under the
same class only if they are so dissimilar or so foreign to each other as to make it unlikely that
the purchaser would think the first user made the second user’s goods. The Court of Appeals
found in this case that by uninterrupted and exclusive use since 1910 of respondent’s registered
trade-mark on slippers and shoes manufactured by him, it has come to indicate the origin and
ownership of said goods. It is certainly not farfetched to surmise that the selection by petitioner
of the same trade-mark for pants and shirts was motivated by a desire to get a free ride on the
reputation and selling power it has acquired at the hands of the respondent.