United States Polo Association, Inc. et al v. PRL USA Holdings, Inc.
Filing
80
OPINION: The PRL Parties have filed a motion for a preliminary injunction. Upon all the proceedings and herein and the findings of fact and conclusions of law set forth below, the USPA Parties' request for a declaratory judgment is denied, the PRL Parties' request for a permanent injunction is granted. Based on the findings and conclusions set forth above, the claims of the United States Polo Association Parties are dismissed and the PRL Parties are granted injunctive relief. Submit judgment on notice. (Signed by Judge Robert W. Sweet on 5/13/2011) (ae)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
x
UNITED STATES POLO ASSOCIATION, INC.,
and USPA PROPERTIES, INC.,
Plaintiffs,
09 Civ. 9476
OPINION
~against-
PRL USA HOLDINGS, INC., and
L'OREAL USA, INC.,
Defendants.
--x
A P PEA RAN C E S:
At
)
-USDCSDNY
DOCUMENT
ELECfRONICALLY F1LED
DOC #:
DATE FILED: l:\' ·1 ~, !I l
for Plaintiffs
BAKER & HOSTETLER LLP
45 Rockefeller Plaza
New York, NY 10111
By: Gerald Ferguson, Esq.
David Sheehan, Esq.
At
for Defendant L'Oreal USA
PAUL, HASTINGS, JANOFSKY & WALKER, LLP
75 East 55
Street
New York, NY 10022
By: Robert L. Sherman, Esq.
At
endant PRL
KELLEY DRYE & WARREN LLP
101 Park Avenue
New York, NY 10178
By: William R. Golden, Jr., Esq.
Sweet, D. J.
In
this
action,
("Properties" )
plaintiffs
("US PAil )
Inc.
Association,
the
USPA
and
the
(collectively,
Uni
States
Properties,
"USPA
Inc.
Parties"
"Plaintiffs") sought a declaration pursuant to 28 U.S.C.
(1)
Polo
or
2201:
§
that they have the right to license and sell in the United
States
fragrance
ASSN. ,"
the
products
Double
and
Horsemen
packaging
Trademark
products bearing the marks identif
Serial
bearing
and
"U.S.
POLO
and
other
"1890,1/
in Trademark Application
Nos.
products
identified in those applications i
(2)
that
their use
and licensing of such fragrance products and packaging does not
violate
§
1125(a)
Section
and
43(a)
(c),
and
nor
(c)
of
the
constitute
Lanham Act,
infringement,
15
U.S.C.
dilution
or
unfair competition with respect to the rights of the defendants
PRL USA Holdings, Inc.
(collectively,
("PRL") and
L'Or~al
USA, Inc.
the "PRL Parties" or "Defendants")
i
("L'Or~al")
and
(3)
that
their use and licensing of such fragrance products and packaging
does
not
relating
violate
to
the
trademark
common
law
of
infringement,
trademark dilution.
1
the
State
unfair
of
New
competition
York
and
The PRL Parties have brought counterclaims against the
USPA Parties for trademark infringement, unfair competition, and
trademark dilution under Sections
Lanham Act,
15 U.S.C.
1114,
§§
law trademark infringement,
dilution,
unfair
law
each
and
(c),
and
common
trademark
practices,
decept
in violation of
the
statutory and common
which
The
and
the
and
state
360 1.
1125 (a)
and 43 (c)
unfair
including New York General
349
43 (a)
trade dress infringement,
competition,
and misappropriation
32,
PRL
the
USPA
Parties
Business Law
("GBU')
Parties
also
fil
a
do
business
t
Sections 133,
motion
for
a
preliminary injunction.
Upon all
of
fact
Parties'
Part
and
proceedings had herein and the findings
conclusions
of
law
set
forth
ow,
the
request for a declaratory judgment is denied,
USPA
the PRL
, request for a permanent injunction is granted.
Prior Proceedings
This
action
November 13, 2009,
II,
was
commenced
by
the
USPA
naming only PRL as a defendant.
2010, L'Oreal's motion to intervene was granted.
its answer and counterclaims on February 16, 2010.
2
Parties
on
On February
PRL filed
On March 2,
2010,
L'Or~al
filed
its answer and counterclaims,
and the PRL
Parties moved for a preliminary injunction.
On
of
consent
preliminary
injunction
permanent
unction.
held
from
September
parties,
the
was
converted
the
into
a
motion
for
a
request
for
a
The trial and submission of evidence was
through
27
September
30,
Final
2010.
argument was held on November 17, 2010.
Findings of Fact
The Parties
USPA is a
place
of
Lexington,
business
not for-profit
Illinois corporation with a
at
Works
4307
Kentucky 40511.
Iron
Suite
110,
USPA is the governing body of the
sport of polo in the United States.
in existence continually s
Parkway,
1890.
(Tr. 137:3-6. 1 )
It has been
(Tr . 14 6 : 2 3 14 7 : 7 . )
USPA
derives the majority of its revenue from royalties received as a
result of licensing its trademarks.
