Harley-Davidson Motor Company Group, LLC et al v. Galan Enterprises, Inc.

Filing 1

COMPLAINT filed by All Plaintiffs against Galan Enterprises, Inc. with Jury Demand. Plaintiff requests summons issued. Receipt No: 0645-2935551 - Fee: $ 350. County of 1st Plaintiff: Washtenaw - County Where Action Arose: Washtenaw - County of 1st Defendant: Out of State. [Previously dismissed case: No] [Possible companion case(s): None] (Swedlow, Deborah) (Entered: 04/15/2011)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN

H-D MICHIGAN, LLC, a Michigan limited
)
liability company and
)
HARLEY-DAVIDSON MOTOR COMPANY
)
GROUP, LLC d/b/a HARLEY-DAVIDSON
)
MOTOR COMPANY, a Wisconsin limited liability )
company,
)
)
Plaintiffs,
)
)
v.
)
)
GALAN ENTERPRISES, INC., an Arizona
)
corporation,
)
)
Defendant.
)
)

Civil Action No. ____________
JURY TRIAL REQUESTED

COMPLAINT
Plaintiffs H-D Michigan, LLC and Harley-Davidson Motor Company Group, LLC d/b/a
Harley-Davidson Motor Company (collectively referred to as “Harley” along with their
predecessors in interest and licensees), allege as follows, upon actual knowledge with respect to
themselves and their own acts, and upon information and belief as to all other matters:
NATURE OF THE ACTION
1. This is a civil action for trademark counterfeiting, trademark infringement, trademark
dilution, and unfair competition arising under federal, state, and/or common law. Harley seeks
equitable and monetary relief from Defendant’s multiple, willful violations of Harley’s
trademark rights in its famous and federally registered HARLEY-DAVIDSON, HARLEY, and
Bar & Shield Logo marks, among other Harley marks. Defendant’s unauthorized promotion and
sale of metal signs and novelty motorcycle licenses prominently featuring Harley’s marks and

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variations thereof infringes and dilutes Harley’s marks, and constitutes counterfeiting and unfair
competition.
THE PARTIES
2. Plaintiff H-D Michigan, LLC is a Michigan limited liability company located at 315
W. Huron Street, Suite 400, Ann Arbor, Michigan 48103, and is the owner of the trademark
rights asserted in this action.
3. Plaintiff Harley-Davidson Motor Company Group, LLC d/b/a Harley-Davidson
Motor Company, is a Wisconsin limited liability company having its principal place of business
at 3700 W. Juneau Avenue, Milwaukee, Wisconsin, 53208, and is a licensee of the trademarks of
H-D Michigan, LLC asserted in this action.
4. Defendant Galan Enterprises, Inc. is an Arizona corporation located at 2740 W.
Windrose Drive, Phoenix, Arizona, 85029.
5. Defendant has never been an authorized Harley dealer or a licensee of Harley’s
marks.
JURISDICTION AND VENUE
6. This Court has jurisdiction over the subject matter of this action pursuant to 15 U.S.C.
§ 1121 and 28 U.S.C. §§ 1331, 1338(a) and (b). Because the parties are citizens of different
states, and the matter in controversy exceeds $75,000, exclusive of interest and costs, this Court
also has jurisdiction under 28 U.S.C. § 1332. Jurisdiction over the state law claims is also
appropriate under 28 U.S.C. § 1367(a) and principles of pendent jurisdiction because those
claims are substantially related to the federal claims.
7. This Court has personal jurisdiction over Defendant and venue is proper in the
Eastern District of Michigan pursuant to 28 U.S.C. § 1391(b) and (c) because Harley is located
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and is being harmed in this District. Further, Defendant conducts business in this District and the
activity about which Harley complains has taken place and is continuing to take place in this
District, including but not limited to Defendant’s use of counterfeit, infringing, and dilutive
marks for its products, which are promoted, directed, and/or sold to consumers and potential
consumers in this District via Defendant, its website, and through other means.
HARLEY, ITS PRODUCTS AND SERVICES, AND ITS FAMOUS TRADEMARKS
8. Harley is a world-famous manufacturer of motorcycles and related products and
services, and is the largest manufacturer of motorcycles in the U.S.
9. Harley has been engaged in the manufacture, advertising, and sale of motorcycles and
related products since 1903.
10. Since at least as early as 1903, Harley has used and promoted the HARLEYDAVIDSON mark for motorcycles and related products and services in the U.S. For decades,
Harley has also used the HARLEY mark for those products and services in the U.S.
11. Since at least as early as 1910, Harley has used a Bar & Shield Logo mark (and
variations thereof) in the U.S., including but not limited to those shown below (collectively
referred to as the “Bar & Shield Logo”), for motorcycles and related products and services.
Harley’s rights in its Bar & Shield Logo extend to the mark’s design, regardless of the wording
contained within the bar and shield shape.

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12. Over the years, Harley has expanded its business to a wide range of other products
and services, including but not limited to apparel, accessories, patches, signs, collectibles, and
more. The HARLEY-DAVIDSON, HARLEY, and/or Bar & Shield Logo marks (collectively,
the HARLEY Marks and Bar & Shield Logo) have been promoted across Harley’s extensive
product line.
13. Harley offered and promoted metal and tin signs under its HARLEY-DAVIDSON,
HARLEY, and Bar & Shield Logo marks at least as early as 1988. Representative examples of
signs offered by Harley bearing these marks are shown below:

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14. In addition, Harley has used and promoted for many years a number other distinctive
marks in the U.S. in connection with its motorcycles and related products and services, including
but not limited to the marks H-D, HOG, and FAT BOY (collectively, the “Other Harley Marks”).
15. Harley has offered and promoted tin and metal signs in connection with its FAT BOY
mark, among other products, for many years. A representative example of a sign offered by
Harley bearing this mark and the Bar & Shield Logo is shown below.

