Plaintiff U.S. Polo Association, Inc. (“USPA”) has been the governing body for the sport of polo in the United States since 1890. It has used the “Double Horsemen” mark and logo for a number of years (shown below left). Defendant Polo Ralph Lauren (“RPL”) is the owner of the famous POLO trademark and polo player logo (shown below right).
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The root of this litigation is tied to a 1984 federal court decision holding that the USPA could produce licensed goods, such as apparel items, containing “a mounted polo player,” so long as they were not branded in such a way that they would be likely to cause confusion with Ralph Lauren’s famous POLO brand. A specific polo-player symbol was not defined or approved, but was left as “an open question for future determination.” In 2006, the parties once again litigated this issue in relation to the apparel industry where a jury determined that USPA’s use of a solid version of its Double Horsemen mark, unaccompanied by “U.S. Polo Assn.” text, infringed the RPL mark. However, the 2006 jury found no infringement where USPA used the solid Double Horsemen logo accompanied by the letters “U.S.P.A.” or used an outlined version of the Double Horsemen logo (shown above).
This case specifically involves USPA’s production of “U.S. Polo Assn.”- branded perfume, an industry in which RPL has sold and promoted various RPL-branded fragrances for a number of years. USPA filed for declaratory judgment in the U.S. District Court for the Southern District of New York claiming that they had a right to license and sell fragrance products and packaging bearing the outlined Double Horsemen trademark and logo, and that use and licensing of such fragrance products and packaging did not constitute trademark infringement, dilution, or unfair competition. RPL cross-claimed. The district court issued a permanent injunction prohibiting USPA from using the “U.S. Polo Assn.” name in conjunction with the Double Horsemen mark and logo in men’s fragrances, and USPA appealed.
The Second Circuit found that the district court did not clearly err in ruling that the fact that USPA was authorized to use and license its Double Horsemen logo in one industry (apparel) did not necessarily mean that it was authorized to use the same marks in a different industry (fragrances), in which RPL was well established. USPA’s legitimate prior use of the Double Horsemen mark was insufficient to demonstrate that it intended to capitalize on RPL’s reputation and goodwill in the fragrance industry. Further, the Second Circuit found no clear error in the district court’s determination that “[l]ack of confusion as to apparel may or may not be indicative of lack of confusion as to fragrances.” USPA also challenged the scope of the district court’s injunction as it forbade not only all designs featuring some combination of the Double Horsemen logo and the phrases “U.S. Polo Assn.” or “USPA,” but also the use of the Double Horsemen logo or the word “POLO” alone in connection with fragrances. The Second Circuit, relying upon the history of infringement and the 1984 and 2006 orders obliging USPA to maintain a safe distance from infringing RPL’s marks, found the breadth of the injunction particularly warranted. The district court’ order pertaining to use of the Double Horsemen logo and the word “polo” in the fragrance market merely enforces the language of the 1984 order to which USPA is already subject.
This ruling demonstrates the scope of protection a trademark owner can build for itself for certain goods or services, even with selection of a term or logo that is descriptive for other goods or services. RPL took an existing word “Polo” and used it in innovative ways to create a desirable product and lifestyle brand. It has since established ownership of the POLO mark and logo for goods unrelated to the sport itself. Despite its permissible use in connection with the sport of polo and for clothing, USPA cannot step into new product areas and attempt to trade off the goodwill that RPL has created in its brand.