(Tr. 297:23-299:4.)
Properties is an Illinois corporation with a place of
business at 771 Corporate Drive,
Suite 430,
-Tr." denotes a citation to the trial transcript.
3
Lexington,
Kentucky
40503,
Properties'
and is a wholly-owned subsidiary of USPA.
e function is to manage the 1
ing program of USPA.
(Tr.
297:23 299:4.)
PRL is a Delaware corporation with a place of business
PRL is the owner and
at 650 Madison Avenue, New York, NY 10022.
licensor of
the
trademarks
Polo
luding
of
Polo
Ralph
Lauren
Corporation,
and
"POLO"
used
in connection
Player Logo
with fragrances.
L'Oreal
exclusive
a
Delaware
fth Avenue,
business at 575
the
is
licensee
categories of fragrances,
the Polo
ayer
of
corporation
New York,
certain
with
a
NY 10017.
PRL
place
of
L'Oreal
trademarks
cosmetics and related goods,
in
the
including
and "POLO."
in Issue
In
the
1960s,
Mr.
Ralph
Lauren
started
sown
business, which today is known as Polo Ralph Lauren Corporation.
In the late 1970s,
when the predecessor to PRL
referred to as PRL) decided to expand into fragrances,
4
(also
cosmetics
and related products, an exclusive license agreement was entered
into with L'Oreal.
In
market
(Deposition of Negar Darsses 25:21-26:9.)
1978,
under
the
that
first
license
fragrance
appeared
packaging and prominently featured,
feature,
the logo known as the
in
introduced
a
green
into
the
bottle
and
and to this day continues to
"Polo Player Logo,"
as well as
the word mark "POLO" and less prominently "Ralph Lauren."
(Tr.
3 5 : 4 - 9 i PRL Ex. 2 6 . 2)
That fragrance has been sold continuously for 32 years
and was voted into the industry's Fragrance Foundation'S Hall of
Fame.
(Tr. 52: 13 - 21 . )
Beginning in approximately 2002,
adding
new
men's
fragrances
to
the
the PRL Parties began
line,
each
displaying the Polo Player Logo and the word mark
2002,
POLO
Ralph
BLACK in 2005,
Lauren
BLUE
was
launched,
POLO DOUBLE BLACK in 2006,
and POLO Ralph Lauren RED,
37 : 2 1 i PRL Exs. 11, 27 - 3 1 . )
WHITE
&
prominently
"POLO."
followed
by
In
POLO
POLO EXPLORER in 2007
BLUE in 2009.
(Tr.
36: 8
The PRL Parties recently introduced
four new fragrances to the marketplace,
referred to as the "Big
"PRL Ex." denotes a citation to a trial exhibit submitted by the PRL
Parties, and "USPA Ex." denotes a citation to a trial exhibit submitted by
the USPA Parties.
5
word "POLO.
ayer Logo and the
aying the Polo
Pony Collection/II each di
(PRL Exs. 32-35.)
II
All of the aforementioned PRL Part
still
being
products
sold
come
(Tr .
today.
ln
different
The
and
PRL
Parties/
ors
3 8 : 8 17 . )
sizes
fragrances are
and
exhibit
different scents/
but all
the word "POLO.
(Tr. 36:8-37:21i 51:11 19i PRL Exs. 26-35.)
II
them use the Polo Player Logo and
PRL owns a number of federal
trademark registrations
for the Polo Player Logo /
alone or in combination with words /
names/
for fragrances and related products/
symbols or devices/
including/
among
2/922/574i
3/076/806i
based
Trademark
others/
U.S.
Reg.
and 3/095/176/
Application
Nos.
1/212/060i
as well as a pending use
Serial
No.
and
1,327,818
having
attained
Those
77/883,516.
strations are valid and subsisting in PRL,
1,212,060
1/327/818i
with Reg.
incontestable
Nos.
status.
(PRL Ex. 14.)
The USPA Trademarks
USPA
worldwide,
currently
including "U. S.
Issue
owns
more
POLO ASSN.
6
1/
than
900
trademarks
and the "Double Horsemen
Mark t
which
II
program.
are
the
primary
trademarks
of
USPA'S
licensing
(USPA Ex. 14; Tr. 163:16-165:6.)
Existing trademark registrations with respect to these
two
primary marks
USPA and
the
(b)
25i
include:
Double
No.
Registration No.
ASSN.
SINCE
Registration
(d)
1890
NO.2, 282,427
POLO ASSN.
Registration No.
for
International
the
14,
Classes
Double
18
and
for
Class
Horsemen
(c)
25i
u.s.
Registration No.2, 991,639
in
International
for
U. S.
International Classes 14 and 18 i
for U.S.
in
3,370,932
2,188,594 for the Double Horsemen Trademark
International Class 14 i
POLO
3,598,829
International
in
Registration No.
Horsemen Trademark
Registration
Trademark
(a)
(f)
POLO
Class
ASSN.