16. As shown above, Harley’s products and its HARLEY Marks, Bar & Shield Logo, and
Other Harley Marks often feature and/or are promoted in connection with Harley’s iconic color
combination of orange, black, and/or white.
17. Harley markets its motorcycles and other products and services under the HARLEY
Marks, Bar & Shield Logo, and Other Harley Marks through a network of approximately 650
authorized dealers located throughout the country, and approximately 150 alternative and
seasonal retail outlets. Harley also has numerous licensees that have offered a wide variety of
products, including signs, under the HARLEY Marks, Bar & Shield Logo, and/or Other Harley
Marks for decades.
18. Harley’s products, including its licensed products, are sold by authorized dealers and
others, including through the HARLEY-DAVIDSON.COM website, dealers’ websites and retail

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stores, mass merchandisers (e.g., Target, K-Mart, and Wal-Mart), third-party websites such as
EBAY.COM and AMAZON.COM, and at trade shows, among other places.
19. Harley and its dealers and licensees have sold many billions of dollars worth of
products and services under the HARLEY Marks, Bar & Shield Logo, and Other Harley Marks,
and have expended many millions of dollars promoting those marks through virtually every
media. For example, Harley has promoted its products and marks through dealer promotions,
customer events, direct mailings, national television, print, and radio advertisements, and via the
Internet.
20. For many years, Harley and its dealers have also sponsored sports teams and major
sporting events. Harley’s marks have been featured on advertisements at NASCAR races, NBA
basketball games, NFL football games, college football games, MLB games, and UFC Ultimate
Fighting Championships. Harley and its dealers have also sponsored a number of sports teams,
including the Atlanta Falcons, Boston Red Sox, Milwaukee Brewers, and Green Bay Packers.
21. Harley, its products and services, and its HARLEY Marks, Bar & Shield Logo, and/or
Other Harley Marks have also received significant unsolicited media coverage, including, for
example, in national publications such as the The New York Times, The Wall Street Journal, The
Chicago Tribune, The Washington Post, USA Today, The Milwaukee Journal Sentinel, and
Business Week, as well as in numerous national television programs and online publications,
such as MSNBC, CNN Money, CNN.COM, and Yahoo! Finance.
22. As a result of Harley’s promotional efforts, commercial success, and popularity, the
HARLEY-DAVIDSON brand has been ranked annually for the past decade among the top 100
most valuable brands in the world by Interbrand, a leading independent branding firm. Indeed,

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in 2010, Interbrand estimated the value of the HARLEY-DAVIDSON brand at over U.S. $3.28
billion.
23. Based on Harley’s longstanding and extensive use of the HARLEY Marks, Bar &
Shield Logo, and/or Other Harley Marks, and the widespread advertising, publicity, promotion,
and substantial sales of products and services under those marks, the HARLEY Marks, Bar &
Shield Logo, and Other Harley Marks have been well known and famous to the general public
and/or motorcycling public for many years.
24. In H-D Michigan LLC v. Bryan C. Broehm, Opposition No. 91177156 (April 28,
2009), the Trademark Trial and Appeal Board of the United States Patent and Trademark Office
(“Board”) expressly acknowledged the fame of the HARLEY-DAVIDSON, HARLEY, and Bar
& Shield Logo marks in connection with motorcycles, apparel, and accessories. Further, the
Board found that the Bar & Shield Logo was a famous mark, regardless of the wording and other
matter within the Bar & Shield Logo, in connection with motorcycles, clothing, and accessories.
The Board’s reviewing court, the Federal Circuit, has also recognized HARLEY-DAVIDSON
as a well-known and famous mark. See Ronda Ag v. Harley-Davidson, Inc., 1997 U.S. App.
LEXIS 3597, *3-4 (Fed. Cir. Feb. 27, 1997.)
HARLEY’S TRADEMARK FILINGS FOR ITS FAMOUS MARKS
25. In addition to its strong common-law rights in the HARLEY-DAVIDSON mark,
Harley owns, among others, the following federal registrations for that mark in the U.S.,
including Registration Nos. 3690031 and 3304863 for metal signs:
Mark

HARLEY-DAVIDSON

Reg. No.
Reg. Date
3690031
09-29-2009

Goods and Services
(Date of First Use in Commerce)
Non-luminous, non-mechanical tin signs, non-luminous, nonmechanical metal signs, tool boxes of metal, tool chests of metal,
metal keys for locks, key rings of metal, knife handles of metal, metal
pet tags, metal luggage tags and metal personal identification tabs

7

Mark

Reg. No.
Reg. Date

Goods and Services
(Date of First Use in Commerce)

3304863
10-02-2007

Metal key fobs and non-luminous and non-mechanical metal signs

0508160
04-05-1949
3490890
08-26-2008

Electric lamps and spare parts for same, spark plugs, electric signs

2496088
10-09-2001
1311457
12-25-1984

Arranging travel tours and rental of motorcycles

HARLEY-DAVIDSON

1219955
12-14-1982

Parts and service manuals for motorcycles, parts catalogs for
motorcycles, newsletters and magazines dealing with motorcycles,
calendars, posters, and decals

