## Facts

- Harley-Davidson manufactured motorcycles and related merchandise and used marks including “HOG” and the bar-and-shield design.
- Ronald Grottanelli operated a motorcycle repair and service business and sold motorcycle-related goods under the name “The Hog Farm.”
- Grottanelli used “hog” in connection with his business and employed a logo patterned after Harley-Davidson’s bar-and-shield mark, including language indicating he was an “unauthorized dealer.”
- Harley-Davidson sued for trademark infringement and related relief based on (1) Grottanelli’s “hog” uses and (2) his bar-and-shield-style logo.
- The district court permanently enjoined use of the bar-and-shield-style logo and certain “hog” uses, but allowed continued use of “The Hog Farm” within a defined local trading area.
- Grottanelli appealed the injunction, arguing (among other points) parody and equitable defenses; Harley-Davidson cross-appealed seeking a narrower geographic area for the permitted use of “The Hog Farm.”

## Issues

1. Whether “hog,” as applied to large motorcycles, was generic before Harley-Davidson’s trademark use, making it unprotectable against competitors’ use.
2. Whether Grottanelli’s bar-and-shield-style logo created a likelihood of confusion or was protected as a permissible parody.
3. Whether Grottanelli could continue using “The Hog Farm” to identify his business and, if so, within what geographic scope.
4. Whether equitable defenses (including laches) or state-law theories supported narrowing or expanding injunctive relief.

## Decision

- The Second Circuit affirmed in part, reversed in part, and remanded.
- The court held that “hog” was generic for large motorcycles before Harley-Davidson’s trademark use and could not be removed from the public domain.
- The court affirmed liability and injunctive relief for infringement of Harley-Davidson’s bar-and-shield design mark and rejected Grottanelli’s parody argument.
- The court permitted continued use of “The Hog Farm” as a business name in a defined trading area, subject to modification of the injunction on remand consistent with the genericness ruling.
- The court declined to treat Grottanelli’s equitable defenses as barring relief for the bar-and-shield infringement.

## Legal Principles

- Generic terms are not protectable trademarks for the goods they name and remain available for competitors’ ordinary use, even if a single seller has heavily marketed the term.
- A finding that a term is generic defeats trademark-based efforts to prohibit others from using the term in its generic meaning and limits related claims premised on distinctiveness.
- Trademark parody does not excuse infringement where the junior use is sufficiently similar to create a likelihood of consumer confusion as to source, sponsorship, or authorization.
- Disclaimers may be insufficient to avoid confusion when the overall trade dress or logo closely copies the distinctive identifying features of a famous mark.
- Injunctive relief may be tailored to allow continued local use of a business name where appropriate, while still prohibiting confusingly similar logo use.

## Conclusion

The court ruled that “hog” is generic for large motorcycles and therefore not enforceable to bar competitors’ generic use, but it enjoined Grottanelli’s imitation of Harley-Davidson’s bar-and-shield logo because it was likely to confuse consumers and was not saved by parody; it also allowed limited continued use of “The Hog Farm” subject to revision of the injunction on remand.


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