(e)
25i
SINCE
1890
Registration No.2, 908,391
in International Classes 14 and 18; and
3,367,242 for U.S.
in
POLO ASSN.
(g)
International
Class 25. 3
USPA began
the
early
1980s,
States until 1998.
to
but
commercially license
did
not
actively
its
license
trademarks
in
the
in
United
(Tr. 167: 19 - 168 : 15 . )
International Class 14 covers "[p]recious metals and their alloys and
goods in precious metals or coated therewith, not included in other classes;
jewelry,
precious
stones;
horological
and
chronometric
instruments.
International Class 18 covers " [ljeather and imitations of leather, and goods
made of these materials and not included in other classes; animal skins,
hides i trunks and travelling bags i umbrellas
parasols and walking sticks i
whips
harness and saddlery.
International Class 25 covers " [c]lothing,
footwear, headgear." See 37 C.F.R. § 6.1.
/I
I
I
/I
7
The
manufactured,
"U. S.
Parties
USPA
marketed,
POLO ASSN. [[
and
and the
sold
products
than
5,000
Uni ted States,
J.C.
Penney,
licensees
bearing
"Double Horsemen Mark,
apparel and accessory categories.
more
their
and
independent
have
the
words
numerous
II
The products have been sold
retail
stores
throughout
the
luding major national chains such as Kohl's,
Sears,
Ross,
Peebles,
Goody's,
Dr.
J's,
Stores, as well as in fifteen USPA outlet stores.
and Stage
(Tr.209:22
210:2.)
JRA Trademark Company Ltd.
("JRA")
is
licensee in
Uni ted States
fragrances
other than
es and watches.
USPA's
master
(Tr. 166: 15 18.)
In
2008,
USPA
commenced
discussions
expanding into the fragrance market.
In
men's
was
2009,
fragrance
being
used
JRA
that
by
designed
featured
USPA
on
and all products
with
JRA
(Tr. 212:24 213:4-8.)
packaging
use
on
the Double Horsemen Mark,
apparel.
about
(Tr .
214 : 22 24.)
a
USPA
which
The
packaging used a dark blue background as its predominant color,
with the Double Horsemen Mark,
accompanying word mark lettering
as well as a thin line creating a border around the perimeter of
8
I appearing in gold.
the front panel
(PRL Ex.
Tr.
16;
54:1
55:21.)
Approximately 10,000 units
USPA's fragrance bearing
the Double Horsemen Mark were produced in November 2009.
Around
277:11 15.)
that
time
and
shortly
thereafter,
(Tr.
USPA's
fragrance product was offered for sale at USPA outlet stores and
through
V.I.M.
November
2009
Jeans
(Tr.
stores.
and March
approximately
2010,
19,
2010,
3,500
units
were
(Tr. 278: 10 13.)
sold through USPA outlet stores.
On March
Between
221:20-222:7.)
counsel
for
USPA
represented
in
writing to this Court that USPA agreed to "immediately cease all
sales of
fragrance
products,
and use
packaging bearing the
Double Horsemen mark and to refrain from advert ising,
offering
for sale,
products
selling,
transferring or donating fragrance
Double Horsemen Trademark" until after
and packaging bearing
the
decision
on
injunction motion.
the
PRL
(Tr .
Parties'
2 7 7 : 16 - 2 5 . )
motion
for
a
preliminary
On March 24 ,
2 010 ,
the
USPA's written submission was "so ordered" by the Court.
In addition to
the
approximately 3,500
units of
the
USPA Parties' fragrance that were sold, approximately 1,000 were
recalled
and
quarantined.
(Tr.
9
278:1-279:7.)
Approximately
5,500
units
are
unaccounted
for,
except
to
the
extent
it
is
known that they were sold to V.I.M. Jeans at some point in time.
(Tr . 2 7 8 : 14 - 2 5 . )
It is not known whether they continued to be
sold after March 19, 2010.
Prior Lit
(Tr. 279: 1- 4 . )
ion
In 1984, USPA and its licensees commenced an action in
this court against PRL for a declaratory judgment that various
articles of merchandise bearing a mounted polo player symbol did
not
infringe
PRL's
Polo
Player Logo.
trademark infringement.
PRL
counterclaimed
The matter came before
the Honorable
Leonard B. Sand.
In his
USPA's request
Order
for
a
(the
"1984
Order"),
Judge
Sand denied
judgment of non infringement,
found
USPA and its licensees infringed PRL's Polo Player Logo,
POLO
BY
RALPH
LAUREN
trademarks
engaged in unfair competition.
Order
marks,
not
enjoined
USPA
and
its
and
PRL's
(USPA Ex.
licensees
15
from
trade
~~
that
POLO,
dress,
89.)
and
The 1984
infringing
PRL's
including the Polo Player Logo and the word "POLO," but
from
engaging
in
infringing trademarks.