HARLEY-DAVIDSON

0947170
11-14-1972
1078871
12-06-1977

Model kits of motorcycles

HARLEY-DAVIDSON

3756506
03-09-2010

Extension of consumer credit via credit card and debit card services;
financial services, namely, loan financing services and financing of
purchases; provision of extended service plans, namely providing
preventative maintenance service plans and extended service plans on
motorcycles; insurance brokerage in the field of motorcycles insurance
and debt protection services, namely, motorcycle payment and debt
cancellation services upon certain events, namely unemployment,
disability and death

HARLEY-DAVIDSON

3393840
03-11-2008
2281489

House mark for a full line of clothing, footwear and headwear

HARLEY-DAVIDSON
HARLEY-DAVIDSON

HARLEY-DAVIDSON
HARLEY-DAVIDSON

HARLEY-DAVIDSON

HARLEY-DAVIDSON

House mark for a line of motorcycles, structural parts for motorcycles
and related motorcycle accessories, namely, seats, backrests,
decorative fuel tank panels, transmission gears, fuel tanks, wheel
sprockets, gear shifts, clutches, battery covers and straps, front rear,
and intermediate kickstands, hub caps, shift knobs, foot rests and
extensions, windshields, leg shields, fender tips, break pedals,
handlebar grips, safety guards, namely, bars for attachment to
motorcycles, steering dampers, shock absorbers, spare wheels, spare
wheel carriers, boot guards, namely, mud flaps and fenders, saddle
covers, luggage carriers, license plate frames, handlebar cross bars,
foot pedal pads, tank and fender pads, rearview, fenders and skirts,
and wheel balance weights

Repair and servicing of motorcycles; Retail store services in the field
of motorcycles

Vehicles-namely, motorcycles

Necklaces, bracelets, and watch bands

8

Mark

Reg. No.
Reg. Date

Goods and Services
(Date of First Use in Commerce)

09-28-1999
HARLEY-DAVIDSON

1621383
11-06-1990

Model toy motorcycles, miniature motorcycle replicas, model toy
trucks, electronically operated toy motorcycles

HARLEY-DAVIDSON

1603741
11-15-1989

Books, manuals, and catalogs dealing with motorcycles, motorcycle
parts, and accessories; playing cards

HARLEY-DAVIDSON

1610396
08-21-1990
1606282
07-17-1990
1450348
08-04-1987

Sport and folding knives and knife cases

HARLEY-DAVIDSON

1234404
04-12-1983

Sunglasses and protective helmets for motorcyclists; Clothing-namely,
jackets, pants, shirts, T-shirts, vests, jeans, riding suits, bandanas, rain
suits, shorts, nightgowns, halters, underwear, tank tops, sweatshirts,
night shirts, socks, gloves, hates, caps and boots

HARLEY-DAVIDSON

0507163
03-01-1949

Motorcycle shirts, sweaters, breeches, neckties, coveralls, rain coats
and hats, jackets, helmets, caps and boots

HARLEY-DAVIDSON

3558739
01-06-2009

Leather and imitations of leather, and goods made of these materials,
namely, dog leashes, dog collars, dog clothing

HARLEY-DAVIDSON

1610377
08-21-1990
1602474
06-19-1990

Locks, and keyfobs

HARLEY-DAVIDSON
HARLEY-DAVIDSON

HARLEY-DAVIDSON

Safety goggles, protective helmets and sunglasses
Metal articles, namely, key fobs, key chains and license plate holders;
Knife sheaths; Necklaces, earrings, pins of non-precious metals,
clocks and watches; Children’s books, bumper stickers, removable
tattoos, pressure sensitive decals, checkbook covers, and playing
cards; Leather goods, namely, purses, wallets, duffle bags, motorcycle
saddle bags, key fobs; Mirrors; Mugs, drinking glasses, coasters,
decanters, cups, plastic mugs; Towels, bed spreads; Sweat pants,
sweaters, suspenders, scarves, bandanas, leather clothing, namely,
jackets, vests, gloves, jeans, chaps, tops, boots, shorts, caps, belts and
parts of footwear, namely boot tips; Stuffed toy animals, toy banks,
model kits; Cigarette cases, lighter cases, cigarette lighters

Belt buckles

26. The federal trademark registrations listed above are prima facie evidence of Harley’s
ownership and the validity of the HARLEY-DAVIDSON mark. Further, many of these
registrations are incontestable, and thus constitute conclusive evidence of Harley’s exclusive

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right to use the HARLEY-DAVIDSON mark for the products and services specified in those
registrations pursuant to 15 U.S.C. §§ 1065 and 1115(b).
27. Harley also owns the following registrations for the HARLEY mark in the U.S.,
including Registration No. 3818855 for tin and metal signs:
Mark

Reg. No.
Reg. Date

Goods and Services
(Date of First Use in Commerce)

HARLEY

3818855
07-13-2010

Non-luminous, non-mechanical tin signs, non-luminous, nonmechanical metal signs

HARLEY

1352679
08-06-1985
1708362
08-18-1992

Motorcycles

HARLEY

1683455
04-14-1992

Shirts, tank tops, boots and sweatshirts

HARLEY

1406876
08-26-1986

Clothing; namely--tee shirts for men, women and children; knit tops
for women and girls; and children’s shirts

