‘HOG’
trademark valid
Applied
to motorcyclists, 'hog' is not generic term
By
David Ziemer
david.ziemer@wislawjournal.com
August
13, 2007
Next
August, hundreds of thousands of motorcycles and motorcyclists will return to
Milwaukee for the 105th anniversary of the founding of the Harley-Davidson Motor
Company.
Local
businesses are already thinking about how to make a profit from the event.
However,
they need to know about an Aug. 2 decision from the Seventh Circuit, holding that,
while it is legal to use the term “hog” to refer to motorcycles in their
marketing, it is not legal to use it to refer to motorcyclists.
So,
unless they want to lose those profits paying attorneys to argue about the difference
between marketing that uses the word “hog” to refer to motorcycles,
and marketing that refers to motorcyclists, they would be wise to avoid the term
altogether.
Precedent
Binding
precedent from the Second Circuit holds that Harley-Davidson has no trademark
in the word “hog” to describe large motorcycles. Harley-Davidson, Inc.,
v. Grottanelli, 164 F.3d 806 (2d Cir. 1999).
The
court in Grottanelli found that the word “hog” was generic as applied
to large motorcycles as early as 1967, while Harley-Davidson did not begin using
the world until the 1980s, and actually had tried to disassociate itself from
the word before then.
The
defendant in Grottanelli had operated a motorcycle repair shop called the “The
Hog Farm” since 1969. He also used the word hog in connection with events
and products: “Hog Holidays”; “Hog Farm Holidays”; “Hog
Wash” engine degreaser; and a “Hog Trivia” board game.
Because
“hog” was a generic term for a large motorcycle before Harley-Davidson
trademarked the word, the court held that Grottanelli could not be enjoined from
using “hog” to identify his products and services.
Nevertheless,
when a company called Top Quality Service, Inc., marketed an ocean cruise for
motorcycle enthusiasts, called “HOGS ON THE HIGH SEAS,” Harley-Davidson
alleged trademark infringement in Wisconsin federal court, claiming that Top Quality
was violating its trademarks for the Harley Owners Group — “HOG”
and “H.O.G.” (HOG was formed in 1983).
Citing
Grottanelli, District Judge Charles N. Clevert, Jr., granted summary judgment
in Top Quality’s favor, but the Seventh Circuit reversed, in a decision by
Judge Joel M. Flaum, over a dissent by Judge Terence T. Evans.
| What
the court held Case:
H-D Michigan, Inc., v. Top Quality Service, Inc., No. 06-3618 Issue:
Can Harley-Davidson enjoin others from using the word ‘hog’ to market their products? Holding:
Yes. Although
'hog' is a generic term for large motorcycles, it is not a generic term for a
motorcycle club, and can therefore be trademarked. |
Collateral
Estoppel
The
court first held that Harley is not collaterally estopped from bringing suit,
despite the holding in Grottanelli.
The
court agreed with Harley that the two cases present different issues: in Grottanelli,
the Second Circuit evaluated whether the word “hog” was generic as applied
to large motorcycles; in this case, the issue is whether “hog” was generic
as applied to a motorcyclist club.
Protectability
Turning
to the merits, the court concluded that “hog” is not generic as applied
to motorcyclist clubs, and therefore, Top Quality’s use of the word to advertise
to motorcyclists may violate Harley’s trademark.
The
court wrote, “The word ‘hog’ is not commonly used as a name for
a motorcyclist club. It is a name for a motorcycle. As such, Harley’s use
of the word ‘hog’ to refer to the Harley Owners Group is not generic;
rather, it is descriptive because it describes the club’s members: people
who enjoy motorcycles.”
The
court added, “Top Quality’s service does not invite motorcycles to travel
on the ocean; it invites motorcyclists to travel on the ocean. As a result, its
mark is not generic (emphasis in original).”
Because
Harley presented evidence of confusion on the part of customers, the court concluded
that Harley was entitled to a jury trial, and reversed the grant of summary judgment
in Top Quality’s favor.
Dissent
Judge
Evans dissented, concluding that Grottanelli cannot be distinguished from the
case at bar.
Evans
noted that the defendant in Grott-anelli was not manufacturing motorcycles and
calling them “Hogs,” but was using “hog” to describe his motorcycle
products and services.
Evans
opined, “as Grottanelli holds, Har-ley can’t commandeer and claim as
its own the generic slang term ‘hog.’ We should brand that attempt as
hogwash and affirm the grant of summary judgment for Top Quality that was entered
by Judge Clevert in the district court.
David
Ziemer can be reached by email.
