1. If a term is classified as generic, may a manufacturer enforce trademark usage of that term if it shows that a substantial segment of the relevant consumer population believes the term refers to the products of that manufacturer?

2. Did the court accept Grottanelli’s parody defense?

3. Did Grottanelli’s disclaimer that he was an unauthorized dealer enable him to avoid liability for infringement of Harley’s bar-and-shield logo?

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 variations of its bar-and-shield logo. Ronald 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 fromthe 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 words “Unauthorized Dealer.”

From a judgment for Harley for infringement of the barand- shield trademark and an injunction prohibiting the use of the word hog in reference to some of his products and services, Grottanelli appealed.

JUDICIAL OPINION

NEWMAN, J.…

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, 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 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. 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 barand- 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.”………………………….