USPA to conduct a
a
licensing
program
Specifically,
the
retail
that
did
not
1984 Order permitted
licensing program using its name,
10
use
"a
mounted polo
player
or
distinctive from.
equestrian
or
equine
symbol
which
is
[PRL's] polo player symbol in its content
and perspective,U and other trademarks that refer to the sport
of
polo,
subject
to
certain
forth in the 1984 Order.
of
the
1984
Order
bars
(I d .
any
conditions
~
and
restrictions
9 i Tr. 16 9 : 9 - 2 5 . )
use
of
the
"United
set
Paragraph 8
States
Polo
Association ll name or other name "which emphasizes the word POLO
(or the words U.S.
Polo),
separate, apart and distinct from any
such name in a manner that is likely to cause confusion."
Ex.
(USPA
15 ~ 8.)
The
into
1
the so
requirements
of
sublicense agreements
the
1984
Order
into which
JRA
are
enters and into
led "Brand Rule Book" generated by USPA.
178:18i USPA Ex.
incorporated
(Tr. 170:22
19.)
Conclusions of Law
I.
Claims Under Lanham Act §§ 32 & 43(a)
The parties assert claims under both Section 32 of the
Lanham Act,
for trademark infringement,
11
and Section 43(a),
for
false designation
origin or passing off. 4
Section 43 (a)
the Lanham Act prohibits the use in commerce of any word,
of
term,
name, symbol, device, or combination thereof that
is 1
to cause confusion, or to cause mistake, or
to
as to the affiliation,
connection, or
as soc
ion of such person wi
another person, or as
to the origin, sponsorship, or approval of his or
goods, services, or comme
acti vi ties by another
person
15 U.S.C.
§
1125 (a) (1) and (a) (1) (A)
5
Section 32 of the Lanham Act provides in relevant part:
(1) Any person
registrant
who
shall,
without
the
consent
of
the
(a) use in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark in
connection with the
e
of any goods or
services on or in connection with which such use is
likely to cause confusion, or to cause mi
or to
deceivei or
(b) reproduce, counterfeit, copy, or colorably imitate
a registered mark
apply such
to labels,
signs,
prints,
packages,
wrappers,
es or
advertisements intended to be used in commerce upon or
in connection with
sale.
. of goods or services
on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive,
shall be liable in a
1 action.
4
The PRL Parties do not pursue their dilution claims.
PRL Parties Post
Trial Memorandum of Law at 1 n.1.
Section 43 (a) protects both registered and
trademarks.
v. Google Inc"
562 F.3d 123, 128 n.3 (2d Cir. 2009) (citing
~~~~~~~~~~~~~~~~~., 505 U.S. 763, 768 {1992}}.
12
15 U.S.C.
§
1114.
In
order
to
prevail
in
infringement under Section 43(a),
the
two-prong
Corp.,
991
valid,
test
legally
+
Gruner
F.2d 1072
(2d Cir.
an
action
trademark
a party must establish,
Jahr
USA
1993),
(1)
trademark
protectable
for
and
Publ'
that
(2)
v.
under
Meredith
it possesses a
that
the
junior
user's mark is likely to cause confusion as to the origin or
sponsorship
of
the
product
at
issue.
Nawab, 335 F.3d 141, 146 (2d Cir. 2003)
Enterprises
v.
(citing Gruner, 991 F.2d
1993)).
This two-prong test is applicable to
trademark infringement cl
brought under both Section 32 and
at 1074
(2d
Section 43(a)
at
148
r.
Virgin
of the Lanham Act.
(citing Time
Inc.
v.
F.3d 113, 117 (2d Cir. 1999)).
Virgin Enterprises,
Petersen Publ'
Co.
335 F. 3d
L. L. C.,
173
Accordingly, both claims will be
analyzed together here.
A. The PRL Parties' Mark is Valid and Entitled to Protection
"To
valid and protectable,
a mark must be capable
of distinguishing the products it marks from those of others.
Lane Capital Mgmt.,
337, 344
Inc. v.
(2d Cir. 1999).
Lane Capital Mgmt.,
In this
13
rcuit,
Inc.,
It
192 F.3d
scale articulated
by Judge Friendly in Abercrombie & -------~-~--------------------~
----.------------ Fitch
Inc./ 537 F.2d 4/ 9 (2d Cir. 1976) / is traditionally utilized to
determine
the
distinctiveness
continuum classifies
categories:
fanciful.
marks
generic/
of
mark.
least
from
a
to
descriptive/
The
most
Abercrombie
distinctive
in
arbitrary
or
suggestive/
The Second Circuit has elaborated this continuum as
follows:
A generic mark is generally a common description of goods/
one that refers/ or has come to be understood as referring/
to the genus of which the particular product is a species.
A descriptive
mark
describes
a
product's
features/
qualities or ingredients in ordinary language/ or describes
the use to which a product is put. A suggestive mark
employs terms which do not describe but merely suggest the
features of the product / requiring the purchaser to use
imagination/ thought and perception to reach a conclusion
as to the nature of goods. [T]he term "fanciful/II as a
classifying concept, is usually applied to words invented
solely for their use as trademarks. When the same legal
consequences attach to a common word/ i. e., when it is
appl ied
in
an
unfamiliar
way,
the
use
is
called
"arbitrary.
