A federal appellate court answered that question in a recent trademark infringement suit, in which the defendant operated a motorcycle repair shop known as “The Hog Farm.” In his promotional materials, he prominently displayed the bar-and-shield design mark owned by Harley-Davidson, the renowned manufacturer of large motorcycles. The defendant’s materials also referred to his business as an “Unauthorized Dealer.” Harley sued to forbid the defendant’s infringing use of Harley’s design trademark and his use of the term “hog,” for which Harley claimed protection as a trademark.
For many years, motorcycle aficionados informally used the term “hog” to refer to large motorcycles, and in particular to those manufactured by Harley. At first, Harley was not entirely content with the association of its products with the term “hog,” since that term had become identified with some of the more unsavory motorcycle enthusiasts. Later, however, Harley changed its corporate mind and decided that the association of the term “hog” with its brawny motorcycles was, on balance, positive. Accordingly, it sought and obtained trademark registration for the term “hog,” used in connection with motorcycle products and services.
Despite the registration of the mark, the appeals court concluded that the term “hog” had become generically associated with all large motorcycles, not only those manufactured and sold by Harley. No protection could be claimed by Harley for the term “hog” and thus there could be no infringement by the defendant in using that term in the context of his motorcycle repair business. While a rose may always be a rose, a hog is not always a Harley.
The defendant’s unauthorized use of Harley’s design mark was quite another matter. The defendant claimed it was merely using the mark as a parody of the Harley name and identity. A lawful use of a trademark as a parody must comment on or inform the original use of the mark by the mark’s owner. Here, the defendant was using the alleged parody not to comment on Harley’s mark but instead to sell a competing service, because Harley’s authorized dealers also provide motorcycle service and parts. The court concluded that the defendant’s use of the mark infringed Harley’s design mark.
In addition, the defendant’s use of the phrase “Unauthorized Dealer” was not sufficient to disclaim association with Harley-Davidson. Rarely will the use of a disclaimer be sufficient to avoid the possibility of confusion and thus the defendant was found liable for infringement.