Running head: Harley-Davidson, Inc. v Grottanelli

Harley-Davidson, Inc. v Grottanelli
Park University

HARLEY-DAVIDSON, INC. v. GROTTANELLI
91 F.Supp.2d 544 (2000)
HARLEY-DAVIDSON, INC., Plaintiff,
v.
Ronald GROTTANELLI, d/b/a The Hog Farm, Defendant.
No. 93-CV-144M.
United States District Court, W.D. New York.
March 24, 2000.
Michael, Best & Friedrich, Dyann L. Kostello, Milwaukee, WI, for plaintiff.
Phillips, Lytle, Hitchcock, Blaine & Huber, Peter K. Sommer, Buffalo, NY, for defendant.

Harley-Davidson, Inc. v Grottanelli
Harley-Davidson, Inc. v Grottanelli was heard before the court in October 21 through 24, 1996. A decision and order was entered March 20, 1997 in which it was found that the defendant was entitled to use the term “Hog Farm” in regards to the conduct of its business. Harley-Davidson, Inc. was entitled to a permanent injunction with respect to its “Bar and Shield” and “Hog” trademarks.
On April 9, 1997, the defendant moved to amend the courts findings and to amend the order from March 20, 1997. In addition, the defendant moved to amend the pleadings to conform with the evidence and for entry of judgment in his favor. In a judgment filed October 1, 1997, the court denied the motions and enjoined his use of the plaintiff’s “Bar and Shield” and “Hog” trademarks. The parties then appealed to the United States Court of Appeals for the Second Circuit were the court upheld the judgment as to the “Bar and Shield” trademarks, but reversed and remanded as to the “Hog” trademarks. The court found that “hog” is a generic term and the presumption of validity cannot protect a mark that is shown on strong evidence to be generic as to the relevant category of products prior to the proprietor’s trademark use and registration. (Harley-Davidson, Inc. v. Grottanelli, 2000). Accordingly, the court held that “Harley-Davidson may not prohibit Grottanelli from using ‘hog’ to identify his motorcycle products and services”

The plaintiff then asked for a rehearing, which was denied on March 19, 1999. The plaintiff (Harley-Davidson), declined to file a petition for a writ of certiorari. A petition for Writ of Certiorari is a document which a losing party files with the Supreme Court asking the Supreme Court to review the decision of a lower court (Certiorari, 2012). This court heard oral argument on the scope of the amended injunction on August 25, 1999. Several issues were raised at that time that require disposition prior to the entry of an amended injunction.
The plaintiff asked the court to address its claim of unfair competition under the Lanham Act, 15 U.S.C. § 1125. As I previously found that plaintiff was entitled to an injunction with respect to both the "Hog" and "Bar and Shield" trademarks, it was not necessary at that time to address the plaintiff's claim of unfair competition under the Lanham Act. In light of the Second Circuit's finding that "hog" is generic, however, the claim of unfair competition impacts on the scope of the amended injunction. While the Second Circuit found that "hog" is generic as applied to large motorcycles and that defendant may use the word to identify its motorcycles and products, plaintiff may nonetheless raise a claim of unfair competition under the Lanham Act. Genesee Brewing Co., Inc. v. Stroh Brewing Company,124 F.3d 137, 149 (2d Cir.1997), Murphy Door Bed Co. v. Interior Sleep Systems,874 F.2d 95, 102 (2d Cir.1989). To recover on a claim of unfair competition under the Lanham Act, the plaintiff must show 1) an association of origin by the consumer between "hog" and Harley-Davidson, and 2) a likelihood of consumer confusion when the mark is applied to the defendant's goods. See Genesee Brewing, supra, at 150. (Harley-Davidson, Inc. v. Grottanelli, 2000).
It was found that the mere use of the work “hog,” regardless of how it is displayed, cannot be said to be a cause of customer confusion, unless the defendant uses the term in conjunction with the name “Harley-Davidson” or other Harley-Davidson trademarks.

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Bibliography
Harley-Davidson, Inc. v. Grottanelli, 93-CV-144M (United States District Court March 24, 2000).
Certiorari. (2012, September 24). Retrieved from techlawjournal.com: http://www.techlawjournal.com/glossary/legal/certiorari.htm

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