November 15 2005 - USA

Knobbe Martens Olson & Bear LLP

Polo Association scores against Ralph Lauren in Polo logo challenge

In PRL USA Holdings v M&A Marketing Corp (Case 99 Civ 10199, October 20 2005), a federal jury in the US District Court for the Southern District of New York has reached a verdict on four counts of trademark infringement, finding that only one of four logos used on clothing by the United States Polo Association (USPA) and a company called Jordache Limited infringed Polo Ralph Lauren's (PRL) rights in its famous Polo logo. It found no infringement with regard to use of the other three logos.

PRL is the owner of the Polo family of trademarks used in connection with clothing and other products. PRL based its infringement claims on its logo of a polo player on a horse. USPA developed its own logo, referred to as the 'double horseman logo' and described by USPA as "inspired by a picture of two mounted polo players, challenging each other for a ball". Jordache licensed the double horseman logo for use on apparel, and marketed and sold a line of clothing bearing four versions of the double horseman logo, in solid and outline form, two of which included the letters 'USPA'.

In 2000 PRL commenced suit against USPA and Jordache for alleged violations of the Lanham Act and related claims based on alleged trademark infringement. PRL sought an injunction against further use of all four double horseman logos.

The case was tried before a jury. The Associated Press reported that, in closing arguments, PRL's attorney stated that "in the world of fashion, there are few trademarks of greater significance and value" than PRL's mark and urged the jury to find infringement because use of the logos had already helped the defendants sell millions in merchandise. USPA's attorney countered that PRL wanted to "monopolize the marketing when it comes to the image of polo", and argued that it made sense for USPA to use the horseman logo because it is a common depiction of the sport of polo, such that a dictionary even includes a picture similar to the logo.

The jury held that the defendants were liable for trademark infringement only as to the solid double horseman logo (without the letters 'USPA)'. The jury found no infringement with regards to the defendants' use of the three other variations of the logo.

In a news release after the verdict, USPA stated that it has been trying to coexist with PRL and, in light of the jury's findings, it intended to launch a major advertising and marketing campaign using its three logos judged not to infringe.

Elenore Niu, Knobbe Martens Olson & Bear LLP, Newport Beach

 

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*This article first appeared in World Trademark Law Report