The Journal of The DuPage County Bar Association

Back Issues > Vol. 20 (2007-08)

Northern's Exposure
Commandeering Generic Slang: A “Hogwash” Decision Upholding Trademark Protection for Harley Davidson

by Jeffrey R. Hanes

Introduction. If it has not already, intellectual property is becoming one of the biggest buzzwords in both the business and legal fields. Included within the realm of intellectual property law are trademarks, copyrights, and patents. Trademarks are important because they play an integral role in a company’s ability to generate capital by serving a symbolic, expressive function that translates into market value.1 And although the importance of trademarks in today’s business world cannot be overemphasized, there must still be some boundaries as to what degree society is willing to afford protection to these marks. Questions frequently arise as to what extent a company should be allowed to protect and exercise the rights it is afforded by registering a mark.2 Debate is further fueled by the well-known potential abuses of those possessing such rights.3 Even during the many hearings over enactment of the 1946 Trademark Act representatives of the Department of Justice recognized this and raised objections on numerous occasions, asserting that trademarks are monopolistic and that statutory recognition and protection of trademarks favor big business.4

There is no doubt that a company should, and does, reserve the right to preclude another from trading on its good name, but a line exists at some point separating those expressions that are pro-tectable from those that are not. This article examines the decision of the Seventh Circuit Court of Appeals in H-D Michigan, Inc. v. Top Quality Service, Inc., where it made such a determination.5 By holding that Harley Davidson may protect the mark "Hog" under the facts arising in the case, this article argues that the Seventh Circuit has given holders of trademark rights far beyond those intended to the point where the court allowed Harley Davidson to protect a word that is essentially generic slang. Trademark Law. As defined within the United States Code, the term "trademark" refers to any word, name, symbol, device, or any combination thereof that is used by a person to identify and distinguish his or her goods from those manufactured or sold by others, and to indicate the source of the goods, even if that source is unknown.6 Originally it served to provide the origin or ownership of the article to which it was affixed.7 Like patent and copyright, trademark helped to protect the rights of the holder. However, as time went on and licensing and franchising became a popular means of allowing others to borrow or trade on a company’s goodwill, its function became more of an indicator or guarantee of quality for consumers.8 This underlying policy to protect society rather than the author, through consumer protection, is distinct from the other areas of intellectual property law. Regulating the marks a company may use protects against consumer confusion as to the source, sponsorship, or approval of goods or services or commercial activities of another.9 Trademark law typically works to benefit both parties because consumer protection generally aligns with a company’s interest in preventing confusion about its product.10

For a mark to be eligible to receive protection under trademark status, it must be a signal to the consuming public about the product and source.11 Require-ments for a word or symbol to qualify as a trademark are broken down into three essential elements: (1) it must be a word, name, symbol or device, or any com-bination of these; (2) the manu-facturer or seller of goods or services must have actual adoption and use of the symbol as a mark; and (3) the mark must serve the function of identifying and distinguishing the seller’s goods from goods made or sold by others.12 Once the holder of mark is able to prove these three elements, it will be able to receive full protection under trademark law.

However, protection will not be afforded where the mark sought as a trademark is merely descriptive—that is, a trademark that identifies the product and not the source.13 In this way, trademark law can guard against unjustified appro-priation from the public domain of terms needed to perform descrip-tive functions.14 And whereas a descriptive mark may become protectable if it acquires a secon-dary meaning, meaning that the product name has become uniquely associated with the original seller, a generic term will not receive trademark protection even if it acquires a secondary meaning.15 A generic term simply states what the product is and serves to denote a type, a kind, a genus or a subcategory of goods.16 To determine whether a mark is generic, courts apply the Ginn Test, which looks at (1) the genus of the goods and (2) whether it is understood by the relevant public primarily to refer to that genus of goods or service.17 In this sense, a company’s name may be generic as to one of its products but not another, even though related.Companies wishing to protect a trademark against use by another may file a claim pursuant to the Lanham Act, which has been codified at 15 U.S.C. § 1125(a). To succeed on a claim for trademark infringement, the company must show that (1) it is a trademark that may be protected and (2) the relevant group of buyers is likely to confuse the alleged infringer’s products or services with their own.18 Likelihood of confusion as used by the courts is actually a multi-factor balancing test. The courts look to, but are not limited by, what are known as the Polaroid factors.19 These factors include the strength of the mark, degree of similarity of the marks, proximity of the products, bridging the gap, actual confusion, junior user’s good faith in adopting the mark, quality of the respective goods, and sophistication of the relevant buyers.20 Polaroid factors only come into consideration after the court deems the mark to be one that is protectable.