HARLEY

3284962
08-28-2007
2120748
12-16-2007
2118687
12-09-1997

Restaurant services

HARLEY

HARLEY
HARLEY

Embroidered patches for clothing

Roasted chicken and chili
Sandwiches

28. The federal trademark registrations listed above are prima facie evidence of Harley’s
ownership and the validity of the HARLEY mark. Further, many of these registrations are
incontestable, and thus constitute conclusive evidence of Harley’s exclusive right to use the
HARLEY mark for the products and services specified in those registrations pursuant to 15
U.S.C. §§ 1065 and 1115(b).
29. In addition, Harley owns, among others, the following registrations for the Bar &
Shield Logo mark in the U.S., including Registration No. 3640579 for tin and metal signs:

10

Mark

Reg. No.
Reg. Date
3640579
06-16-2009

Goods and Services
(Date of First Use in Commerce)
Non-luminous, non-mechanical tin signs, non-luminous, nonmechanical metal signs, tool boxes of metal, tool chests of metal,
metal keys for locks, key rings of metal, knife handles of metal,
metal pet tags, metal luggage tags and metal personal identification
tags

1205380
08-17-1982

Motorcycles; Clothing-namely, T-shirts

3559365
01-13-2009

House mark for a line of motorcycles, structural parts for
motorcycles, and related motorcycle accessories, namely, seats,
backrests, decorative fuel tank panels, transmission gears, fuel
tanks, wheel sprockets, gear shifts, clutches, battery covers and
straps, front, rear, and intermediate kickstands, hub caps, shift
knobs, foot rests and extensions, windshields, leg shields, fender
tips, brake pedals, handlebar grips, safety guards, namely, bars for
attachment to motorcycles, steering dampers, shock absorbers,
spare wheels, spare wheel carriers, boot guards, namely, mud flaps
and fenders, saddle covers, luggage carriers, license plate frames,
handlebar cross bars, foot pedal pads, tank and fender pads,
rearview mirrors, fenders and skirts, and wheel balance weights

2376674
08-15-2000

Metal locks; motorcycle parts, namely, spark plugs; optical and
safety equipment, namely, sunglasses and motorcycle helmets;
motorcycle parts, namely, mirrors, drive belts made of rubber,
swing arm pivot covers, axle nut covers, handgrips, oil pump
covers, air cleaner covers, derby covers, caliper covers, seats,
brake pedals, motorcycle saddlebags, saddlebag liners, timer
covers and fender tips; Jewelry; Leather goods, namely traveling
bags and saddlery; leather gloves

3058720
02-14-2006

Retail store services and distributorships in the fields of
motorcycles, motorcycle parts and accessories, footwear, clothing,
jewelry, and leather goods; rendering technical assistance in the
establishment, operation, and business promotion of retail stores;
retail store services in the fields of motorcycles, motorcycle parts
and accessories, footwear, clothing, jewelry, and leather goods
therefor via a global computer network; dealerships in the fields of
motorcycles, motorcycle parts and accessories, footwear, clothing,
jewelry, and leather goods

1311460
12-15-1984

Repair and servicing of motorcycles; Retail store services in the
field of motorcycles

11

Mark

Reg. No.
Reg. Date
2660205
12-10-2002

Goods and Services
(Date of First Use in Commerce)
Education and entertainment services, namely, providing
presentations, exhibitions and guided informational tours related to
the experience of motorcycling; Restaurant services

3671993
08-25-2009

Education and entertainment services, namely, providing
educational presentations, exhibitions and guided informational
museum tours related to the experience of motorcycling

3756505
03-09-2009

Financial services, namely, underwriting, funding, servicing and
collection of consumer and commercial loans, provision of finance,
namely, financing; provision of financial information; financial
valuations of motorcycles, aircraft and other personal and real
properly, financing services for the commercial acquisition of
motorcycle dealerships, issuance of credit cards; credit card and
charge card services; electronic funds transfer, electronic payment
services, namely, electronic processing and transmission of bill
payment data, insurance service relating to motorcycles, namely,
insurance agency, insurance consultancy, providing insurance
information, namely, in the field of motorcycles and power sports
dealerships, and insurance brokerage in the field of motorcycles
and debt protection services, namely, motorcycle payment and debt
cancellation services upon certain events, namely, unemployment,
disability and death and the provision of other financial products,
namely, providing preventative maintenance service plans and
extended service plans on motorcycles

1711882
09-01-1992

Embroidered patches for clothing

3393839
03-11-2008

House mark for a full line of clothing, footwear and headwear

3185946
12-19-2006

Jackets, baseball hats, caps, shirts and T-shirts

12

Mark

Reg. No.
Reg. Date
1511060
11-01-1988

Goods and Services
(Date of First Use in Commerce)
Clothing, namely, boots, sweat shirts, jeans, hats, caps, scarves,
motorcycle riding suits, neck ties, shirts, t-shirts, jackets, vest,
ladies tops, bandanas

3447304
06-17-2008

A full line of clothing

3082869
04-18-2006

Watches, clocks and ornamental pins

3658879
07-21-2009

Leather and imitations of leather, and goods made of these
materials, namely, dog leashes, dog collars, dog clothing (04-002000)

