The United States Court of Appeals for the Second Circuit ruled recently that the United States Polo Association (USPA) cannot use its “Double Horsemen” logo on men’s fragrances, affirming the district court’s finding of trademark infringement and entry of a permanent injunction in favor of PRL USA Holdings, Inc. (PRL). PRL is the owner and licensor of Polo Ralph Lauren Corporation’s trademarks, including the POLO and Polo Player Logo marks, registered in connection with fragrances. The USPA, the governing body for the sport of polo in the United States, and Ralph Lauren have been at odds over USPA’s use of a mounted polo player design mark, including its Double Horsemen logo, for nearly 30 years.
In 1984, USPA and its licensees sought a determination that their use of a specific mounted polo player logo on various merchandise would not infringe PRL’s Polo Player Logo marks. The district court in that proceeding held that USPA’s mounted polo player logo on such merchandise did infringe PRL’s Polo Player Logo, POLO, and POLO BY RALPH LAUREN marks and trade dress and issued an order enjoining USPA and its licensees from using the USPA mounted polo player logo on such merchandise. The court’s opinion and order clarified that USPA could nevertheless engage in a retail licensing program using a different mounted polo player logo so long as such a logo was distinct from PRL’s Polo Player Logo in content and perspective and would not be likely to cause any likelihood of confusion with any of PRL’s marks. In 2006, in an infringement action brought by PRL, a jury found that USPA’s use of a solid version of its Double Horsemen logo, alone without the use of its name or other accompanying text, on apparel infringed PRL’s Polo Player Logo, but that the use of the same Double Horsemen mark accompanied by the words U.S.P.A. and the use of an outlined version of the Double Horsemen mark, appearing either alone or with the letters U.S.P.A., on apparel did not infringe PRL’s Polo Player Logo.
In their most recent dispute, USPA sought a declaration that its sale of men’s fragrances bearing its Double Horsemen mark, accompanied by U.S. POLO ASSN., USPA or 1890 would not infringe PRL’s marks. The district court rejected USPA’s petition, holding that USPA’s use of its Double Horsemen mark with such wording/date created a likelihood of confusion with PRL’s marks and broadly enjoined USPA from using its Double Horsemen mark, even if accompanied by wording U.S. POLO ASSN. or USPA, as well as the word POLO alone with fragrances or with other goods in closely related fields such as cosmetics. The injunction did not affect USPA’s right to use its outlined Double Horsemen mark on apparel, as such use was found non-infringing in the 2006 jury case, which had issue-preclusive effect.
USPA filed an appeal to the Second Circuit on the grounds that (i) its prior use of the Double Horsemen logo and the 1984 and 2006 rulings precluded the district court’s finding of infringement, (ii) the apparel and fragrance fields are so closely related that the 2006 ruling with respect to the use of certain of its Double Horsemen logo marks on apparel should extend to fragrances, (iii) the lower court’s analysis of the survey evidence was flawed, and (iv) the permanent injunction was overbroad.
The Second Circuit affirmed the lower court’s holding. With regard to USPA’s first claim on appeal, the Court found that neither the prior rulings nor USPA’s prior use precluded the district court’s finding of infringement. The 1984 ruling left open the question of whether “a particular polo player symbol was sufficiently distinctive” to avoid confusion and the 2006 litigation involved apparel, while the present suit involved the men’s fragrance industry. The Court reasoned that “a finding that there is not similarity indicative of infringement in one industry does not, as a matter of law, preclude a finding of similarity in another.” Nor did USPA’s prior authorized use of its mark on apparel “necessarily mean that it acted with good faith in using the same marks” in a different industry. As to USPA’s second claim, the Court held that USPA’s history of lawfully using its logo on apparel did not imply a right to extend its use to fragrances.
Third, the Court held that the district court did not abuse its discretion in affording no weight to USPA’s survey evidence, because USPA’s control mark included the word “polo.” The Court held that the district court did not clearly err in finding that the control mark had to exclude the word “polo” in order to be reliable, in light of the fact that USPA’s use of its logo with the word “polo” was “one of the critical issues for determination” in this case.
Finally, the Court held that the injunction properly addressed fragrances and the closely related field of cosmetics, and any further reach was already forbidden by the 1984 litigation. The injunction moreover was not overbroad “in light of USPA’s history of repeated infringement and the district court’s finding of bad faith.”
The case serves as an important reminder that trademark infringement analysis is market-specific and the paramount concern is whether the use of a mark is likely to cause confusion. The Second Circuit opinion, U.S. Polo Ass’n, Inc. v. PRL USA Holdings, Inc., may be found here. Other coverage of the case may be found here.
UPDATE: After the Second Circuit decision, the district court found USPA’s sale of sunglasses bearing its Double Horsemen logo violated the injunction regarding fragrances and other products. The sunglasses contain a solid white Double Horsemen mark on a blue background, encircled by a red band with white borders, along with the words “U.S. POLO ASSN.” The court granted PRL’s motion to hold USPA in contempt, finding that the plain language of the earlier injunction applied to eyewear and the mark was “virtually identical to the Double Horsemen [m]ark previously held to be a colorable imitation of the Polo Player Logo in the context of fragrances.” The court awarded PRL USPA’s future profits from sales of sunglasses containing the Double Horsemen logo sixty days after the issuance of the court’s order. The district court opinion, U.S. Polo Ass’n, Inc. v. PRL USA Holdings, Inc., and other coverage of the case may be found here.