Cengage Advantage Books: Foundations of the Legal Environment of Business 3rd Edition by Marianne Jennings

تمرين 10

Harley-Davidson, Inc. v. Grottanelli 164 F.3d 806 (2d Cir. 1999); cert. denied , 531 U.S. 1103 (2001)
When Is a Hog Generic?
Facts
Harley-Davidson (Harley-Davidson, Harley, or the company), a corporation based in Milwaukee, Wisconsin, manufactures and sells motorcycles, motorcycle parts and accessories, apparel, and other motorcycle-related merchandise. It brought suit against The Hog Farm, owned by Ronald Grottanelli (Grottanelli), for its use of the word "hog" in its business name and in reference to other products. Harley maintains that "hog" is a trademark associated with its motorcycles.
The lower court enjoined Mr. Grottanelli from using the term "hog" in his store except as to his store's name, which he could keep so long as confined to a narrow geographic area. Mr. Grottanelli appealed, as did Harley-Davidson (the latter to request a more narrow geographic scope for use of "The Hog Farm" name by Mr. Grottanelli).
Judicial Opinion
NEWMAN, Circuit Judge
In the late 1960s and early 1970s, the word "hog" was used by motorcycle enthusiasts to refer to motorcycles generally and to large motorcycles in particular. The October 1975 issue of Street Chopper contained an article entitled "Honda Hog," indicating that the word "hog" was generic as to motorcycles and needed a trade name adjective.
Beginning around the early 1970s and into the early 1980s, motorcyclists came to use the word "hog" when referring to Harley-Davidson motorcycles. However, for several years, as Harley-Davidson's Manager of Trademark Enforcement acknowledged, the company attempted to disassociate itself from the word "hog."
The Magistrate Judge drew the reasonable inference that the company wished to distance itself from the connection between "hog" as applied to motorcycles and unsavory elements of the population, such as Hell's Angels, who were among those applying the term to Harley-Davidson motorcycles.
In 1981, Harley-Davidson's new owners recognized that the term "hog" had financial value and began using the term in connection with its merchandise, accessories, advertising, and promotions. In 1983, it formed the Harley Owners' Group, pointedly using the acronym "H.O.G." In 1987, it registered the acronym in conjunction with various logos. It subsequently registered the mark "HOG" for motorcycles.
Grottanelli opened a motorcycle repair shop under the name "The Hog Farm" in 1969. At some point after 1981, Grottanelli also began using the word "hog" in connection with events and merchandise. He has sponsored an event alternatively known as "Hog Holidays" and "Hog Farm Holidays," and sold products such as "Hog Wash" engine degreaser and a "Hog Trivia" board game.…
Harley's Manager of Trademark Enforcement acknowledged that in the past Harley had attempted to disassociate itself from the term "hog." As the Magistrate Judge noted, Harley's own history of the company, "The Big Book of Harley-Davidson," makes no reference to "hog" as relating to its products before the early 1980s.
Harley-Davidson suggests, albeit in a footnote, that it is entitled to trademark use of "HOG" as applied to motorcycles because a substantial segment of the relevant consumers began to use the term specifically to refer to Harley-Davidson motorcycles before the company made trademark use of the term.… The public has no more right than a manufacturer to withdraw from the language a generic term, already applicable to the relevant category of products, and accord it trademark significance, at least as long as the term retains some generic meaning.
The public may also take a trademark and give it a generic meaning that is new. See Lucasfilm, Ltd. v. High Frontier , 622 F. Supp. 931 (D.D.C.1985) ("Strategic Defense Initiative" referred to as "Star Wars Program" without infringing movie trademark STAR WARS).
For all of these reasons, Harley-Davidson may not prohibit Grottanelli from using "hog" to identify his motorcycle products and services. Like any other manufacturer with a product identified by a word that is generic, Harley-Davidson will have to rely on all or a portion of its trade name (or other protectable marks) to identify its brand of motorcycles, e.g., "Harley Hogs."
Reversed.
Case Questions
1. Which of the two parties was first to use the term hog ?
2. What was the effect of Harley-Davidson trying to distance itself from hog for a time?
3. Can Harley-Davidson reclaim the term hog from its generic standing?