Trademarks & Deceptive Trade Practices

Final Examination

1995 IPSI

Professor Hennessey

General Instructions

This is a two hour open-book exam. You may consult any written materials, but activity on the problem outside the exam room or discussion with any other person during the exam period is prohibited. The value of individual questions varies from 30 to 40 point:. Apportion Apportion your time in accordance with the value of the question. A 30-point question should take about 30 --r1tvits to answer,. and a 40-point question should take approximately 40 minnutes Total: 100 points G for 120 minutes (20 minutes to mad the exam). Be sure to put your exam number on each item which you submit to be graded. Do not put anything on the blue book which would identify 0, Please answer your questions in blue books. Write on only one side of the page and observe margins. Organize your answer before you begin to write and try to keep your answers concise. If you feel that the facts are less than sufficient to answer the question completely, state what additional pieces of information you would need to know to answer the question completely.
 


Basic Facts

Harley-Davidson is a manufacturer of motorcycles founded in 1903 in Milwaukee, Wisconsin, and is the only remaining manufacturer of motorcycles in the United States. Although it suffered numerous setbacks in its reputation due to mechical problems with its motorcycles during the 1970s, the company made a comeback in the 1980s by cultivating an image of freedom and carefree mobility which has engendered an avid following of loyal customers who identify with Harley-Davidson motorcycles. The "Harley legend" has penetrated deep into the psyche of the American consumer through appearances of its motorcycles in movies such as "Easy Ridee'. Ile company's slogan is "The Legend Rolls On Tm." The company has registered the its logo [see "N" on page 3], and also the word mark "HarleyDavidson" since 1947. The company in 1982 extended its brand image into placements on an assortment of motorcycle accessories and merchandise, including leather clothing leather clothing, patches, boots and other protective gear, T-shirts, and jewelry. The company has recently approached the USPTO with an application to register the sound of a Harley-Davidson V-twin common crankpin motorcycle engine. When the motorcycle idles, the long-stroke Harley-Davidson engine is said to make a distinctive low rumbling sound that goes
 


"puh-tAy-duh, buh-tAy-duh, puh-tAy-duh, buh-tAy-duh


Question 1. [30 points] Advise Harley-Davidson as to whether it can get a trademark registration for the sound of its engine, and if so, what evidence they will have to present to the USPTO in support of a trademark application. What possible ground or grounds might a competitor raise in an opposition proceeding under Section 13 of the Lanham Act?
 


Additional Facts

Duane Hopper is a "Harley-Davidson motorcycle enthusiast" who owns and rides a candy-purple and pearl-white Harley-Davidson 1958 XLCH Sportster with a "fat-guy" tail assembly (to help him support his 285 pound girth) , a silhouette seat lowered two inches and a "chopper" front end. Duane even had the letters "S-U-P-E-R G-L-I-D-E" (a registered trademark of the Harley-Davidson company) tattooed on his fingers at a motorcycle rally. Greg Gearhead is also a rider-owner of a Harley-Davidson motorcycle. Greg, from Cayuhoga Ohio, rides a 1973 93-cubic inch FX which he has customized with a "soft tail", red and orange flame stenciled fuel tank and. Sturgis AttitudeO solid aluminum wheels. He purchased the FX in an unmodified condition in 1986, and spent 2 years reboring and refitting the engine for greater horsepower and to enhance the distinctive "Harley sound". The body and chrome work took him a whole year. Greg and Duane met in April, 1989 on Ocean Boulevard in Daytona, Florida during the Harley-Davidson company-sponsored Freedom FestivalTm Freedom Ride?" during "Motorcycle Week." Duane had been looking for a Sportster like Greg's for 10 years, since he. saw one in a Chuck Norris movie at the Boscawen Drive-in T'heater. Greg and Duane struck up an immediate conversation; and after a long and arduous week of intense riding and partying in Daytona, they became fast friends.
 

