June 3rd, 2011
On May 13, 2011, the Southern District of New York ruled on the trademark infringement case between the U.S. Polo Association (USPA) and fashion corporation Polo Ralph Lauren.
Ralph Lauren owns federal trademark registrations for marks associated with the Polo brand, including the “Polo Player Logo” and the word mark “POLO.” The USPA owns more than 900 trademarks worldwide, including the “Double Horsemen Mark” and “U.S. Polo Assn.”
The USPA and Ralph Lauren have been bickering in court over trademarks since 1984, where the court found that the USPA’s had infringed Ralph Lauren’s Polo Player Logo, POLO word mark, and other work marks and trade dress. The USPA was enjoined from further infringement but could still use its name, a mounted polo player, a equestrian image, and other references to the sport as long as they were distinctive from the Ralph Lauren trademarks.
Life was peaceful until the USPA started making and distributing a men’s fragrance, with the Double Horseman Mark on the bottle and the word mark U.S. Polo Assn. The USPA sought a declaration that their use of the marks on their fragrances didn’t violate the former injunction and Ralph Lauren counterclaimed that the use constituted trademark infringement, unfair competition, trademark dilution, and a slew of common law violations.
Trademark infringement cases are extremely fact intensive. Courts look to eight factors to determine whether there has been a likelihood of confusion. These factors, knows as the Polaroid analysis, are “(1) the strength of [the] mark, (2) the degree of similarity between the two marks, (3) the proximity of the products, (4) the likelihood that the prior owner will bridge the gap, (5) actual confusion, (6) the reciprocal of defendant’s good faith in adopting its own mark, (7) the quality of defendant’s product, and (8) the sophistication of the buyers.”
The decision is over 60 pages long, so I’ll spare you the details (which you can read here), but after reviewing each factor in detail, the court determined that the USPA’s use of the Double Horseman Mark and its work mark created a strong likelihood of confusion with Ralph Lauren’s products when used in the context of men’s fragrances.
The court found that the USPA used the marks in bad faith, intending to capitalize on Ralph Lauren’s reputation and goodwill, so it held the USPA guilty of unfair competition claims as well.
The court applied the four-factored injunction standard articulated in eBay and Salinger (1. Likelihood of irreparable injury; 2. adequacy of remedies at law; 3. balance of hardships; and 4. the public interest) and granted Ralph Lauren permanent injunctive relief against the USPA.
To put the holding in some simple perspective: the US Polo Association decided to sell some perfume using its own validly registered trademarks. The Polo Ralph Lauren brand is so recognizable, that the USPA couldn’t use its own marks on fragrances. Among many other reasons, the court figured that the decision for the USPA to go into fragrances to profit from the Ralph Lauren reputation and that is not allowed.
The valid registration and administration of federal trademarks is a must for any fashion brand (or any brand at all for that matter). It is important to carefully determine what categories your marks are registered as and assess similar marks that may contest your use or registration.