Facts. The case currently at issue, H-D Michigan, Inc. v. Top Quality Service, Inc., arose over Top Quality Service, Inc.’s (Top Quality) use of the name "Hogs on the High Seas." 21 Top Quality was using the name to advertise ocean cruises for motorcyclist en-thusiasts. H-D Michigan, Inc. and Harley Davidson Motor Co., Inc. (collectively Harley) sued alleging trademark infringement, false designation of origin, and unfair competition under the Lanham Act and state law of its two trademarks, HOG and H.O.G., which it uses for its motorcyclist travel club, the Harley Owners Group.22 The case came to the Seventh Circuit Court of Appeals after the district court granted summary judgment in Top Quality’s favor, concluding Harley was collaterally estopped by a Second Circuit decision, Harley-Davidson, Inc. v. Grottanelli, from bringing trademark claims premised on use of the word hog to refer to motorcycle products or services.23

Evidence was brought at trial that some of Top Quality’s potential customers were confused as to whether the Harley Owners Group sponsored the cruises. Also at trial was evidence that Top Quality took steps to limit this confusion through posting state-ments on its website and printing statements on its literatures disclaiming association with Harley and the Harley Owners Group. Both of these facts were important because they became relevant in the balancing test used to decide whether there was a likelihood of confusion for consumers if the mark was protectable. The court concluded that Grottanelli was not controlling because it never decided whether Grottanelli’s use of the word "hog" was generic and therefore did not apply. The holding was that the mark "Hog" was protectable under the current facts, and there was a likelihood of confusion because of the evidence offered of actual confusion.24 As a result of this analysis, the Seventh Circuit reversed the district court’s ruling that granted summary judgment in Top Quality’s favor and essentially gave Harley free reign to protect its mark in any similar matter. Analysis. There can be no doubt that actual confusion existed among consumers over use of the mark "Hog." Courts ordinarily find evidence of actual confusion sufficient to create a genuine issue of material fact on the issue of likelihood of confusion.25 If this were all that was needed to prove a trademark infringement case, I would agree with the current outcome as held by the majority. However, a mark must first be protectable before a court should even address the issue of likelihood of confusion. Under the facts of this case, I believe the mark "Hogs," as used by Top Quality, is a generic mark and therefore not protectable by Harley.

In Grottanelli, the court looked back at public use of the word hog. It found that, in the late 1960s and early 1970s, motorcycle enthusiasts used the word "hog" to refer to motorcycles generally and to large motorcycles in particular—over a decade before Harley’s first attempt to make trademark use of the term.26 Looking at this use of the word, it seems clear that "hog" was understood by the relevant public primarily to refer to that genus of goods, therefore making it generic as applied to motorcycles. In fact, as the word hog increasingly gained use in reference to Harley-Davidson motorcycles, Harley went out of its way to try and disassociate itself from the word.27 It was not until Harley’s new owners recog-nized the financial value behind that mark that Harley began using the term in connection with its merchandise, accessories, ad-vertising and promotions, and formed the Harley Owners’ Group (H.O.G.).28 It often happens that a trademark holder, after investing considerable sums of money to develop and protect its mark, must fight to keep its mark from being deemed generic and thus falling into the public domain.29 Here Harley did the opposite, it spent considerable sums of money to develop and protect a mark that it wished to pull out of the public domain.

