Mark-o! Polo!

Horses and perfume -- perfect together

Looks like somebody’s going to be ponying up:  here’s the latest in the saga between the (old) rich (the U.S. Polo Assocation) and the (new) preposterously rich (Ralph Lauren):

The US Polo Association filed a suit against Ralph Lauren claiming that the fashion giant is trying to make money off the logo and the sport itself. The lawsuit comes as the US Polo Association looks to market its own line of fragrances.

A New York judge didn’t see things quite the same way as the Polo Association, though. Federal judge Robert Sweet noted that Ralph Lauren has been using the single player polo logo in conjunction with the word ‘polo’ on its products since 1978. He stated that while there is plenty of room for both companies to “engage in licensing activities,” it is another matter entirely for the US Polo Association to “use ‘polo’ in conjunction with the double horsemen mark on fragrances.” According to the judge, such use would cause confusion among consumers. Judge Sweet issued a permanent injunction requiring the polo association to drop all claims.

No respect for the upper crust

The opinion is here, via the Law of Fashion blog, which explains the context of the dispute — which outfit was the first one to realize that horses and fragrance were a good association? — and comments insightfully:

In a nutshell, Judge Sweet ruled that Polo Ralph Lauren got to the fragrance market first, and that the official U.S. Polo Association — which entered the market twenty years later, with a confusingly similar logo — is out of luck.  Permanently enjoined, to be precise.

Apart from arguing that there was no likelihood of confusion here, the USPA had accused Ralph Lauren and its fragrance licensees of “attempting to monopolize the depiction of the sport of polo.”  The Court responded:

There is . . . clearly room in our vast society for both the USPA and [Ralph Lauren] to engage in licensing activities that do not conflict with one another, and nothing contained in this opinion should be construed as precluding such activities . . . . Nonetheless, to the extent the USPA [uses] “polo” in conjunction [with] the Double Horsement mark on fragrances, this is another matter.

This ruling is especially interesting because, in 2006, a jury found that “the solid Double Horsemen mark with [the accompanying text] ‘USPA’ [was] not infringing in the context of the apparel market.”  (Emphasis added; for more on the previous case, look here and here.)  For Judge Sweet, the fact that the present dispute involved fragrances, not apparel, and that the text accompanying the “Double Horsemen mark” differed in the two cases, meant that the earlier outcome had no bearing here.

Bear?  Horse?  Perfume?

What do I know?  In any event it appears that the Association’s claims failed the smell test.

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Author:Ron Coleman

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8 Responses to “Mark-o! Polo!”

  1. June 2, 2011 at 7:59 pm #

    Making it through that post pun-free was impossible, huh, Ron? I can’t believe the argument was even entertained here – when I read the RSS snippet, I had to check that this wasn’t a repost from 1982. Really? Now the USPA has chosen to take odds with Ralph Lauren? Now?

  2. June 2, 2011 at 8:51 pm #

    It was such a dumb claim that I didn’t think it was worth blogging about. But everyone else was, kind of. And you know me: Just the same as everyone else.

  3. June 3, 2011 at 1:29 pm #

    It IS worth blogging about. Look up my trademarks and you’ll find one for a line of clothing that has a horse (it’s public data). Guess who I get a letter from? Guess how close my client’s logo looks to Ralph Lauren’s?

  4. June 3, 2011 at 6:09 pm #

    Well, what would the blogosphere be if not for repetition. Think of it as an example of the marketplace of ideas – the best ones get repeated and rise to the top. Or in this case, the worst claims…

  5. June 5, 2011 at 12:52 am #

    Actually, Michael, now I’ve learned something, so it was worth blogging about: Lifschitz is a bit of a TM bully too, huh! Imagine.

  6. June 5, 2011 at 1:33 am #

    Yeah… they have G-berg Tr-g sending out lots of form letters. There’s so much more I want to say, but best to keep it private until my client is totally out of the woods. :)

Trackbacks/Pingbacks

  1. Mark Malek - June 2, 2011

    RT @RonColeman: Mark-oh! POLO! http://t.co/YSGavat A #trademark win for the nouveau riche, a loss for the horsey set

  2. Jay O'Keeffe - June 2, 2011

    Mark-o! Polo! http://zite.to/l7LWYo via @Ziteapp

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