1741456
12-22-1992

Embroidered patches and belt buckles not of precious metals

1660539
10-15-1991

Knives; namely, buck knives, sporting and hunting knives, folding
pocket knives, knife cases therefor, and tool kits comprising
wrenches and pliers; sunglasses, and motorcycle parts; namely,
gauges, ignition modules, wiring turn signals, batteries, cruise
controls, and vacuum switches; flashlights; motorcycles and
motorcycle parts; namely, horns, air cleaners, drive belts, belt
guards, brakes, brake calipers, brake controls, cam gears, chains,
chokes, drive trains, clutches and clutch controls, connecting rods,
rocker arm covers, crankcases, engine cylinders, exhaust system
parts, fenders and fender supports, flywheels, footboards, forks,
fork rockers, frame parts, fuel tanks, leg guards, gear shifters,
handlebars, cylinder heads, mirrors, oil filters, oil pumps, oil tanks,
push rods, rocker arms, seats, shock absorbers, backrests, stabilizer
links, tappets, throttle controls, valves, wheels, and windshields;
ankle bracelets, bracelets, earrings, necklaces, rings, tie tacks,
watch bands, watches, wall clocks, ornamental lapel pins, and stick
pins; books about motorcycles, calendars, decals, pens, photo
albums, posters, and removable tattoos; holders for cans in the
nature of a rubber cylinder, duffle bags, garment bags, key cases,
key fobs, denim purses, suitcases, and wallets; wall mirrors and
wall plaques; pewter decanters, drinking glasses, mugs, pewter
drinking steins, shaving brushes, shaving mugs, and can holders in
the nature of an insulated rubber cylinder ; towels; belts, decorative
boot straps, leather bandanas, boot tips, chaps, coveralls, denim

13

Mark

Reg. No.
Reg. Date

Goods and Services
(Date of First Use in Commerce)
pants, gloves, halter tops, hats, caps, heel guards, heel spurs,
jackets, neckties, night gowns, night shirts, pants, rain suits, shirts,
socks, sole plates, suspenders, sweaters, sweatshirts, tank tops,
athletic shoes, shoes, boots, t-shirts, underwear, vests, and
wristbands; belt buckles not made of precious metal, boot chains,
and embroidered patches for clothing; automobile floor mats; toy
trucks; lighter holders, ashtrays, cigarette cases, lighter cases,
lighters, snuff can holders, all of the foregoing not being made of
precious metal, and cigarettes

As shown above, Harley’s rights in its Bar & Shield Logo extend to the mark’s design,
regardless of the wording contained within the bar and shield shape.
30. The federal trademark registrations listed above are prima facie evidence of Harley’s
ownership and the validity of the Bar & Shield Logo. Further, many of these registrations are
incontestable, and thus constitute conclusive evidence of Harley’s exclusive right to use the Bar
& Shield Logo for the products and services specified in those registrations pursuant to 15
U.S.C. §§ 1065 and 1115(b).
31. Harley also owns the following federal registrations for many of Harley’s Other
Marks, including Registration No. 3818854 for the FAT BOY mark for tin and metal signs,
among other goods:
Mark
FAT BOY

FAT BOY
H-D
H-D

Reg. No.
Reg. Date
3818854
07-13-2010

Goods and Services
(Date of First Use in Commerce)
Non-luminous, non-mechanical tin signs, non-luminous, nonmechanical metal signs

1594104
05-01-1990
1239313
05-24-1983
1317592
02-05-1985

Motorcycles
Motorcycles
Motorcycle parts, made of metal-namely, dowel pins, cotter pins,
clamps, nuts, bolts, screws, brackets, studs, spacers, washers, studs,
lock washers, retainers, springs, mounting plates, and bushings;
Motorcycle electrical parts-namely, spark plugs: ignition wires,
breaker points, and ignition switches, carburetors; Motorcycle
speedometers, thermometers, thermostats, motorcycle electrical

14

Mark

Reg. No.
Reg. Date

Goods and Services
(Date of First Use in Commerce)
parts-namely, electrical wire terminals, battery and grounding
cables, lenses, magnets, armatures, circuit breakers, switches, turn
signals and indicators, connectors, voltage regulators, ignition
system pin plugs, socket terminal pins, single socket pins, ignition
system clamps, and grounding straps, and motorcycle partsnamely, reflectors and stoplight switches thereto, solenoid
switches; motorcycle parts-namely, starter motor brushes, and
tappets, rods, rocker arms, push rod cogers, coil covers, valve
spring retainers and collars, crank pin rollers, lock rings, bearings,
flywheel crank pins, gear shaft lock plates, bearing rollers and
bearing retainers, crank case plugs, oil plugs, oil pump plugs,
engine bearing shims, cams, cam followers, brake control levers,
brake calipers, starter pins and roll pins, crank pins, shift lever
pivot pin plugs, engine instrument plugs, axle caps, oil filler caps,
gas filler caps, transmission gears, pumps, wheel weights, shift
levers, chain housings, pawls for gear shifters, clutch hubs, clutch
drive plates, adjusting nuts, wheelbearings, starter gear shift levers,
transmission shift levers, shifter levers, choke levers, chain links,
brake discs, brake pads, brake calipers, brake master cylinders,
hydraulic fluid line connectors, brake pedals, axle caps, foot rests,
stands, handle bar grips, clutch cables, throttle cables, mirrors, oil
and air filters, seat grab straps, mud flaps, highway pegs, air
cleaners, body trim