II
Genesee_ _
~~~~
Co.
~~~~~~~~
Inc.
__
v.
~______
Stroh _ _ _ _ _ _ _
_
____
~
~L-
Co.,
__
~
124 F.3d 137,
142 (2d Cir. 1997) (internal quotations and citations omitted) .
A
protection.
Lane
Capital
"[f]anciful,
mark's
distinctiveness
At one end,
Mgmt.,
192
arbitrary,
inherently
distinctive
protected."
rd.
ll
determines
its
level
\\ [g] eneric marks are not protectable."
F.3d
at
and
suggestive
and
Descriptive
344.
so
marks
14
While
marks
"will
fall
be
in
at
the
are
other /
deemed
automatically
between
the
two
extremes. See Pret
- F.
Supp.
Girl
2d
No.
Inc. v. Pret
11
0662
Girl Fashions
(NGG) (MDG)
Inc., -
(E.D.N.Y.
March
14,2011).
The
word
"polo"
may
be
c,
for
example,
with
respect to polo shirts, or descriptive, with respect to aspects
of
the
sport.
Parties'
are
With
is
As
cert
Judge
nly
Sand
not
1142
men's
fragrances,
the
PRL
Polo Association,
(LBS) ,
1984
WL
stated
in
or
suggestive
his
1984
opinion,
descript
of
a
manufacturer would seek to imitate."
fragrance which a toilet
U.S.
to
contend that the POLO word mark and Polo Player Logo
arbitrary.
"[p]olo
respect
Inc. v. Polo Fashions,
1309,
at
*14
Inc., No.
84 Civ.
1984)
( "Sand
(Dec.
There is no natural connection between the image
Opinion") .
a polo player and fragrance products.
The same is true of the
POLO word mark.
In
Inc.,
Polo
Inc.
Fashions
451 F. Supp. 555, 559
v.
Extra
(S.D.N.Y. 1978), Judge Goettel held
Judge Sand concluded
that the use of POLO on ties is fanciful.
"that
it
low a
would
Products
fortiori
and
is
demonstrated
in the
record in this case that the use of POLO in a trademark sense on
non-apparel
items
unrelated
to
furnishings,
is
fanciful,
not
a
15
the
a
sport,
descriptive
such
as
use."
home
Sand
Opinion,
1984 WL 1309,
at *3.
This Court similarly concludes
that as a common word or symbol appli
and
the
Polo
Player
Logo
qualify
an unfamiliar way,
as
arbitrary
and
POLO
there
"will be automatically protected." Lane Capital Mgmt.,
192 F.3d
at 344.
Regardless,
PRL
owns
a
number
registrations for the Polo Player Logo,
with
words,
related
names,
products,
symbols
or
including,
of
for
others,
and
u.s.
well
pending use-based Trademark Application
77/883,516.
prima
facie
"A certificate
evidence
that
1990)).
the
mark
is
as
No.
with
PTO
registered
and
is
valid
exclusive
.,
Lane
use
the
at
345
(citing
900 F. 2d 558, 563
commerce."
has
the
registration
3 , 095 , 176 ,
registrant owns the mark, and that
i.e., protectible), that
registrant
of
and
Nos.
I, 327 , 818 i
a
3 , 076 , 806 i
fragrances
1 , 212 , 060 i
as
2 , 922 , 574 i
trademark
alone or in combination
devices,
among
federal
right
to
192
F.3d
mark
in
(2d Cir.
The USPA Parties have not rebutted this presumption.
As regist
arbitrary marks,
PRL's Polo Player
Logo and POLO trademarks as used in the context here on men's
fragrances, are
able.
16
B. The Polaroid Factors
It
is
well established
forth in
of
whe
trademark
include:
the
eight
Polaroid Elects.
(2nd Cir. 1961), cert. denied,
analysis
that
there
ringement
between
simil
products,
(4)
is
cases
strength
(1 )
the
368 U.S.
a
in
of
two
his
marks,
the likelihood that
820
(1961),
of
Circuit.
mark,
(3)
set
., 287 F.2d 492
likelihood
s
factors
confusion
Those
(2)
the
control the
the
in
factors
degree
proximity
of
the
prior owner will bridge
the gap,
(5) actual confusion,
(6) the reciprocal of defendant's
good
th
own
in
adopting
defendant's product,
Id. at 495.
and
its
(8)
(7)
mark,
the
quali
of
the sophistication of the buyers.
'" [E]ach factor must be eval
in the context of
how it bears on the ultimate question of likelihood of confusion
as to the source of the product.'"
Rest.- ' ' - - - - - r
L.L,C'
-
-
............
360
U.S.A.
F.3d 125,
Inc.
v.
130
Brennan's Inc. v. Brennan's
(2d Cir.2004)
Levi Strauss
&
Co.,
(quot
Lois
799 F.2d 867,
872 (2d Cir. 1986))
For
the
reasons
stated
below,
under
the
Polaroid
analysis, USPA's use of the Double Horsemen and "U.S. POLO ASSN.