Harley may only prevent another’s use of a mark that is protectable in the first place. Prior to Harley’s first attempt to trademark "Hog," the term was already included in several dictionaries defining it as a motorcycle, especially a large motorcycle.30 Once deemed to be generic, a word cannot be with-drawn from the public domain. Harley was free to trademark the term "Hog" but only as it applied to a motorcycle enthusiast club, other uses of the word would remain in the public domain. Top Quality can hardly be said to be making reference to motorcycle clubs, therefore use of "Hogs on the High Seas" should not be precluded because of Harley’s trademark in either "HOG" or "H.O.G." Harley cannot commandeer generic slang and claim it as its own.31 Allowing it to do so is decision heavily against the weight of the precedent set by Grottanelli and other cases addressing the same issue.Manufacturers may not take a word, or even a slang term, out of the public domain that has a generic meaning as to a category of products and appropriate it for its own trademark use.32 For this reason the court in Grottanelli concluded, "Harley-Davidson may not prohibit Grottanelli from using hog to identify his motorcycle products and services."33 As a result Grottanelli was not prohibited from sponsoring an event known as "Hog Holidays." Harley could only protect its mark as applied to motorcycle clubs. This language taken directly out of the opinion of the Grottanelli court contradicts the majority’s opinion in the current case, that the Grottanelli opinion never stated hog was "generic as applied to a motorcyclist club or to motorcycle products or services."34 Denying collateral estoppel based on this argument is basing it on an incorrect premise. I agree with the dissent of Judge Evans, who finds Grottanelli clearly applicable to motorcycles as well as motorcycle products and services.35 It would be hard to argue that in advertising "Hogs on the High Seas," Top Quality was referring to a club for motorcycle enthusiasts. A cruise is much more accurately described as a product or service than a club, and the use of "Hogs" in their advertisement seems to simply refer to motorcycles (even though no patrons were allowed to bring motorcycles aboard the ship). Even Harley recognized making a distinction between "Hog Holidays" and "Hogs on the High Seas" is a difficult one.36 Since Top Quality’s use parallels that of the use in Grottanelli and it does not refer to a motorcycle club, Harley should be precluded from protecting against use the mark by Top Quality in this instance. Conclusion. Trademark law is a useful tool in helping a company protect its good will and in protecting the consuming public. At the same time, trademark law also has limits set by previous cases establishing to what extent a company many protect a mark and what marks may be protected. The Seventh Circuit Court of Appeals, in H-D Michigan, Inc. v. Top Quality Service, Inc., went beyond those established means when it allowed Harley to preclude Top Quality’s use of "Hogs."37 Both the majority and dissenting opinions agreed that Grottanelli was a controlling case, but the majority neglected the actual language of the case that made it applicable to motorcycle products and services.38 Reading the Grottanelli case correctly, as the dissent suggests, precludes Harley from preventing Top Quality’s use of the word. Additionally, the word "hog" was deemed generic far before Harley’s attempt to use it as a mark.39 Harley even went as far as trying to disassociate itself from the mark. It sets a bad precedent and interprets the prior case law incorrectly to allow Harley to seize a term out of the public domain and assert it as its own. For these reasons the Seventh Circuit held incorrectly when it reversed the holding of the lower court; we should "brand that attempt as hogwash."40

1 Deven R. Desai & Sandra L. Rierson, Confronting the Genericism Conundrum, 28 Cardozo L. Rev. 1789, 1794-96 (2007) (Trademarks translate into market value because brands may become "symbols by which people define and express themselves," causing them to spend "far beyond the cost of the utility of the good to reinforce that identity or have that means of expression").

2 See Alex Kozinski, Trademarks Unplugged, 68 N.Y.U. L. Rev. 960, 962-63 (1993) ("[w]here trademarks once served only to tell the consumer who made the product, they now often enhance it or become a functional part of it… [raising] questions about whether-and to what extent-the law should protect trademarks when they are pressed into service as separate products").

3 See e.g. Juno Online Services v. Juno Lighting, Inc., 979 F.Supp. 684 (N.D. Ill. 1997) (Juno Lighting, the owner of the Juno mark, attempted to cancel the domain name, which was registered by Juno Online to provide free e-mail services, and register the domain for itself).

4 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 5:4 (4th ed. 2007).

5 H-D Michigan, Inc. v. Top Quality Service, Inc., No. 06-3618, — F.3d ——, 2007 WL 2200477 (7th Cir. Aug. 2, 2007) (Harley Davidson initiated this suit for trademark infringement against Top Quality Service for its use of the name "Hogs on the High Seas," which it claimed infringed on its two trademarks Hog and H.O.G. that Harley uses for its motorcyclist travel club, the Harley Owners Group).

6 15 U.S.C. § 1127 ("trademark" may also refer to any word, name, symbol, or device not currently in use but that a person has applied to register with a bona fide intention to use).

7 Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 412 (1916).

8 Raveen Obhrai, Traditional and Contemporary Functions of Trademarks, 12 J. Contemp. Legal Issues 16, 17 (2001) (The trademark represents a consistent level of quality, whatever that level may be).

9 William E. Ridgway, Revitalizing the Doctrine of Trademark Misuse, 21 Berkeley Tech. L.J. 1547, 1557-58 (2006) (this saves the consumer time because he or she may rely on the distinctive marks as proxies for quality of the goods and services desired without undertaking independent research and investigation each time).

10 William E. Ridgway, Revitalizing the Doctrine of Trademark Misuse, 21 Berkeley Tech. L.J. 1547, 1548 (2006). A resulting byproduct of these two interests is an increase in the production quality of goods and services. Id. at 1558.