Duane operated off and on a not-very-successful motorcycle repair shop out of his garage, which has a sign in front which said "Harley-Davidson Motorcycle Repairs", in Boscawen (pronounced "Blihs-kuh-wine') New Hampshire since he graduated from Franklin Pierce College of Lifelong Learning in 1972. Duane also sells used and obsolete Harley-Davidson motorcycle parts in his garage, but has never sought a license from Harley-Davidson for the use of its name in his business. (He didn't make much money; but he (Edn't need much money either for his lifestyle.) Duane also had on display in a barn behind his garage a large collection of motor-cycle memorabilia related to Harley-Davidson motorcycles, including literature, sips from old HarleyDavidson dealers, caps, old motorcycles, and related items. The sign in front of Duane's garage itself came from an old Harley-Davidson repair shop in Fast Concord which closed in the 1950's and belonged to his uncle Rick. In 1990, the HarleyDavidson company came to know about Duane's business of repairing HarleyDavidson motorcycles and selling used Harley-Davidson "memorabilia" when it started looking for a New Hampshire location for an authorized Harley-Davidson dealership. Duane was not the kind of person HarleyDavidson wanted for its exclusive New Hampshire franchise for new motorcycles sales, service, parts, accessories, and merchandise." A "Harley-Davidson Cafe", similar to "Planet Hollywood," is being planned for downtown Concord, New Hampshire.
Question 2. [30 points] Immediately upon learning about Duane's business in 1990, the Harley-Davidson Company wished to make Duane take down his sign, and to stop Duane from using the name "HarleyDavidson Motorcycle Repairs." A Harley-Davidson dealership costing $2 million had just been licensed to open for business across the town line from Boscawen in Salisbury, New Hampshire, 2 miles from Duane's humble garage. In order to get a court to issue a preliminary injunction preventing Duane from using the term "Harley-Davidson" absolutely in the name of his business, what facts will be important and what will Harley-Davidson have to demonstrate? How likely to succeed would Harley-Davidson be in getting such an injunction?

Additional Facts

Duane was really P.O.'d (that is, "angry') that the company to which he had given his allegiance had betrayed him by suing him. After a second get-together with Greg at Biker Week in Daytona in April 1991 and a cross-country trip in the summer of '92, Duane persuaded Greg to give up his job as an undercover police officer in Cayuhoga and to move to New Hampshire to help Greg "move up" from motorcycle repairs to ..customizing" motorcycles. Unlike die repair business, "customizing" involved the transformation of standard motorcycles to fit the unique personalities of the customer. The customer tells Duane each and everything to do to the motorcycle to customize it. Duane and Greg decided to name their business "Outlaw Riders Customizing." In addition to reconditioning motorcycles, their services include high quality painting and stenciling, chrome plating, and installation of accessories which personalize the bike for the individual rider. Greg and Duane advertised only by word of mouth among the close-knit New Hampshire biker community. By 1995, Greg and Duane's "Outlaw Riders Customizing" has become wildly popular in New Hampshire and their fame is spreading around biker rallies and campfires from coast to coast. AU of their customizing jobs are on Harley-Davidson motorcycles. (They are considering providing tattoo services under the "Outlaw" name as well but are too busy at the moment customizing bikes). Upon completion of a customized Harley-Davidson motorcycle, Greg and Duane provide the purchasers with gold-and black stick-on decals to add to their bikes if they wish. The decals, which read "Outlaw" and "Live Free Or Die" (the state motto of New Hampshire) with skulls and the term "RIP" [ requiescat in pace], are designed to fit exactly over the name "Harley-Davidson" on the motorcycle logo. Greg and Duane do not modify the genuine Harley-Davidson logos; they merely provide the decals which the customer can stick on themselves over the word-mark. When applied to the logo, the new designs appear (see, as an illustration, page 3 "B" and "C"). Traffic in the decals themselves has become big business for Greg and Duane, and they have taken out an advertisement offering for sale "Outlaw Decals" in a recent issue of "Hot Rod Bikes" Magazine. Their customers are Harley-Davidson owners from around the country (they are mainly lawyers) who are fed up with the company's new upscale corporate image. Harley-Davidson has received a number of complaints from less disaffected genuine Harley-Davidson owners (who are mainly doctors) that the image of outlaws and skulls is unwholesome for younger riders and promotes risk-taking antisocial behavior. Some mothers of young motorcycle riders and some presidential candidates are seeking a congressional investigation of Harley-Davidson's connection


Question 3. [40 points] Advise as to whether Harley-Davidson has any grounds under Federal or state law to get an injunction prohibiting Outlaw Riders from damaging the "brand loyalty" of its customers and the integrity of its registered trademarks caused by Ourlaw Riders' activities What defenses can be raised by Outlaw Riders? "Who" will prevail and why?


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