‘HOG’ trademark valid

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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.

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.