17
1890" marks in the context and manner 6 in which they have been
used
on
a
men's
fragrance
infringes
threshold
issue,
USPA
the
PRL
Parties'
trademark rights.
As
a
the
Parties
Judge Sand's 1984 Order was the product
a
and
show
that
Parties
to
prevail
violated
independent
the
the
PRL
1984
Parties
Order.
aroid analysis,
must
This
contend
that
Polaroid analysis
that
Court
the
USPA
conducts
an
as USPA does not seek to use the
marks at issue in the 1984 case or in the context of the same
market
conditions. 7
application
of
Judge
Polaroid
Sand's
by
1984
Order
permitting
USPA
anticipates
to
re
conduct
a
licensing program using "a mounted polo player or equestrian or
equine
symbol
player symbol
use of the
which
is
dist
ive
from
[PRL's]
its content and perspective,"
"United States Polo Association"
6
but
polo
barring any
name or other name
Except as pertain to its findings regarding USPA's good faith, the
Court's Lanham Act
is based upon USPA's use of the
, not blue,
trade dress, because the USPA Parties withdrew their use of blue trade dress
during the course of this litigation (Dkt. 45), and represented to the Court
that "as of March 17, 2010 they have ceased, and will not resume, use of the
color blue as the
color for the packaging of any of Plaintiffs'
fragrance products."
Oral Argument Transcript 48:23 24) ("We're not
using it, never going to use it").
Were USPA to use blue trade dress, this
might weigh more heavi
in favor of the PRL Parties' claims because of the
PRL Parties' use of blue tradedress in their best selling POLO BLUE line (Tr.
39:11-25; 52:1-12; PRL Ex. 15), and Judge Sand's 1984 order prohibiting
USPA's use of blue trade dress utilizing white or silver lettering or
emphasizing the world "POLO."
(USPA Ex. 15 ~~ 8-9.)
7
USPA's Double Horsemen Mark did not exist prior to 1996.
Brand
awareness of PRL's Polo Player Logo in 1984 was approximately 37%, 1984
Opinion at **12-13, while today it is 82 85%. (PRL Ex. 13.)
In 1984 PRL had
only one fragrance product that displayed the Polo Player Logo, while today
it has at least nine.
(Tr. 36:8-37:21 (Marino); PRL Parties Exs. 26 35.)
18
"in a manner that is likely to cause confusion."
~~
analysis
8-9.)
of
which
PRL/ S Polo Player logo--that iS
symbols
are
distinctive
not infringing
I
(USPA Ex.
15
from
and whether the
"United States Polo Association" name or other name is used in a
manner that "is like
Polaroid.
to cause confusion" requires application
In finding a
likelihood
confusion
the Court
l
duly notes that the USPA parties have violated the 1984 Order
insofar as it prohibited USPA/s adoption of infringing marks.
Nor are the PRL Parties
claims foreclosed by a jury/s
l
finding in 2006 that while (1) USPA/s
infringed
PRL/s
Horsemen mark
Polo
with
ayer
"USPA
I
II
id Double Horsemen mark
Symbol
outline
I
(2)
Double
the
solid
Double
Horsemen mark
and
I
outline Double Horsemen mark with "USPN' were not infringing
PRL USA
the context of the apparel market.
Uni
Polo Association
Inc'
~~:===-~~~~~~~~~~~~~~~--~--
2 0 0 6 WL 18 81 744
(S . D . N . Y .
2 0 0 6)
I
No.
l
af f d
I
Inc.
99
Civ.
52 0 F . 3 d
10199(GBD),
109
( 2d
the context
fragrances,
not apparel.
This case involves the
use of the Double Horsemen mark with the word mark "U. S.
1890," not alone or with "USPA" beneath.
the 2006 apparel case,
USPA's mark here
view
Ci r .
Most saliently, the marks at issue here are employed in
2008 )
ASSN.
v.
as
having
POLO
In contrast to
the dominant term in the word portion of
and that which consumers
trademark
significance- is
19
are most
"POLO."
likely to
As
the
Trademark
Trial
and
Appeal
Board
summary judgment motion regarding
noted
in
USPA's
reject
use of the marks at issue
here for fragrances and other products in Class 3,8 this issue
here
"involves
claim.
different
Therefore
transactional
the district
facts
material
order
[in the
court s
I
to
the
apparel
litigation] does not have preclusive effect on this proceeding."
(PRL
Ex.
same
For
strength
goods
sold
a
mark
under
the
particular source." Loi
------~~--~-----
quotat
apparel
The Strength of the PRL Parties' Marks
The
identi
the
10
litigation is not controlling
1.
reasons,
and
citations
omitted).
refers
to
"
mark
as
emanating
s
tendency
799 F.2d at 873
The
concept
of
from
to
a
(internal
strength
8
Class 3 includes: "Bleaching preparations and other substances for
laundry use; cleaning, polishing, scouring and abrasive preparations; soaps;
perfumery, essential oils, cosmetics, hair lotions; dentifrices."
