The latest point in the years-running match between Polo Ralph Lauren and the U.S. Polo Association (the “USPA”) went to Ralph Lauren, when earlier this week the Second Circuit of the U.S. Court of Appeals enjoined the USPA from using its “Double Horsemen” polo player mark on cosmetics or fragrances. Read the full text of the opinion here.
Historically, the courts have sided with the USPA in this feud over polo player marks, which dates back almost thirty years to 1984.
In that first face-off, the USPA’s predecessor won the right to produce licensed sporting wear using its Double Horsemen logo because it was not likely to create any confusion with Ralph Lauren’s well-known Polo-marked apparel. This is despite the fact that Ralph Lauren had featured – and continues to feature – its own famous polo player image on fragrances and apparel since 1978.
Two decades later, in 2006, a jury determined that the USPA’s use of the logo on licensed clothing did not infringe Ralph Lauren’s marks so long as its Double Horsemen mark was either displayed as an outline (i.e., not a solid image) or was accompanied by the “U.S.P.A.” letters. The Second Circuit later upheld that ruling.
This round, the dispute stemmed from Ralph Lauren’s Polo Blue fragrance, which it introduced to the market in 2002. In 2009, the USPA designed a men’s fragrance with similar dark blue packaging that used the Double Horsemen logo and “POLO” mark. Unlike its 2006 decision, however, the Second Circuit banned the USPA from using its Double Horsemen and POLO marks in connection with any cosmetics or fragrances, upholding the lower court’s determination. The Second Circuit reasoned that use of the USPA’s marks in the fragrance/cosmetics space infringed Ralph Lauren’s trademark rights, and constituted unfair competition. Rejecting the USPA’s reliance on past favorable rulings, the Second Circuit reasoned that just because the USPA was authorized to use its Double Horsemen logo in the apparel market did not necessarily mean that it acted in good faith using the same marks in selling men’s cologne.
And so the battle continues. For now, though, it appears that Ralph Lauren may be able successfully to keep the USPA’s Double Horsemen logo out of markets for competing products except for apparel, which could cause a problem for the USPA in its efforts to expand the use of its logo for new products and services.