June 1 (Westlaw Journals) - The U.S. Polo Association cannot use the word “polo” in conjunction with its Double Horsemen mark on fragrances it plans to market, a New York federal judge has ruled.
The USPA had sought a declaratory judgment that its use of the polo mark did not infringe trademarks held by designer Ralph Lauren but instead found itself on the receiving end of a permanent injunction.
U.S. District Judge Robert Sweet of the Southern District of New York denied the motion and issued the injunction May 13. Lauren’s company, PRL USA Holdings Inc., owns and licenses the Ralph Lauren well-known trademarks, including the polo player logo and the Polo mark used for fragrances on the market since 1978. L’Oreal USA is the exclusive licensee for the marks in connection with fragrances.
The fragrances include the original Polo fragrance for women and several men’s fragrances introduced in 2002. All the fragrances display the logo and the “Polo” word mark.
The USPA is the governing body for the sport of polo in the United States. It owns hundreds of trademarks, including its primary ones “U.S. Polo Assn.” and the “Double Horsemen Mark,” used mostly in connection with apparel and accessories.
The USPA and Ralph Lauren have battled over trademarks before. As in the current lawsuit, in 1984 the USPA sought a declaratory judgment that various articles of merchandise bearing the image of a mounted polo player did not infringe Lauren’s polo player logo.
In U.S. Polo Association Inc. v. Polo Fashions Inc., 1984 WL 1309 (S.D.N.Y. 1984), the court said the USPA could conduct a retail licensing program using its name and an image of a mounted polo player that was distinctive from the Ralph Lauren trademark.
The court barred the organization from using the U.S. Polo Association name or other name that emphasizes the word “polo” in any way that was likely to cause confusion.
In the current litigation, Judge Sweet said the word “polo” might be generic with respect to polo shirts or descriptive with respect to the sport, but that when used in connection with fragrances, it is arbitrary and deserving of trademark protection.
The judge discussed several factors that the 2nd U.S. Circuit Court of Appeals outlined in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961), in analyzing the likelihood of confusion in trademark cases.
He concluded that each factor outlined in Polaroid weighed in favor of finding that a likelihood of confusion existed in the USPA’s use of its trademarks in connection with fragrances.
Judge Sweet rejected the USPA’s argument that Ralph Lauren was trying to monopolize the depiction of the sport of polo. He noted that nothing in his order was intended to prevent the organization from using the word “polo” in a generic or descriptive manner.
Although the judge said it is possible for the parties to engage in licensing activities that do not conflict with each other, he found that the USPA’s use of “polo” in conjunction with the Double Horsemen mark on fragrances infringed Ralph Lauren trademarks.
United States Polo Association Inc. et al. v. PRL USA Holdings Inc. et al., No. 09-9476, 2011 WL 1842980 (S.D.N.Y. May 13, 2011).
(Reporting by Deborah Nathan, Westlaw Journal Intellectual Property)