UPDATE, October 3rd, 2012: According to Law360, the U.S. Polo Association is challenging the reach of a court order preventing it from using a Ralph Lauren-like logo on fragrances. The USPA is arguing that its sunglasses do not violate the court's injunction and that the issue needs a trial.
Under the terms of a 2003 settlement, the USPA can use its double horseman logo on certain apparel, such as watches, shoes and jeans. According to the USPA, the protected/unprotected status of sunglasses has not yet been determined.
The United States Polo Association (USPA) has had a rough history
when it comes to "polo" trademarks and U.S. courts. Not to be outdone, the Court of Justice of the
European Union recently added another chapter to the USPA's misery.
Approximately thirty years ago, the USPA duked it out unsuccessfully
with Ralph Lauren over Polo Fashions' trademarks and logos. In United States Polo Assn., Inc. v. Polo
Fashions, Inc. (PFI), 1984 U.S. Dist. LEXIS 21908 (S.D.N.Y. Nov. 19, 1984) [enhanced version available to lexis.com subscribers],
the district court ruled:
that the Polo Player Logo as used
by PFI, alone, as well as in combination with other indicia of source, is
entitled to trademark status and that the use by USPA's licensees of a similar
figure in the context and manner in which it has been used does infringe on
PFI's trademark rights.
There was a bit of reprieve in 2008, when the Second Circuit
rejected PRL USA Holdings' (holder of the Ralph Lauren trademarks) infringement
claims against the USPA's pair of mounted polo players - the so-called
"double horsemen marks." PRL USA
Holdings, Inc. v. United States Polo Ass'n, 520 F.3d 109 (2d Cir. N.Y.
2008) [enhanced version available to lexis.com subscribers].
But that victory was short lived, as last year, the Southern
District of New York ruled that the USPA could not use a horse-and-rider symbol
similar to PRL's logo on fragrances. United
States Polo Ass'n v. PRL USA Holdings, Inc., 800 F. Supp. 2d 515 (S.D.N.Y. 2011) [enhanced version available to lexis.com subscribers]. That case is currently before the Second Circuit (12-1346).
And recently, as reported by Law360, the USPA suffered another loss - this time, to a
different "polo" foe and on foreign soil. On September 6th, the Court
of Justice of the European Union dismissed
the USPA's appeal from a ruling that denied the USPA's attempt to trademark
an abbreviated version of its name - "U.S. Polo Assn."
The USPA's European mark was opposed by textile maker
Textiles CMG, which asserted its earlier registration of the mark "Polo-Polo." The lower court (the General Court of the European Union) deemed correct an earlier finding that there was a likelihood of
confusion on the part of the relevant public, namely the average consumer in
the European Union, who might have only an imperfect recollection of the
earlier mark Polo-Polo. The lower court held:
In the light of the fact that the goods covered by the marks at issue will be purchased by average consumers in the European Union and that, as the Board of Appeal found, consumers will not generally pay particular attention when buying this type of goods, the similarity of the signs at issue creates a likelihood of confusion, including the likelihood of association, between those marks within the European Union.
about the parody/trademark infringement case involving Ralph Lauren's iconic polo
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