H-D

1775905
06-08-1993

Shirts, jackets, vests, lingerie, belts, t-shirts, sweaters, pants,
neckties, coveralls, rain coats, rain hats, nightgowns, halters,
underwear, tank tops, sweat pants, sweatshirts, nightshirts, socks,
gloves, hats, suspenders, chaps, wristbands, footwear, heel spurs,
heel guards, sole plates, boot tips, shorts, scarves, jeans, leather
jackets, leather pants, leather vests, leather chaps, leather belts,
leather boots, leather caps, leather hats, leather gloves, leather
mittens, leather halter tops, leather skirts

H-D

2024190
12-17-1996

Smokers' articles not of precious metal, namely cigarette lighters,
lighter cases, and snuff can holders

H-D

1596518
05-15-1990
3551467
12-23-2008

Jackets, vests, gloves, t-shirts and caps

3015217
11-15-2005
3017452
11-22-2005

Motorcycle repair services

2935210
03-22-2005

Travel services, namely, making reservations and booking for
temporary lodging, making reservations and bookings for
restaurants and meals

3296168

House mark for a full range of club services for motorcyclists

H-D

HOG
HOG

HOG

H.O.G.

Leather and imitations of leather, and goods made of these
materials, namely, dog leashes, dog clothing

Travel guide services; making reservations and bookings for
transportation

15

Mark

H.O.G.
HOG

HOG

Reg. No.
Reg. Date
09-25-2007
1458778
09-22-1987
1599492
06-05-1990
1716992
09-15-1992

Goods and Services
(Date of First Use in Commerce)
Motorcycle club services
Motorcycle parts, namely timer covers, derby covers and
medallions
Metal badges; figurines made of metal; folding knives, sport
knives and knife cases; clocks, watches, jewelry of precious and
non-precious metal, namely, pins, charms, earrings, bracelets,
necklaces, and rings; ornamental lapel pins; ashtrays, cigarette
cases and holders of cigarette lighters of precious metals; belt
buckles of precious metal; greeting cards, road atlas, posters,
calendars, newsletters, books and magazines relating to
motorcycling, paper banners relating to motorcycling, playing
cards, decals, note paper, pens and pencils, checkbook clutches;
drinking steins; glassware, namely, plates, cup saucers, glasses and
other containers for food and beverage; mugs, cups, insulated can
holders, commemorative plates, toothbrushes, quencher cups and
figurines made of ceramic, porcelain and glass; leather can, glass
and mug holders; flags and banners not of paper; clothing, namely,
shirts, sweatshirts, t-shirts, caps, hats, jackets, vests, socks, shoes,
boots, scarves, belts, sweat pants, pants, bandanas, gloves,
suspenders, chaps, rainsuits, and mittens; belt buckles not of
precious metals, ornamental pins and embroidered patches for
clothing; ashtrays, cigarette cases and holders of cigarette lighters
not of precious metal; cigarette lighters

32. The federal trademark registrations listed above are prima facie evidence of Harley’s
ownership and the validity of those marks. Further, many of the registrations are incontestable,
and thus constitute conclusive evidence of Harley’s exclusive right to use those marks for the
products and services specified in those registrations pursuant to 15 U.S.C. §§ 1065 and 1115(b).
DEFENDANT’S WRONGFUL ACTS
33. Defendant promotes and sells a variety of products featuring the trademarks of others,
including but not limited to metal signs.
34. Defendant’s products are offered for sale on its website at GALAN.ORG, on thirdparty websites such as EBAY.COM and AMAZON.COM, and at trade shows.

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35. Defendant sells signs bearing Harley’s famous HARLEY-DAVIDSON, HARLEY,
and/or Bar & Shield Logo marks and/or variations thereof. Representative examples of
Defendant’s signs bearing these marks are shown below.

36. Additionally, Defendant sells signs bearing Harley’s FAT BOY and HOG marks.
Representative examples of Defendant’s signs bearing these marks are shown below.

37. As shown above, many of Defendant’s signs bearing the HARLEY Marks, Bar &
Shield Logo, HOG mark, and FAT BOY mark feature Harley’s orange, black, and/or white color
combination.
38. Defendant is also offering novelty motorcycle licenses that are issued in the name of
“Hogley Davison,” with the license number “HD-1” (Harley is often referred to as HD or H-D),
a birth date of 1906 (3 years after Harley was founded), and address of “Sturgis, SD 57785” (site
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of one of the most popular motorcycle rallies in the U.S. and annual destination for thousands of
Harley motorcycle owners), among other things. The motorcycle license also bears a bar and
shield logo with HOGLEY-DAVISON substituted for HARLEY-DAVIDSON on the bar, as
shown below:

39. Defendant has never been an authorized dealer or licensee of Harley, and has no right
to use the HARLEY Marks, Bar & Shield Logo, or Other Harley Marks, or any variations
thereof. Harley has objected to Defendant’s activities on numerous occasions, requesting that
Defendant cease all use of its trademarks and variations thereof. Despite Harley’s repeated
requests, however, Defendant has refused to comply and has continued its unlawful activities.
40. At the time that Defendant began using the HARLEY Marks, Bar & Shield Logo, and
Other Harley Marks and/or variations thereof, Defendant had actual knowledge of Harley’s
rights in those marks, and Defendant used them in bad faith to take advantage of the tremendous
reputation and goodwill of Harley and its famous and well-known trademarks.

