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Source: http://www.ostrolenk.com/publications/00448768.htm
December 6, 2003

"Hog" Generic for Large Motorcycles
Peter S. Sloane, Editor
Ostrolenk, Faber, Gerb & Soffen, LLP
Introductory Note
This is the first installment of the Trademark Committee Bulletin for 1999. Jonathan Bloom of Weil, Gotshal & Manges has done an outstanding job editing the publication over the past several years. The Trademark Committee is pleased to note, however, that Jonathan has been promoted to Editor of Bright Ideas, the publication of the Intellectual Property law Section. Until the Trademark Committee appoints a replacement, I will serve as Editor. If you are interested in serving as Editor, or if you wish to write an installment of the Bulletin, please feel free to contact me or my Co-Chair Carol Witchel at White & Case.
Second Circuit Holds "hog" Generic for Large Motorcycles
In a decision concerning a slice of Americana, Harley-Davidson, Inc. v. Ronald Grottanelli, 1999 U.S. App. LEXIS 565 (January 15, 1999), the United States Court of Appeals for the Second Circuit (the "Appellate Court") held that the word "hog" is generic as applied to large motorcycles and, therefore, unprotectable as a trademark. The Appellate Court therefore reversed a decision by the United States District Court for the Western District of New York (the "lower Court") which had granted Harley-Davidson an injunction against the use of the word "hog" by a motorcycle service dealer named Ronald Grottanelli. The Appellate Court, however, affirmed the lower Court decision finding Grottanelli liable for infringing Harley-Davidson's bar-and-shield design.
In enjoining Grottanelli from making various trademark uses of the word "hog", the lower Court applied new York State's anti-dilution statute. The Judge found that HOG had become a strong trademark based upon Harley-Davidson's prior use and registration. Beginning around 1983, Harley-Davidson had begun to commercialize the word "hog" when it formed the Harley Owners' Group ("H.O.G."). In 1987, it obtained registrations of design marks which incorporated H.O.G. and a registration of the word mark HOG for motorcycles claiming a date of first use in 1990. However, the Appellate Court found that the evidence of record demonstrated that beginning in the late 1960's and early 1970's, prior to Harley-Davidson's attempt to commercialize "hog" as a mark, the word "hog" was used by motorcycle enthusiasts and the press to refer to motorcycles generally and to large motorcycles in particular.
The Appellate Court rebuffed all of Harley-Davidson's arguments that it owned a protectable mark. The Appellate Court first distinguished prior decisions favorable to Harley-Davidson concerning the mark HOG on the ground that there had never before been the extensive record of early generic usage. The Appellate Court then distinguished cases where trademark rights had been reacquired in generic terms, like SINGER and GOODYEAR, or where trademarks had become generic to some segments of the public but not others, like ACE for American Cinema Editors and BUG for Volkswagen cars, on the ground that those marks did not start out generic.
The Appellate Court suggested that although Harley-Davidson may not prohibit Grottanelli from using "hog" to identify his motorcycle products and services, like any other manufacturer selling a product identified by a generic word, it could rely on its trade name, as in AHarley Hogs@, to identify its brand of motorcycles.
Notwithstanding its decision that "hog" is generic as applied to large motorcycles, the Appellate Court affirmed the lower Court's decision to enjoin Grottanelli from using a logo modeled on Harley-Davidson's bar-and-shield design. In doing so, the Appellate Court struck down Grottanelli's defenses of parody, disclaimer, and laches.
First, the Appellate Court explained that although it had accorded considerable leeway to parodists whose expressive works aimed their parodic commentary at a trademark, it had not hesitated to prevent a manufacturer from using an alleged parody of a competitor's mark to sell a competing product. The Appellate Court found that Grottanelli's use of a bar-and-shield logo on newsletters and t-shirts to promote his repair and parts business made no comment on Harley-Davidson's mark. Though perhaps humorous, it was not a permitted trademark parody.
Second, Grottanelli based his disclaimer defense on the addition of the word AUNAUTHORIZED DEALER@ to his version of the bar-and-shield logo. The Appellate court sharply discounted the value in avoiding consumer confusion of adding AUN@ before AAUTHORIZED DEALER@ on signage designed to attract speeding motorcyclists.
Third, the Appellate Court rejected Grottanelli's defense of laches on the ground that he had unclean hands in attempting to confuse consumers. Grottanelli had admitted that his use of the bar-and-shield logo was a purposeful attempt to suggest an associated with Harley-Davidson. The Appellate Court concluded that Grottanelli would not be prejudiced if enjoined from using his version of Harley-Davidson's bar-and-shield logo, that Harley-Davidson had previously communicated its concern about the early versions of Grottanelli's logo, and that there was no evidence that Harley-Davidson was aware of Grottanelli's current activities.
In summary, the Appellate Court's decision to reverse the lower Court ruling is not surprising considering the substantial evidence that the word "hog" had been used generically to refer to large motorcycles years before Harley-Davidson had attempted to capitalize on its commercial value by claiming trademark rights. Increasingly, companies like Harley-Davidson are seeking to maximize profits through product merchandising programs supported by vigorous trademark policing efforts. However, these companies should be mindful that a trademark is only protectable if consumers understand that it distinguishes the companies' products from those of its competitors and, just as importantly, originally indicates a single source of origin rather than a type of product.
Harley-Davidson, Inc. v. Grottanelli, --F.3d-- (1999 WL 13271, 2nd Cir.)
or
164 F.3d 806 (2d Cir., 1999)

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