Federal court to U.S. Polo Association: when it comes to fragrances, "Polo" is taken

Posted by Charles Colman

As the attorney behind LAW OF FASHION often reminds his clients, in the world of trademarks, timing is (almost) everything.  Slow and steady rarely wins the race here, whether the contestants are tortoises, hares, or horses:


A recent opinion authored by Judge Sweet of the Southern District of New York vividly illustrates this point.  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.  So what exactly are we dealing with here?  Observe (LOF can't promise that these are these are the very same logos, exactly as presented in the circumstances that gave rise to the case, but you'll get the general idea):




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.

LOF will now leave you to ponder this ruling.  (You were warned that not every post would be encyclopedic!)  You see, this writer is off to the annual International Contemporary Furniture Fair to find out what those clever industrial designers are up to.  Furniture is of particular interest to Charles Colman Law, PLLC, because it is similarly situated to fashion when it comes to IP: as a "useful article," it is only eligible for copyright when it contains a physically or conceptually separable design element.  Furniture designers have sometimes prevailed on a separability theory, including in a notable appellate court victory just last year; however, as in the fashion context, a typical furniture knock-off lawsuit may be an uphill battle.  But more on that later; cutting-edge design awaits at the decidedly un-cutting edge -- indeed, apparently decrepit -- Javits Center...


Update (12/18/11): One many's trash is another man's treasure.  Check out this discarded tag and the disclaimer it contains (the front of the tag has been inserted earlier in the blog post; unfortunately, it's impossible to say what this was attached to, whether it pre-dates or post-dates any of the relevant court decisions, or whether the parties have since come to a private agreement that effectively "trumps" a court decision on point):



[This post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities.  Any views expressed herein are those of the writer on the particular date of this post, and should not necessarily be attributed to his law firm or its clients.]