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INJURY TO HARLEY
41. Defendant’s actions described above are likely to cause confusion, mistake, or
deception as to the source or origin of Defendant and/or Defendant’s goods, and are likely to
falsely suggest a sponsorship, connection, license, or association of Defendant, its goods, and/or
its commercial activities with Harley, thereby injuring Harley and the public.
42. Defendant’s actions described above have damaged and irreparably injured and, if
permitted to continue, will further damage and irreparably injure Harley, the HARLEY Marks,
the Bar & Shield Logo, the Other Harley Marks, and the public, which has an interest in being
free from confusion.
43. Defendant’s actions described above are likely to dilute the distinctiveness and value
of Harley’s famous HARLEY Marks and Bar & Shield Logo.
44. Defendant knew or should have known that its activities described above were
infringing and dilutive and constituted counterfeiting and unfair competition, and thus Defendant
acted knowingly, willfully, in reckless regard of the truth, and in bad faith.
FIRST CLAIM FOR RELIEF
Trademark Counterfeiting Under Section 32(1)(a)
of the Lanham Act, 15 U.S.C. § 1114(1)(a)
45.

Harley repeats and realleges each and every allegation set forth in Paragraphs 1

through 44 of this Complaint.
46.

Harley owns a number of federal trademark registrations for the HARLEY-

DAVIDSON, HARLEY, Bar & Shield Logo, and FATBOY marks for various goods and
services, including metal and tin signs.
47.

Without Harley’s consent, Defendant intentionally used in commerce Harley’s

HARLEY-DAVIDSON, HARLEY, Bar & Shield Logo, and FATBOY marks and/or
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substantially indistinguishable variations or counterfeits thereof, in connection with the sale,
offering for sale, and/or distribution of metal signs.
48.

Defendant’s actions described above are likely to cause confusion, mistake, or to

deceive as to the origin, sponsorship, or approval of Defendant’s products and commercial
activities, and thus constitute counterfeiting of Harley’s federally registered marks identified in
Paragraphs 25, 27, 29, and 31 above in violation of Section 32 of the Lanham Act, 15 U.S.C.
§ 1114.
49. Upon information and belief, the actions of Defendant described above have at all
times relevant to this action been willful and/or knowing.
50. As a direct and proximate result of the actions of Defendant alleged above, Harley
has been damaged and will continue to be damaged.
SECOND CLAIM FOR RELIEF
Trademark Infringement Under Section 32(1)(a)
of the Lanham Act, 15 U.S.C. § 1114(1)(a)
51. Harley repeats and realleges each and every allegation set forth in Paragraphs 1
through 50 of this Complaint.
52. Without Harley’s consent, Defendant used and continues to use in commerce
reproductions, copies, and colorable imitations of Harley’s federally registered marks referred to
in Paragraphs 25, 27, 29, and 31 in connection with the offering, distribution, and advertising of
goods, which is likely to cause confusion, or to cause mistake, or to deceive, in violation of
Section 32 of the Lanham Act, 15 U.S.C. § 1114.
53. Upon information and belief, the actions of Defendant described above have at all
times relevant to this action been willful and/or knowing.

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54. As a direct and proximate result of the actions of Defendant alleged above, Harley
has been damaged and will continue to be damaged.
THIRD CLAIM FOR RELIEF
Trademark Infringement, False Designation
of Origin, and Unfair Competition
Under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)
55. Harley repeats and realleges each and every allegation set forth in Paragraphs 1
through 54 of this Complaint.
56. Defendant’s actions described above are likely to cause confusion, mistake, or
deception as to the origin, sponsorship, or approval of Defendant, its products and services, and
its commercial activities, and thus constitute trademark infringement, false designation of origin,
and unfair competition in violation of Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C.
§ 1125(a)(1)(A).
57. Upon information and belief, the actions of Defendant described above have at all
times relevant to this action been willful and/or knowing.
58. As a direct and proximate result of the actions of Defendant alleged above, Harley
has been damaged and will continue to be damaged.
FOURTH CLAIM FOR RELIEF
Trademark Dilution Under Section
43(c) of the Lanham Act, 15 U.S.C. § 1125(c)
59. Harley repeats and realleges each and every allegation set forth in Paragraphs 1
through 58 of this Complaint.
60. Harley’s HARLEY-DAVIDSON, HARLEY, and Bar & Shield Logo marks are
famous, as that term is used in 15 U.S.C. § 1125(c), and were famous prior to Defendant’s use of
those marks and/or variations thereof based on, among other things, the inherent and/or acquired
distinctiveness and federal registration of the HARLEY-DAVIDSON, HARLEY, and Bar &
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Shield Logo marks, the substantial commercial success under those marks, and the extensive
nationwide use, advertising, promotion, and recognition of those marks.
61. Defendant’s actions described above, all occurring after the HARLEY-DAVIDSON,
HARLEY, and Bar & Shield Logo marks became famous, are likely to dilute the distinctive
quality of those famous and well-known marks in violation of Section 43(c) of the Lanham Act,
15 U.S.C. § 1125(c), as amended by the Trademark Dilution Revision Act of 2006.
62. Upon information and belief, the actions of Defendant described above have at all
times relevant to this action been willful and/or knowing.
63. As a direct and proximate result of the actions of Defendant alleged above, Harley
has been damaged and will continue to be damaged.
FIFTH CLAIM FOR RELIEF
Violation Of The Michigan Consumer Protection Act
M.C.L.A. § 445.903 et seq.
64. Harley repeats and realleges each and every allegation set forth in Paragraphs 1
through 63 of this Complaint.
65. Defendant is engaged in trade or commerce as defined by the Michigan Consumer
Protection Act.
66. Defendant’s actions constitute unfair, unconscionable, or deceptive methods, acts, or
practices in the conduct of trade or commerce under M.C.L.A. § 445.903 et seq.
67. Upon information and belief, the actions of Defendant described above have at all
times relevant to this action been willful.
68. As a direct and proximate result of the actions of Defendant alleged above, Harley
has been damaged and will continue to be damaged.

