Case Summary for BOML 317 Week 2 Case Study Assignment No Hogging Generic Terms

Case Summary for BOML 317 Week 2 Case Study Assignment
No Hogging Generic Terms (pg. 156 of textbook)
Facts: Beginning in the late 1960s and thereafter, the word hog was used by motorcycle
enthusiasts to refer to large motorcycles. Into the early 1980s, motorcyclists came to use the
word hog when referring to Harley-Davidson (Harley) motorcycles. In 1981, Harley itself began
using hog in connection with its merchandise. In 1983, it formed Harley Owners Group, used the
acronym H.O.G., and registered the acronym in conjunction with various logos in 1987. Since
1909, Harley has used variation of its bar-and-shield logo. Ronal Grottanelli opened a
motorcycle repair shop under the name The Hog Farm in 1969. At some point after 1981, he sold
products such as Hog Wash engine degreaser and a Hog Trivia board game. Grottanelli had used
variants of Harley’s bar-and-shield logo since 1979 on signs and T-shirts, dropping the name
Harley-Davidson from the bar of the logo in 1982 after receiving a letter of protest from the
company. He continued to use the bar and shield, however, and featured a drawing of a pig
wearing sunglasses and a banner with the world “Unauthorized Dealer.” From a judgment for
Harley for infringement of the bar-and-shield trademark and an injunction prohibiting the use of
the word hog in reference to some of his products and services, Grottanelli appealed.
Decision: Hog was a generic word in the language applied to large motorcycles before segments
of the public began using it to refer to Harley-Davidson motorcycles. Neither a manufacturer nor
the public can withdraw from the language a generic term, already applicable to a category of
products, and accord it trademark significance as long as the term retains some generic meaning.
It was an error to prohibit Grottanelli from using the word hog. Harley must rely on a portion of
it’s trademark to identify the brand of motorcycles, for example, Harley Hogs. Grottanelli was
properly enjoined from using the bar-and-shield logo. Grottanelli’s mark uses Harley’s mark in a
somewhat humorous manner to promote his own products, which is not permitted trademark
parody use. The use of the prefix “UN” before “AUTHORIZED DEALER” is no defense. The
courts have ordinarily found the use of such disclaimers insufficient to avoid liability for
infringement. [Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806 (2d Cir. 1999)]
Directions: Please review the case and thoroughly explain whether you agree with the court’s
ruling. In your analysis be sure to utilize the factors noted in Section 9-1d of the text where
relevant.
Be sure to include a title page and references. Your response should be 2-3 double-spaced pages
(not including title page and references).
Be sure to reference the attached rubric when crafting your argument.