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Ralph Lauren Scores in Polo IP War
Lisa Shuchman
The Litigation Daily
02-12-2013
On Monday Ralph Lauren's lawyers at Kelley, Drye & Warren scored a win in the latest skirmish over the company's trademark, persuading the U.S. Court of Appeals for the Second Circuit to rule that the U.S. Polo Association can't use its own polo player mark on fragrances and cosmetics. The 12-page unpublished decision [PDF] affirms a March 2012 ruling by U.S. District Judge Robert Sweet in Manhattan that enjoined the USPA from using the mark.
In his ruling last year, Sweet barred the Polo Association, the governing body since 1890 for the sport of polo in the United States, from using its "Double Horsemen" trademark and the word "POLO" in connection with any fragrance or beauty product. He also ordered the U.S. Patent and Trademark Office to refuse certain Polo Association applications for trademarks. The marks in connection with fragrances infringe Ralph Lauren's trademark rights, constitute unfair competition, and could cause the designer and its licensees irreparable harm, the judge ruled.
Lawyers for the USPA, led by Gerald Ferguson and George Stamboulidis of Baker & Hostetler, had argued on appeal that prior use of its Double Horsemen logo, as well as past rulings that granted it the right to use its marks on apparel, meant that it also could use its marks on a fragrance since the apparel and fragrance markets are closely related. The Second Circuit panel disagreed.
The feud between the USPA and Ralph Lauren over marks depicting polo players goes back to 1984, when a predecessor to the Polo Association won a declaratory judgment against Ralph Lauren that allowed the sporting organization to produce licensed goods as long as they didn't cause confusion with Ralph Lauren's famous Polo brand.