11 See MicroStrategy Inc. v. Motorola, Inc., 245 F.3d 335 (4th Cir. 2001) (mark must be a legitimate signal to be protectable as a trademark).

12 See Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995).

13 See G. Heileman Brewing Co., Inc. v. Anheuser-Busch, Inc., 873 F.2d 985 (7th Cir. 1989) (the mark "LA" was not protectable because its merely described the beer as low-alcohol beer).

14 Id. at 994 (citing Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901, 907 (7th Cir. 1983)).

15 See Custom Vehicles, Inc. v. Forest River, Inc., 476 F.3d 481 (7th Cir. 2007).

16 See G. Heileman Brewing Co., Inc. v. Anheuser-Busch, Inc., 873 F.2d 985 (7th Cir. 1989) ("LA" was found to be generic because it referred only to the type of beer).

17 H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986).

18 Forum Corp. of North America v. Forum, Ltd., 903 F.2d 434, 439 (7th Cir. 1990).

19 See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (the court listed factors relevant in analyzing the likelihood of confusion in trademark violation cases, giving more deference to some than others).

20 Id.

21 H-D Michigan, Inc. v. Top Quality Service, Inc., No. 06-3618, — F.3d ——, 2007 WL 2200477, at *1 (7th Cir. Aug. 2, 2007).

22 Id. (Harley filed an opposition proceeding in response to Top Quality’s application to register "Hogs on the High Seas in connection with travel arrangements in the nature of cruises for motorcycle owners and enthusiasts).

23 Id. at *2 (citing Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806 (2d Cir. 1999)).

24 Id. at *6 (The court found that Grottanelli only held "Hog" was generic as applied to large motorcycles and did not resolve the issue as applied to a motorcyclist club. It also found that the term "Hog" was generic as applied to motorcycles not and not in reference to the Harley Owners Group since it is not a commonly used name for a motorcyclist club. Furthermore, the court held Top Quality’s use was not generic because it was referring to motorcyclists traveling on the ocean and not motorcycles.)

25 See Thane Intern., Inc. v. Trek Bicycle Corp., 305 F.3d 894, 902 (9th Cir. 2002) (evidence produced at trial of actual confusion constitutes persuasive proof that future confusion is likely to occur).

26 Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806, 808 (2d Cir. 1999).

27 Id. at 809 (Harley-Davidson’s Manager of Trademark Enforcement acknowledged this attempt).

28 Deven R. Desai & Sandra L. Rierson, Confronting the Genericism Conundrum, 28 Cardozo L. Rev. 1789, 1790 (2007) (a company’s marketing goal is usually to build brand dominance to the point of ubiquity, so that the brand is the first thing on a consumer’s mind when considering a purchase of a particular type of good).

29 H-D Michigan, Inc. v. Top Quality Service, Inc., No. 06-3618, — F.3d ——, 2007 WL 2200477, at *6 (7th Cir. Aug. 2, 2007) (Evans, J., dissenting) (the opinion did not discuss motorcycle clubs).

30 Grottanelli, 164 F.3d at 808 (citing

The Oxford Dictionary of Modern Slang (1992)).

31 H-D Michigan, Inc. v. Top Quality Service, Inc., No. 06-3618, — F.3d ——, 2007 WL 2200477, at *7 (7th Cir. Aug. 2, 2007) (Evans, J., dissenting).

32 Grottanelli, 164 F.3d at 810 (citing Abercrombie & Fitch Co. v. Hunting World, Inc. 537 F.2d 4, 9 (2d Cir. 1976).

33 Id. at 812.

34 H-D Michigan, Inc. v. Top Quality Service, Inc., No. 06-3618, — F.3d ——, 2007 WL 2200477, at *4 (7th Cir. Aug. 2, 2007).

35 Id. at *6.

36 Id. at *7.

37 See Id.

38 See Grottanelli, 164 F.3d at 810.

39 See The Oxford Dictionary of Modern Slang (1992)).

40 H-D Michigan, Inc. v. Top Quality Service, Inc., No. 06-3618, — F.3d ——, 2007 WL 2200477, at *7 (7th Cir. Aug. 2, 2007) (Evans, J., dissenting).

Jeffrey R. Hanes is a third-year law student at Northern Illinois University College of Law. He is a Lead Articles Editor of the Law Review and member of the Moot Court Society. He graduated in 2005 from the University of Wisconsin-Madison with a B.S. in Biology; J.D. expected May H-D Michigan, Inc. v. Top Quality Service, Inc.
Case Note

DCBA Brief