37 C.F.R.
§
6.l.
The Trademark Trial and Appeal Board also noted that the apparel
litigation addressed the Double Horsemen with and without "USPA" beneath it
for goods in International Classes 14, 18, 25, and 28 (respectively, precious
metals/stones; leather and bags; clothing, footwear, headgear; games and
sport
articles, see 37 C.F.R. § 6.1) whereas the issue before it, as here,
invol ves the use of the Double Horsemen with "U. S. Polo Ass' n" above and
"1890" below for goods in Class 3.
(PRL Ex. 110.)
10
The use of the word "POLO" might additionally produce less confusion in
the apparel market, due to the greater use of attire to signal affiliation
with a sports team or association than the use of fragrances, and possible
differences in consumers in the two markets.
In some instances, the word
mark "POLO" and PRL's Polo Player Logo might also be considered more
arbitrary with respect to fragrances than with respect to apparel, gIVIng
rise to greater distinctiveness and strength in the PRL Parties' mark in this
context.
9
20
encompasses
both
"inherent
distinctiveness."
See
distinctiveness"
Brennan's,
360
F.3d
and
at
"acquired
130-31;
Virgin
ses, 335 F.3d at 147-49.
----=~--
By both measures,
the
PRL Parties'
and POLO marks are extremely strong.
trademarks
with
for
words,
related
the
Polo
names,
products,
or
1,212,060;
1,327,818;
Therefore,
their marks
2,922,574;
or
for
others,
3,076,806;
are presumed
Sportswear, 799 F.2d at 871.
alone
devices,
among
including,
Logo
PRL has registered federal
Player Logo,
symbols
Polo PI
to
in combination
fragrances
U.S.
and
Reg.
and
Nos.
3 , 0 95 , 176 .
distinctive.
As discussed above,
Lois
both the PRL
Polo Player Logo and "POLO" word mark are arbitrary with regard
inherent distinctiveness is robust.
to fragrances and so the
Furthermore,
at trial,
the PRL Parties demonstrated that in the
last ten years alone,
L' Oreal has spent more than one hundred
million
advertising
dol
PRL
men's
bearing
and "POLO" mark in the U.S., with forty million
Polo Player
dollars spent advertising POLO BLUE.
Ex.
fragrances
s
15.)
bolsters
its
(Tr. 39:15 25
strength.
(Marino)
i
PRL
See Morningside Group
Ltd. v. Morningside Capital Group, L.L.C., 182 F.3d 133, 139 (2d
Cir.1999);
24
Hour Fitness USA
Inc.
v.
447 F. Supp. 2d 266, 272 (S.D.N.Y. 2006).
21
24 7 Tribeca Fitness,
At the same time,
these
marks
is
the awareness in the marketplace of
commercially
strong,
with
evidence
at
trial
demonstrating that surveyed men and women ages 18 to 60 report
between 82% and 85% awareness of PRL fragrances bearing the Polo
Player
Logo
and
"POLO"
brand,
ranking
it
second
awareness in the fields of fashion and fragrances.
50:1725; PRL Ex.
sales
of
men's
13 at 3.)
fragrances
in
brand
(Tr. 43:7-44;
In the last ten years, u.s. retail
bearing
the
Polo
Player
Logo
and
"POLO" mark were just over one billion dollars (Tr. 39:1-10; PRL
Parties Ex. 15), with one dollar out of every $12 spent on men's
fragrances in the United States being spent on a PRL fragrance
ayer Logo and "POLO" mark.
bearing the Polo
(Tr. 42: 5 -11. )
Accordingly, the strength of the marks weighs strongly
in
PRL Part
2.
s' favor.
The Degree of
"Of salient
the's
S~ilarity
Between the Two Marks
importance among the Polaroid factors
larity of the marks
f
test,
is
which attempts to discern
whether the similarity of the marks is likely to cause confusion
among potent
customers." Louis Vitton Malletier v. Burlington
Coat Factory Warehouser
assessment
of
the
426 F.3d 532,
similarity of marks
22
537
(2d Cir.
examines
the
2005).
An
similarity
between them in appearance
Helfferich
F.2d
Schulz
1331
marks I
1975).
"analyze
When
the
considering
I
and meaning.
I
Nachf. v.
(2d Cir.
courts
consumer
sound
I
the
context
displayed and the totali
Ste
assessing
mark [s I]
Sons
&
the
overall
in
See Grotrian
523
l
similarity of
impression
which
l
the
on
marks
a
are
factors that could cause confusion
among prospective purchasers. 1I
Louis Vitton l 426 F.3d at 537.
When the products being compared will not be displayed
side-by-side in the marketplace
44:6 9;
(Marino)
44:21-45:3
(Cummings) )
I
the
as they will not be here
I
Tr.
i
appropriate
285:4 10;
question
is
288:14 289:4
"whether
not
differences are easily discernable on simultaneous viewing
whether
they
are
likely
to
confusion on serial viewing.
