Add another notch for Ralph Lauren in the protracted battle of the polo ponies.
This story first appeared in the February 13, 2013 issue of WWD. Subscribe Today.
The U.S. Court of Appeals upheld an earlier ruling in March that the U.S. Polo Association could be stopped from using a “double horseman” logo on its fragrances because it was confusingly similar to Ralph Lauren’s trademarks.
“The court agreed that the United States Polo Association acted in bad faith in adopting its double horsemen logo on fragrances and infringed on Ralph Lauren’s polo player marks,” a Ralph Lauren spokesman said Tuesday. “We will continue to vigorously defend against any attempt to infringe on our intellectual property rights.”
The U.S. Polo Association, which had previously been granted the use of the logo on apparel, has been locking mallets with the fashion brand over the use of the double horseman trademark for 29 years.
In 1984 a Manhattan federal court enjoined the U.S. Polo Association from using its “name or marks in a way likely to cause confusion” with Ralph Lauren’s marks. At the same time, the court did permit the use of a mounted polo player on the polo association’s merchandise as long as it didn’t cause consumer confusion.
Twenty-two years later, a New York federal jury quibbled over the double horseman image and decided that if it included text that identified it as a USPA product, it did not count as infringement. A solid double horseman without text, however, did count as infringement, the jury found.
That decision was upheld on appeal in 2008. In the most recent case concerning fragrances, the Court of Appeals argued that just because the polo association could use the logo for apparel, it didn’t mean it “acted in good faith” in using the mark on fragrances. In other words, the appeals court agreed with the lower court’s prior ruling in March that the polo association adopted the mark with the “intention of capitalizing” on Ralph Lauren’s “reputation” and products.