Ralph Lauren and its lawyers at Kelley Drye & Warren won a skirmish on March 6 in its 30-year war with the U.S. Polo Association (USPA) over trademarks depicting horsemen playing the "sport of kings." In a 39-page decision, Southern District Judge Robert Sweet (See Profile) ruled that USPA’s sale of sunglasses sporting its own polo mark violated an earlier injunction.
Kelley Drye’s William Golden Jr. said in an interview he was gratified by the decision, especially since it comes in the wake of a February ruling by the U.S. Court of Appeals for the Second Circuit upholding a trial finding by Sweet that the USPA can’t use its double horsemen polo player mark in association with fragrances and cosmetics. Sweet noted in his March 6 decision that since the dispute over polo-related trademarks began in 1984, the two sides "have conducted this feud in various battlegrounds with tenacity, ability and assisted by eminent and high-skilled counsel." But, he added in U.S. Polo Association v. PRL USA Holdings, 09-cv-9476, "The outcome of these battles has not produced the clarity to compel the termination of the conflict."
Indeed, the USPA, its lawyers at Baker & Hostetler, and JRA Trademark Company Ltd.—the licensee who makes items using the USPA’s marks—got some good news of their own in the decision. Sweet found that Ralph Lauren had been aware of the USPA sunglasses since at least July 2010, when they came up in deposition testimony in the fragrance litigation. Since Ralph Lauren never contested the USPA marks on eyewear and failed to amend its counterclaims in the fragrance lawsuit to include the glasses, Sweet only awarded Ralph Lauren profits on future eyewear sales beginning 60 days after the ruling.