Harley-Davidson, Inc. v. Grottanelli

• Decision Date: 15 January 1999
• Docket Number: Docket Nos. 97-9446,HARLEY-DAVIDSO,INC
• Parties: , Plaintiff-Appellee-Cross-Appellant, v. Ronald GROTTANELLI, doing business as The Hog Farm, Defendant-Appellant-Cross-Appellee. (L), 97-9464(XAP)
• Court: U.S. Court of Appeals — Second Circuit

Page 806

164 F.3d 806

49 U.S.P.Q.2d 1458

HARLEY-DAVIDSON, INC., Plaintiff-Appellee-Cross-Appellant, v. Ronald GROTTANELLI, doing business as The Hog Farm,

Defendant-Appellant-Cross-Appellee.

Docket Nos. 97-9446(L), 97-9464(XAP)

United States Court of Appeals, Second Circuit.

Argued June 11, 1998.

Decided Jan. 15, 1999.

Peter K. Sommer, Buffalo, N.Y. (Joseph N. Del Vecchio, Phillips, Lytle, Hitchcock, Blaine & Huber, Buffalo, N.Y., on the brief), for defendant-appellant.

Michael E. Husmann, Milwaukee, Wis. (Dyann L. Kostello, Katherine W. Schill, Michael, Best & Friedrich, Milwaukee, Wis.; Charles Sullivan, Sullivan & Gallion, New York, N.Y., on the brief), for plaintiff-appellee.

Before: NEWMAN, McLAUGHLIN, and PARKER, Circuit Judges.

JON O. NEWMAN, Circuit Judge:

This appeal primarily involves trademark issues as to whether the mark "HOG" as applied to large motorcycles is generic and whether a logo is insulated from an infringement claim as a permissible parody. These issues arise on an appeal by Ronald Grottanelli d/b/a The Hog Farm ("Grottanelli") from the October 1, 1997, judgment of the District Court for the Western District of New York (Edmund F. Maxwell, Magistrate Judge ¹), entered in a suit brought by Harley-Davidson, Inc. ("Harley-Davidson," "Harley," or "the company"). The judgment enjoins Grottanelli from using the word "hog" in reference to some of his products and services and from using his logo modeled on Harley-Davidson's bar-and-shield design mark; however, the injunction permits Grottanelli's continued use of the mark "THE HOG FARM" to identify his motorcycle service business within a geographically defined trading area. Harley-Davidson cross-appeals, contending that the Court should have narrowed the geographic area in which Grottanelli may use the mark "THE HOG FARM".

We affirm the judgment to the extent that it found Grottanelli liable for infringement of Harley-Davidson's bar-and-shield design mark and enjoined his future use of that mark. However, 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. We therefore affirm in part, reverse in part, and remand.

Background

Harley-Davidson, a corporation based in Milwaukee, Wisconsin, manufactures and sells motorcycles, motorcycle parts and accessories, apparel, and other motorcycle-related merchandise. Two sets of Harley-Davidson's marks are at issue in this case: the word "hog," used either to refer to its motorcycles or to an officially sponsored bikers association, and its bar-and-shield logo.

1. The Word "Hog" Applied to Motorcycles

Public use of the word "hog". 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, ² and frequently thereafter, ³ 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. ⁴ The October 1975 issue of Street Chopper contained an article entitled "Honda Hog," ⁵ indicating that the word "hog" was generic as to motorcycles and needed a tradename adjective.

Beginning around the early 1970s and into the early 1980s, motorcyclists increasingly came to use the word "hog" when referring to Harley-Davidson motorcycles. ⁶ 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.

Harley-Davidson's use of the word "hog". 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's use of the word "hog". 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.

2. The Bar-and-Shield Logo

Harley-Davidson's use of the logo. Since approximately 1909, Harley-Davidson has used variations of its bar-and-shield logo--a shield traversed across the middle by a horizontal bar. The words "Motor" and "Cycles" (or sometimes "Company") appear at the chief and base of the shield, respectively, and the name "Harley-Davidson" appears on the horizontal bar. Variations of the bar-and-shield logo were registered with the United States Patent and Trademark Office in 1982 and thereafter.

