Tag Archives: Polo

No do-overs, no take-backs

Originally posted 2008-03-05 00:58:55. Republished by Blog Post Promoter

Hypothetical: We are negotiating a trademark dispute. During those negotiations — which we both agree are being undertaken for purposes of settling our dispute — I, trademark user, promise not to object to (i.e., not to sue for) a certain use by you, other user, but we never actually incorporate that into any kind of agreement.

Five years later I sue you for making just that use. You try to introduce proof of that promise as evidence that I acquiesced to your use, and should be estopped (barred) from suing because of that acquiescence.

And I get down from my pony and scream: “You can’t use that! Those are settlement communications protected under Federal Rule of Evidence 408 — not admissible!” (The idea being, of course, that settlement discussions become impossible if parties need to fear that their representations could end up before a jury down the line.)

Not so hypothetical: In the endless PRL USA Holdings, Inc. v. United States Polo Ass’n squabbling over the POLO trademark, Ralph Lifshitz‘s company, the plaintiff, tried to keep such evidence out. Circuit #2 says:  Not quite.

While we have no need in this case to determine the full range of accommodation between Rule 408’s prohibition and its exception, it seems clear that the firm prohibition should not apply to the affirmative defense of estoppel by acquiescence, which depended on issues distinct from the elements of the claim of infringement. To prevent a defendant from proving an estoppel by acquiescence that arose during settlement negotiations would unfairly curtail a defendant’s ability to rely on that defense. A discussion between a trademark owner and a potential user of a similar mark in which the owner gives assurance that it will not sue for infringement may well be characterized as compromise negotiations. To construe Rule 408 as barring such evidence would substantially limit the opportunity of defendants to rely on the defense of estoppel, even when well substantiated.

The Court quoted an earlier case, explaining,

It would be an abuse of Rule 408 to allow one party during compromise negotiations to lead his opponent to believe that he will not enforce applicable time limitations and then object when the opponent attempts to prove the waiver of time limitations. Similarly, it would be an abuse of Rule 408 to let [a plaintiff] lull [a defendant] into breaching the contract and then prevent [the plaintiff] from explaining its actions because the lulling took place around the settlement table.

In short: Promises at settlement are still promises on which your settlement “partner” can and should be able to rely — especially when you sit by for years while he does so. Hat tip to Howard Bashman.

 

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.