H-D Michigan, Inc. v. Top Quality Service, Inc.
2007 U.S. App. LEXIS 18337, 496 F.3d 755, 2007 WL 2200477 (2007)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
Collateral estoppel prevents relitigation of an issue only if the precise issue in the current case is identical to one actually litigated and essential to a final judgment in a prior case; a trademark term may be generic as applied to one product or service but descriptive as applied to another, even if related.
Facts:
- Harley-Davidson (Harley) is a universally recognized motorcycle manufacturer.
- In 1983, Harley established the Harley Owners Group (HOG), a social club for people who own Harley motorcycles, which later began offering travel services to members.
- Harley was issued the registered trademarks “HOG” and “H.O.G.” to refer to its motorcyclist club.
- Dean and Debbie Anderson, longtime Harley owners and Harley Owners Group members, conceived of offering ocean cruises for motorcyclists in 2001 after becoming dissatisfied with traditional motorcycle rallies.
- The Andersons, after Harley declined to sponsor their idea, incorporated Top Quality Service, Inc. (Top Quality) to sell their cruises.
- Top Quality decided to name its product “HOGS ON THE HIGH SEAS” and created advertisements and a website using language like “1st Annual Harley Owners’ Cruise Rally” and “all Harley Owners Cruise Ship Rally.”
- Ninety-seven percent of the passengers on Top Quality's first cruise owned Harley motorcycles, and evidence suggested some potential customers were confused about Top Quality's affiliation with Harley or the Harley Owners Group.
- Top Quality later added disclaimers to its website and literature stating its lack of association with Harley and the Harley Owners Group.
Procedural Posture:
- H-D Michigan, Inc. and Harley Davidson Motor Co., Inc. (Harley) filed a complaint against Top Quality Service, Inc. (Top Quality) in district court, alleging trademark infringement, false designation of origin, and unfair competition claims under the Lanham Act and state law.
- The parties subsequently filed cross-motions for summary judgment.
- The district court granted Top Quality’s motion for summary judgment and denied Harley’s motion, concluding that a Second Circuit decision (Harley Davidson, Inc. v. Grottanelli) collaterally estopped Harley from bringing trademark claims premised on the protectability of its 'H.O.G.' mark.
- Harley appealed the district court’s ruling granting Top Quality’s motion for summary judgment to the United States Court of Appeals for the Seventh Circuit.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does a prior Second Circuit decision, which held 'HOG' generic as applied to large motorcycles, collaterally estop Harley-Davidson from arguing that its 'HOG' and 'H.O.G.' marks are protectable as applied to a motorcyclist club, and is there a genuine issue of material fact regarding consumer confusion?
Opinions:
Majority - Flaum, Circuit Judge
No, a prior Second Circuit decision does not collaterally estop Harley-Davidson from arguing its 'HOG' and 'H.O.G.' marks are protectable for its motorcyclist club, and yes, there is a genuine issue of material fact regarding consumer confusion, precluding summary judgment. For collateral estoppel to apply, the issue sought to be precluded must be the same as that involved in the prior litigation. The court in Grottanelli explicitly and repeatedly stated that its holding was limited to 'hog' as applied to 'large motorcycles,' and never addressed whether it was generic for a motorcyclist club or all motorcycle products and services. Harley also conceded that its claim failed in Grottanelli if 'hog' was generic for large motorcycles, showing the limited scope of that prior litigation. Therefore, Harley is not collaterally estopped from asserting its claims. Furthermore, Harley's use of 'hog' for its club is not generic because 'hog' is not commonly used as a name for a motorcyclist club but rather for a motorcycle; its use is descriptive as it describes the club's members. Top Quality's use of 'HOGS' for cruises for motorcyclists, not actual motorcycles on the ocean, is also not generic. Since Harley's marks are protectable, and there is evidence of actual consumer confusion (consumer survey, customer inquiries), a genuine issue of material fact exists regarding the likelihood of confusion, which is sufficient to proceed to trial. The district court's unfair competition ruling, based on the erroneous genericness finding, is also reversed.
Dissenting - Evans, Circuit Judge
Yes, Harley Davidson v. Grottanelli should collaterally estop Harley-Davidson from pursuing these claims, as the decision cannot be credibly distinguished. The Grottanelli opinion, contrary to the majority's assertion, was indeed about motorcycle products and services, not just motorcycles. Grottanelli himself used 'hog' for products and services like 'Hog Farm Holidays' and 'Hog Wash' engine degreaser, and the Second Circuit specifically concluded that Harley could not prohibit him from using 'hog' to identify his 'motorcycle products and services.' It is disingenuous to distinguish 'Hog Holidays' from 'HOGS ON THE HIGH SEAS.' The majority's conclusion that Top Quality's use refers to a club is strained; Top Quality’s logo and use of 'hogs' refer to motorcycles, plain and simple, not a club. Given Grottanelli's careful analysis tracing 'hog' as a generic term for motorcycles back decades, its preclusive effect should be upheld to prevent Harley from commandeering a generic slang term.
Analysis:
This case significantly clarifies the application of collateral estoppel in trademark disputes, particularly when a term's genericness is context-dependent. It establishes that a finding of genericness for one class of goods or services does not automatically extend to all related uses if the previous litigation did not explicitly address those broader uses. This nuanced approach prevents overbroad preclusion and allows trademark holders to protect marks in specific contexts where they function as descriptive (with secondary meaning) rather than generic terms. The emphasis on the 'same issue' requirement reinforces the importance of precise legal framing in prior judgments for determining their preclusive effect.
