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Ralph Lauren Loses Another Round of 'Polo' Litigation

By Mark Wilson, Esq. on May 14, 2015 | Last updated on March 21, 2019

There's "Polo by Ralph Lauren" -- everyone knows that. But there's also the "United States Polo Association" (USPA), which uses a similar trademark utilizing the word "Polo" and an outline of a polo player on a horse.

Perhaps you or a loved one has become confused in a department store, as you -- a reasonable consumer -- can't discern the difference between "Polo by Ralph Lauren" and "U.S. Polo Association." Are they the same? Are they different?

Yesterday, the Second Circuit determined that they're just different enough to survive.

Smells Like Infringement

This litigation goes back to 1984, when a federal court enjoined USPA from using any marks that are "confusingly similar" to Ralph Lauren's trademark. Over the years, the parties went back to court whenever USPA marketed a new product containing the word "Polo" and a depiction of a polo player on a horse.

The instant case is about sunglasses bearing the "Double Horsemen Mark," which looks a lot like Ralph Lauren's single polo guy on a horse. Previous litigation was limited to textiles, leather goods, and fragrances, and in the fragrance case, the court said Ralph Lauren wasn't entitled to relief because the 1984 injunction was market-specific; i.e., cologne and perfume weren't part of it.

She Blinded Me with Contempt

Here we are again, this time with sunglasses, and the Second Circuit reached a similar conclusion. The fragrance litigation teaches that "at the very least that use of the Double Horsemen Mark is non-infringing in some markets." While the Second Circuit suggested that sunglasses are probably closer in kind to apparel than fragrances are, "the 1984 Injunction ... does not bar use of the Double Horsemen Mark in all markets."

The Second Circuit said that trademark infringement should be approached in a market-by-market way, but guess what? This case isn't actually about infringement; it's about contempt. Ralph Lauren's real beef is that USPA's use of the Double Horsemen mark constitutes a violation of the district court's order in the fragrance case. But, said the Second Circuit, "a finding that the Double Horsemen Mark is, when used on eyewear, confusingly similar to PRL's marks, while sufficient to find liability in an infringement proceeding, is not sufficient to support a contempt finding." Even if USPA had infringed, that wouldn't be enough to find it in contempt because USPA didn't have notice that sunglasses were covered by the order.

In a somewhat unusual move, the Second Circuit directed the clerk to refer future violations of the fragrance order to this specific panel of judges, who by this time are quite familiar with the litigation.

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