According to Thomson Reuters:
The United States Polo Association has lost another round in its long-running trademark fight with Ralph Lauren.
The 2nd U.S. Circuit Court of Appeals ruled on Monday that the polo association could be barred from using a "double horseman" logo on its fragrances because it was too similar to trademarks owned by the fashion brand.
In an unsigned opinion, Judges Reena Raggi, Peter Hall and Christopher Droney agreed with Ralph Lauren's attorneys from Kelley Drye & Warren that just because the polo association had the right to use the double horseman mark on apparel did not mean it could also use it on fragrances.
Attorneys from Baker & Hostetler represented the Polo Association, with partner George Stamboulidis leading the appeals effort.
Ralph Lauren has been using its polo player logo on fragrances since 1978 and introduced its Polo Blue fragrance around 2002, the appeals court wrote. In 2009, the court said, the polo association designed a men's fragrance on a dark blue package.
Last March, U.S. District Judge Robert Sweet in Manhattan also sided with Ralph Lauren, throwing out the association's request for declaratory judgment that it could use the mark. Sweet issued a permanent injunction preventing the association from using the mark on fragrances.
That injunction was proper "in light of the (Polo Association's) history of repeated infringement and the district court's finding of bad faith."
Fragrances make up "an extremely small part" of the association's licensing activities, said Baker Hostetler's Gerald Ferguson. The court's opinion will not impact on its use of the double horseman logo on apparel, he said.
Kelley Drye's William Golden, who led the Ralph Lauren team, did not immediately respond to a request for comment. Ryan Lally, a representative for Ralph Lauren, declined to comment.
The battle over the polo player trademarks began around 1984, the appeals court noted, when the Manhattan federal court enjoined the polo association from using its names or marks in a way that was likely to cause confusion with Ralph Lauren marks.
That 1984 order did, however, allow the association to use a mounted polo player in its retail goods as long as it did not cause confusion.
More than two decades later, the parties met again at a trial. A Manhattan federal jury in 2006 found that the polo association's use of a solid version of its double horseman mark, without text, infringed Ralph Lauren's mark. But the jury said there would not be infringement so long as the letters "U.S.P.A." accompanied the mark or the double horsemen was just an outline.
That judgment was upheld in 2008 by the 2nd Circuit.