By Erin Geiger Smith
NEW YORK, Feb 11 (Reuters) - The United States Polo
Association has lost another round in its long-running trademark
fight with Ralph Lauren.
The 2nd U.S. Circuit Court of Appeals ruled on Monday that
the polo association could be barred from using a "double
horseman" logo on its fragrances because it was too similar to
trademarks owned by the fashion brand.
In an unsigned opinion, Judges Reena Raggi, Peter Hall and
Christopher Droney agreed with Ralph Lauren's attorneys from
Kelley Drye & Warren that just because the polo association had
the right to use the double horseman mark on apparel did not
mean it could also use it on fragrances.
Attorneys from Baker & Hostetler represented the Polo
Association, with partner George Stamboulidis leading the
appeals effort.
Ralph Lauren has been using its polo player logo on
fragrances since 1978 and introduced its Polo Blue fragrance
around 2002, the appeals court wrote. In 2009, the court said,
the polo association designed a men's fragrance on a dark blue
package.
Last March, U.S. District Judge Robert Sweet in Manhattan
also sided with Ralph Lauren, throwing out the association's
request for declaratory judgment that it could use the mark.
Sweet issued a permanent injunction preventing the association
from using the mark on fragrances.
That injunction was proper "in light of the (Polo
Association's) history of repeated infringement and the district
court's finding of bad faith."
Fragrances make up "an extremely small part" of the
association's licensing activities, said Baker Hostetler's
Gerald Ferguson. The court's opinion will not impact on its use
of the double horseman logo on apparel, he said.
Kelley Drye's William Golden, who led the Ralph Lauren team,
did not immediately respond to a request for comment. Ryan
Lally, a representative for Ralph Lauren, declined to comment.
A BATTLE GOING BACK TO 1984
The battle over the polo player trademarks began around
1984, the appeals court noted, when the Manhattan federal court
enjoined the polo association from using its names or marks in a
way that was likely to cause confusion with Ralph Lauren marks.
That 1984 order did, however, allow the association to use a
mounted polo player in its retail goods as long as it did not
cause confusion.
More than two decades later, the parties met again at a
trial. A Manhattan federal jury in 2006 found that the polo
association's use of a solid version of its double horseman
mark, without text, infringed Ralph Lauren's mark. But the jury
said there would not be infringement so long as the letters
"U.S.P.A." accompanied the mark or the double horsemen was just
an outline.
That judgment was upheld in 2008 by the 2nd Circuit.
In the fragrance case, the Polo Association had argued that
the 2006 jury finding should prevent the court from finding
similarity, bad faith or confusion if the association used an
outlined double horsemen logo with U.S.P.A. or other similar
descriptions.
But the 2nd Circuit disagreed, saying that just because the
polo association could use the mark in the apparel industry
didn't mean it acted in good faith in using the mark in the
fragrance industry.
The district court was fair in finding that the polo
association adopted its mark with the intention of capitalizing
on Ralph Lauren's reputation and product, the 2nd Circuit wrote.
The case is U.S. Polo Ass'n, Inc v. PRL USA Holdings, Inc,
U.S. Court of Appeals for the 2nd Circuit, No. 12-1346.
For the Polo Association: George Stamboulidis of Baker &
Hostetler.
For Ralph Lauren: William Golden of Kelley Drye & Warren.
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