Business 8th Edition by Marianne Jennings

Exercise 13

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
This appeal primarily involves trademark issues as to whether the mark "HOG" as applied to large motorcycles is generic. [We] conclude that the word "hog" had become generic as applied to large motorcycles before Harley-Davidson began to make trademark use of "HOG" and that Harley-Davidson's attempt to withdraw this use of the word from the public domain cannot succeed.
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 word was used that way in the press at least as early as 1965, and frequently thereafter, prior to the 1980s when Harley first attempted to make trademark use of the term. Several dictionaries include a definition of "hog" as a motorcycle, especially a large one. 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.
See The Oxford Dictionary of Modern Slang (1992) ("hog noun U.S. A large, often old, car or motorcycle. 1967-."); American Heritage Dictionary (3d ed. 1992) ("hog. 4. Slang. A big, heavy motorcycle"); Eric Partridge, A Dictionary of Slang and Unconventional English (8th ed. 1984) ("hog n. 8. a homebuilt motorcycle.."); see also Glossary of Sportscycle Terms, Bike and Rider , Aug. 1992, at 84 ("HOG Old fashioned, heavyweight sportscycle").
A likely etymology of "hog" to mean a motorcycle is suggested in the entry for "road-hog" in Eric Partridge, A Dictionary of Slang and Unconventional English (6th ed. 1996), which reports that in the United States as early as 1891 "road-hog" was applied to an "inconsiderate" cyclist and somewhat later to motorists.
Beginning around the early 1970s and into the early 1980s, motorcyclists increasingly 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. That registration lists Harley-Davidson's first use as occurring in 1990.
Grottanelli opened a motorcycle repair shop under the name "The Hog Farm" in 1969. Since that time his shop has been located at various sites in western New York. 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..
In this case, one dictionary cites a generic use of "hog" to mean a large motorcycle as early as 1967, long before Harley's first trademark use of the word, and the recent dictionary editions continuing to define the word to mean a large motorcycle indicate that the word has not lost its generic meaning. We have observed that newspaper and magazine use of a word in a generic sense is "a strong indication of the general public's perception" that the word is generic.
Supporting the generic nature of "hog" as applied to motorcycles is Harley-Davidson's aversion to linking the word with its products until the early 1980s, long after the word was generic. 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. Though Harley-Davidson was not shown to have used the word "hog" in a generic sense, its deliberate resistance to linking the word to its products is nonetheless probative..
"Dual usage" in trademark law refers to a mark that starts out as proprietary and gradually become [ sic] generic as to some segments of the public. If such a mark "retains" trademark significance, injunctive relief must be carefully tailored to protect only the limited trademark use and not to bar the generic use. Our case, however, concerns a mark that starts out generic and is sought to be given trademark significance by a manufacturer.
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. "[H]og"* was a generic term in the language as applied to large motorcycles before the public (or at least some segments of it) began using the word to refer to Harley-Davidson motorcycles. 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 E 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.
When did the term hog , as applied to motorcycles, appear in the dictionary?