The latest round of what seems to be a never-ending trademark battle between the United States Polo Association (USPA) and PRL USA Holdings, Inc. (referred to here as Ralph Lauren) has ended with Ralph Lauren emerging victorious over the polo association. Judges Reena Raggi, Peter Hall and Christopher Droney, all with the 2nd US Circuit Court of Appeals, recently issued an unsigned opinion finding that the USPA could, in fact, be banned from using a double horseman logo on its fragrances or cosmetics on the basis that the logo was too similar to trademarks currently owned by Ralph Lauren and such use constituted unfair competition.
The History Between the USPA and Ralph Lauren
The battle started back in the mid-’80s. The USPA was granted the right to use a polo player logo on its sportswear retail items; however, the image used had to be such that it would not be confused with the image of a polo player that is and has been used by Ralph Lauren on his fragrances since the late ’70s.
A little over 20 years later in 2006, a federal jury in Manhattan stated the USPA’s use of a “solid version of its double horseman mark, without text” did infringe upon Ralph Lauren’s trademark. However, the jury at that time decided that if the Association included the letters “U.S.P.A.” along with the outline of double horsemen (not solid horsemen), no infringement would exist. That judgment was upheld by the 2nd Circuit in 2008.
Also in the early 2000s, Ralph Lauren introduced its Polo Blue fragrance. Years later, the USPA then designed and released a men’s fragrance of their own, also in a dark blue package. In March of 2012, US District Court Judge Robert Sweet found in favor of Ralph Lauren, only this time, the court issued a permanent injunction against the Association and dismissed its request for a declaratory judgment that it could use the mark–which brings us to the present case.
A Brief Look at the Court’s Determination
In this case, the USPA appeals the dismissal of its request for a declaratory judgment that would have approved its use of the double horsemen mark with the inclusion of the words “USPA,” U.S. POLO ASSN,” and/or “1890” when selling its men’s fragrances. The Association also appeals the permanent injunction that would prevent its use of such marks in association with fragrances and similar products, “as well as the use in connection with any product or marks confusingly similar to PRL’s own marks.”
The court took a thorough look into the previous cases when arriving at this latest decision. Specifically, with respect to the previous litigation back in the mid-’80s, the USPA claimed that the district court’s infringement finding conflicted with the 1984 decision that affirmed the Association’s right to use its “name and a distinctive mounted polo player symbol in connection with a retail licensing program.” However, this court rejected that argument, noting that neither the 1984 opinion nor the related order gave the USPA any rights with respect to using any name or logo without challenge from Ralph Lauren. Simply stated–the issue of whether or not a polo player symbol was adequately unique enough to avoid such confusion could be left open for future determination.
The USPA also argued that the jury’s findings in the 2006 apparel litigation prohibit the district court in this case from finding “similarity, bad faith, or confusion in its use of its outlined double horsemen logo accompanied by the words “U.S. POLO ASSN,” “U.S.P.A.,” or “1890”.” However, this court rejected that argument, commenting that the differences between the 2006 litigation and the current case are that the earlier litigation involved the clothing industry, while this case involves men’s fragrances. The court specifically noted that a no similarity/no infringement finding in one industry does not, as a matter of law, rule out a finding of similarity in another industry.
A “prior use” argument was also made by the Association which claimed that the district court made a mistake in deeming that the USPA acted in bad faith when using the logo of the double horsemen along with the “U.S. POLO ASSN” name to sell fragrances in the late ’90s (only a few years before Ralph Lauren introduced Polo Blue), as well as its use of the double horsemen logo on clothing since 2006. However, once again, this court disagreed with the USPA’s argument, stating that simply because the Association was permitted to use the double horsemen logo in the apparel industry, that did not automatically mean that it acted in good faith when using the same marks in the men’s fragrance business. For this reason, along with several other reasons, this court noted that the district court’s finding that “lack of confusion as to apparel may or may not be indicative of lack of confusion as to fragrances” was not erroneous.
The Permanent Injunction
The three-judge panel in this case found the USPA’s contentions with respect to the district court’s so-called misapplication of a “presumption of irreparable harm” when making its decision to not only issue a permanent injunction, but to issue an injunction that spans broader than its findings necessitated, to be without merit.
Additionally, with respect to USPA’s argument regarding the overall scope of the injunction, the court found that the Association’s arguments could not stand, particularly given its repetitive infringement and the district court’s bad faith finding. Moreover, the court noted that the extensiveness of the challenged injunction was especially necessary in light of the 1984 order that unequivocally banned the Association’s confusing use of “either the word “polo” or any mark confusingly similar” to Ralph Lauren’s logo.
It’s probably safe to assume that the battle is still not over; but for now, this decision will keep the USPA from being able to use the double horsemen logo for competing products (except for clothing).