Grottanelli's use of the logo. By 1979, Grottanelli had begun using variants of Harley-Davidson's bar-and-shield logo. His 1979 advertisements include a hand-drawn copy of the bar-and-shield logo, with the name "Harley-Davidson" displayed on the horizontal bar. Since 1982, in response to letters of protest from Harley-Davidson, Grottanelli has replaced the words "Harley-Davidson" on the horizontal bar of his logo with the words "American-Made." He has also placed a banner at the bottom of his logo with the words "UNAUTHORIZED DEALER." In 1986, Grottanelli began using his current logo, which adds an eagle's wings behind the shield. This addition was apparently patterned after Harley-Davidson's bicentennial logo design mark, which included an eagle above the shield. Grottanelli's 1986 version of his logo also features a drawing of a pig wearing sunglasses. Grottanelli acknowledged at trial that his bar-and-shield logo is his version of Harley-Davidson's logo and that his version is "supposed to be similar, but confusing ... [t]o a Harley-Davidson bar and shield."

District Court's rulings. The District Court concluded (i) that Grottanelli was the senior user of the mark "THE HOG FARM", and that his use of this mark did not violate Harley-Davidson's rights in the mark "HOG", (ii) that Grottanelli's other uses of the word "hog," without the word "farm," violated New York's anti-dilution statute, N.Y. Gen. Bus. L. § 368-d, (iii) that Harley-Davidson was the senior user of its registered bar-and-shield trademark, (iv) that Grottanelli's use of the bar-and-shield logo infringed plaintiff's mark and was not entitled to a parody defense, (v) that equity did not require the application of laches to allow Grottanelli to continue using the bar-and-shield logo, and (vi) that Grottanelli was not entitled to attorney's fees, because there was no evidence of Harley-Davidson's fraud or bad-faith in its attempt to bar Grottanelli from using the name "The Hog Farm." ⁷

The District Court subsequently issued a detailed injunction, which defined Grottanelli's trading area from 1982 to the present as the counties of Erie, Niagara, Chautauqua, Cattaraugus, Orleans, Genessee, Allegany, and Wyoming, all located in New York. The injunction permitted Grottanelli (i) to conduct business under the name "The Hog Farm" in his trading area, (ii) to continue publishing and distributing a newsletter under the name "The Hog Farm Report" within and beyond his trading area, (iii) to continue distributing business cards, leaflets, and other promotional materials through the use of his mailing list and at motorcycle-related events outside his trading area, and (iv) to sponsor an event known as the "Hog Farm Holidays." However, except to the extent permitted by the provisions summarized above, the injunction prohibited Grottanelli from using the following in signage, business cards, advertisements, products, or otherwise: (i) Harley Davidson's bar-and-shield trademarks, (ii) Harley-Davidson's trademarks incorporating the word "hog," "including but not limited to 'Hog Wash,' 'Hog Trivia,' and 'Hog Holidays,' " and (iii) any similar mark that so resembles any of the bar-and-shield or "HOG" trademarks "as to be likely to cause confusion, mistake, deception, or dilution."

Discussion

I. Use of the Word "Hog"

The District Court, applying New York's anti-dilution statute, N.Y. Gen. Bus. L. § 368-d, enjoined Grottanelli from making various trademark uses of the word "hog" (other than in the previously used tradename "The Hog Farm"). Harley-Davidson acknowledged at oral argument that its state law claim fails if "hog" is generic as applied to large motorcycles. No manufacturer can take out of the language a word, even a slang term, that has generic meaning as to a category of products and appropriate it for its own trademark use, see Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.1976) (applying Lanham Act); Restatement (Third) of Unfair Competition § 15 & cmt. b; 2 McCarthy on Trademarks and Unfair Competition §§ 12:1, 12:2, 12:11, 12:18 (4th ed.1998) [hereinafter "McCarthy"] and New York applies this same principle to its anti-dilution statute, see Telford Home Assistance, Inc. v. TPC Home Care Services, Inc., 211 A.D.2d 674, 674, 621 N.Y.S.2d 636, 636-37 (2d Dept.1995) (term "extended care" generic as to health services); see also Eastern Air Lines, Inc. v. New York Air Lines, Inc., 559...