Motorcycle manufacturer has no trademark right in 'hog'

Content Regulation | Feature | February 8, 1999

Motorcycle manufacturer has no trademark right in 'hog'

02/08/99

NEW YORK--The U.S. Court of Appeals in New York City (2nd Cir.) ruled in mid-January that Harley-Davidson Inc. does not have a protectable trademark interest in the use of the word "hog" to describe its products.

The court ruled that the motorcycle manufacturer cannot stop a motorcycle repair shop in West Seneca, N.Y. from calling itself the Hog Farm and pushing "hog" products. However, the court did rule that the Hog Farm had to stop using a logo similar to the Harley-Davidson design.

Harley-Davidson sued the shop's owner after he started using the word "hog" in connection with events and merchandise. The company argued that a substantial segment of the relevant consumer market has long used the term "hog" to refer to Harley-Davidson motorcycles even before the company registered the term as a trademark.

The Hog Farm argued that its logo does suggest an association with Harley, but its use should be allowed because it is a constitutionally protectable parody. The repair shop also noted that it identifies itself as an unauthorized dealer, and argued that the word "hog" has become a generic term for large motorcycles.

The unanimous panel decided that the Hog Farm's use of "hog" did not violate Harley-Davidson's rights. The court states that a dictionary cites a generic use of "hog" to mean a large motorcycle long before Harley's first attempts to trademark the word. 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, the court noted. In fact, Harley-Davidson did not link the word to its products until the early 1980s, long after the word was associated with motorcycles, according to the court.

The court found that the repair shop's logo does not make any comment on the Harley-Davidson logo or the company, but just uses it to promote his own products and services. It therefore cannot receive the protection accorded to a parody, the court found. (Harley Davidson, Inc. v Grottanelli; Counsel: Peter Sommer, Buffalo)