Seventh Circuit and Second Circuit at odds over HOG

In a decision seemingly at odds with a prior ruling by the US Court of Appeals for the Second Circuit, the Seventh Circuit has held that HOG is protectable as a trademark when used in connection with a motorcyclists travel club (Case 06-3618).

H-D Michigan and Harley-Davidson Motor Company Inc (hereinafter jointly referred to as 'Harley') brought a trademark infringement and unfair competition lawsuit against Top Quality Service Inc over Top Quality's use of the sign HOGS ON THE HIGH SEAS in connection with cruises for motorcycle enthusiasts. Harley has for many years used the term 'HOG' in connection with its Harley Owners Group, a social club established by Harley for people who own Harley-Davidson motorcycles. Both parties moved for summary judgment and the District Court for the Eastern District of Wisconsin granted Top Quality's motion, premising its decision on the collateral estoppel effect of the prior Second Circuit decision against Harley in Harley-Davidson Inc v Grottanelli (Case 164 F3d 806, 1999). In that case, the term 'HOG' was held to be generic for motorcycles, in particular, large motorcycles.

In reversing the district court's decision granting summary judgment against Harley, the Seventh Circuit distinguished the Second Circuit Grottanelli Case, and found that while the mark HOG may be generic for certain products and services, it is not generic for everything related to motorcycles. The court pointed out that case law supports the fact that a company's name may be generic as to one of its products, but not generic as to another of its products. Here, the court found that notwithstanding the Second Circuit's conclusions as to the use of the term 'HOG' in connection with motorcycle repair shops, board games, and motorcycle engine de-greasers, HOG was not generic for motorcyclists clubs.

Having concluded that Harley was not collaterally estopped from asserting the HOG mark, the court turned to its protectability and concluded that Harley's use of the term 'HOG' to refer to the Harley Owner's Group was descriptive because it describes the club's members namely, people who enjoy motorcycles. The court next addressed the likelihood of confusion issue, and viewed the consumer survey proffered by Harley as evidence of actual consumer confusion. Such evidence, the court found, was "sufficient to create a genuine issue of material fact on the issue of likelihood of confusion", and thus it reversed the grant of summary judgment and remanded the case to the district court.

Timothy J Kelly, Fitzpatrick Cella Harper & Scinto, New York