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SIXTH CLAIM FOR RELIEF
Common Law Trademark Infringement, Unfair
Competition, and Misappropriation
69. Harley repeats and realleges each and every allegation set forth in Paragraphs 1
through 68 of this Complaint.
70. Defendant’s actions described above constitute common law trademark infringement,
unfair competition, and misappropriation of Harley’s goodwill under the common law of
Michigan and other states.
71. Upon information and belief, the actions of Defendant described above have at all
times relevant to this action been willful.
72. As a direct and proximate result of the actions of Defendant alleged above, Harley
has been damaged and will continue to be damaged.
JURY DEMAND
73. Pursuant to Fed. R. Civ. P. 38, Harley respectfully demands a trial by jury on all
issues properly triable by a jury in this action.
PRAYER FOR RELIEF
WHEREFORE, Harley respectfully requests that this Court enter judgment in its favor on
each and every claim for relief set forth above and award it relief including, but not limited to,
the following:
A.

An Order declaring that Defendant’s activities described above constitute

counterfeiting, and unfair competition, and infringe and dilute Harley’s HARLEY Marks, Bar &
Shield Logo, and/or the Other Harley Marks.

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B.

A permanent injunction enjoining Defendant and its employees, agents, partners,

officers, directors, owners, shareholders, principals, subsidiaries, related companies, affiliates,
distributors, dealers, and all persons in active concert or participation with any of them:
1.

From using, registering, or seeking to register the HARLEY Marks, Bar &

Shield Logo, and the Other Harley Marks in any form, any variations thereof (including but not
limited to the variations shown on Defendant’s signs set forth above), and any other marks that
are confusingly similar to or that are likely to dilute any of Harley’s trademarks, including but
not limited to as or as part of a trademark, trade name, corporate name, business name, e-mail
address, domain name, social media name, URL, metatag, keyword, or other name, mark, or
identifier;
2.

From representing by any means whatsoever, directly or indirectly, that

Defendant, any products or services offered by Defendant, or any activities undertaken by
Defendant, are associated or connected in any way with Harley or sponsored by, affiliated with,
or authorized by Harley in any way; and
3.

From assisting, aiding or abetting any other person or business entity in

engaging in or performing any of the activities referred to in subparagraphs B.1-2 above.
C.

An Order directing Defendant to destroy all products, merchandise, and materials

in its possession or control that bear the HARLEY Marks, Bar & Shield Logo, and Other Harley
Marks, any variations thereof (including the variations of those marks shown on Defendant’s
signs set forth above), or any other marks that are confusingly similar to or likely to dilute the
HARLEY Marks, Bar & Shield Logo, and Other Harley Marks or, alternatively, to alter such
items to remove those marks including, but not limited to, from all products, merchandise,
materials, and websites.
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D.

An Order directing Defendant to file with this Court and serve on Harley’s

attorneys, thirty (30) days after the date of entry of any injunction, a report in writing and under
oath setting forth in detail the manner and form in which Defendant has complied with the
injunction.
E.

An Order requiring Defendant to pay statutory damages in accordance with 15

U.S.C. § 1117(c) of up to $2,000,000 per mark per type of product or service sold, offered for
sale, or distributed by Defendant under the HARLEY-DAVIDSON, HARLEY, and Bar & Shield
Logo marks or substantially indistinguishable versions or counterfeits of those marks.
F.

An Order requiring Defendant to account for and pay to Harley any and all profits

arising from the foregoing acts, and increasing of such profits, in accordance with 15 U.S.C. §
1117, and other applicable statutes and laws.
G.

An Order requiring Defendant to pay Harley damages in an amount as yet

undetermined caused by the foregoing acts, and trebling such damages for payment to Harley in
accordance with 15 U.S.C. § 1117, and other applicable statutes and laws.
H.

An Order requiring Defendant to pay Harley’s costs and attorney’s fees in this

action pursuant to 15 U.S.C. § 1117, and other applicable statutes and laws.
I.

An Order requiring Defendant to pay Harley punitive damages in an amount as

yet undetermined caused by the foregoing willful acts of Defendant.
J.

Other relief as the Court may deem appropriate.

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Respectfully submitted,
H-D MICHIGAN, LLC and HARLEYDAVIDSON MOTOR COMPANY GROUP, LLC
d/b/a HARLEY-DAVIDSON MOTOR COMPANY

Dated: April 15, 2011

By:/s/ Deborah J. Swedlow
Deborah J. Swedlow (P67844)
Jason R. Abel (P70408)
HONIGMAN MILLER SCHWARTZ AND COHN LLP
130 S. First Street
4th Floor
Ann Arbor, Michigan 48104-1386
Telephone: [phone]
Facsimile: [phone]
[e-mail]
OF COUNSEL:
David M. Kelly
Stephanie H. Bald
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.
901 New York Avenue, N.W.
Washington, DC 20001
Telephone: [phone]
Facsimile: [phone]
[e-mail];
[e-mail]

8996544.1

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