The
analysis
typefaces,
should
II
be
memorable
Louis Vuitton
consider
"the
enough
l
and package designs and colors
lf
to
426 F.3d.
products'
(Tr.
l
but
dispel
at 538.
sizes,
to determine whether
the overall impression in the relevant market context would lead
consumers
to
believe
that
the
junior
usert s
product
emanates
from the same source as products bearing the senior user's mark.
Paco
Ltd.
v.
Paco Rabanne
Cir. 2000).
23
Perfumes t
234
F.3d 1262
(2d
The similarity between the PRL Parties' and the USPA's
marks
is
apparent.
Both marks
are
similar
containing a polo player on horseback,
viewer's left,
are
perspective -
facing slightly to the
leaning forward with a polo mallet raised.
monochrome
abstraction.
in
logos
that
are
similar
in
their
Both
level
of
Both are displayed in embossed metallic or glossy
material--with PRL's appearing in a number of colors including
silver and gold, and USPA's appearing In a light gold.
(PRL Exs.
16, 22, 23, 25-35, USPA Ex. 52.)
The primary difference between the marks is t
PRL's logo contains one player,
with
mallet
raised
and
the
This
other
with
mallet
the
lowered,
front
one
which
horseman is
solid metallic ink, while the rear horseman is only
displayed
outlined,
while USPA's contains two,
In USPA's mark,
significantly overlap.
the
such
gives
that
the
the
background
front -mallet
packaging
shows
raised--horseman
more
through.
visual
prominence, while the torso of the rear horseman can be said to
fade
into the background.
Both of USPA' s
horsemen share
the
same directional perspective and overlap to a degree that it is
difficult to discern if there is one horse or two.
for
L'Oreal
noted
strongly resembles
at
a
argument,
composite
USPA's
of
24
the
Double
PRL's
As counsel
Horsemen
Polo
Mark
Player Logo
with the logo that USPA was enjoined from using in 1984 by Judge
Sand.
Oral Argument Transcript, 30:18-31:17.
Except
for the
PRL Parties'
Big Pony Collection,
the
proportionate size of the logos as presented on the products is
roughly similar.
(PRL Exs. 16, 22, 23, 25-35, USPA Ex. 52.)
The
USPA's product bears a gold border that runs around the edge of
the front panel of the fragrance box, as do some but not all of
On both parties' products,
the PRL Parties' fragrance products.
except the PRL Parties' Red White & Blue and Big Pony lines, the
logos are set against a solid color background.
The
"POLO"
PRL
Parties'
prominently,
Parties'
except
product bears
the
fragrances
in
the
"U. S .
display
Big
Pony
POLO ASSN."
the
Line.
mark
The
USPA
word mark arched
above the Double Horsemen logo and "1890" below.
are in a similar serif font,
word
The typefaces
though several of PRL's fragrances
emphasize POLO in larger font as distinct from RALPH LAUREN or
the reverse, while USPA's "U.S.
POLO ASSN." is presented in the
all the same sized font.
The
been
USPA
judicially
relying
on
the
Parties
recognized
1984
Order,
maintain
as
that
dissimilar
the
25
2006
jury
the
USPA Marks
from
PRL's
trial
before
have
marks,
Judge
Daniels,
and the Second Circuit's affirmance of that decision.
This argument is unpersuas
No prior decision addressed the
marks at issue here in the fragrance market,
and the simil
ty
of marks "analysis focuses on the particular industry where
marks compete.
Nor
defeat
does
the
addition of
finding
of
Inc.
Civ.
a
Brennan's, 360 F. 3d 955.
/I
North American
v.
confusing
one
may
not
"avoid
of
matter."
Mellody Farms Dairy,
Bellbrook
Inc.,
es,
253 F.2d 431,
the words "U.S"
on
"POLO"
as
confusion
operative
the
part
97
by
the
or otherwise
Inc.
v.
Hawthorn-
(C.C.P.A.
1958)
USPA's addition of
emphasis
"ASSN." and "1890" does not change
the
No.
general rule
432-33
("Vita-Slim" confusingly similar to "Slim").
"1980"
Inc.
It is
ihood
and
North American
of US
at *6.
1
See
user's mark] of descript
addition [to the
subordinate
a
"ASSN./I
similarity.
3448 (RSW) , 1997 WL 316599,
that
"U.S./I
word
mark,
or
the
likelihood of confusion when used in conjunction with the Double
Horsemen logo.
See
Inc., 470 F.2d 689, 692
(2d Cir. 1972)
(addition of "by Bradley"
did not prevent confusion between "Cross" pens and "LaCross by
Bradl
(S. D. N. Y.
"Chic")
i
544
2008)
("First Ladies of Chic"
pens)
i
F.
Supp.
2d
confusingly s
302,
311
lar to
Am. Express Co. v. Am. Express Limousine Serv., 772 F.
26
Supp.
to
729,
733
(E.D.N.Y.1991)
"American
confusion) .
Express"
neither
dominant
mark
enhanced
rather
than
dispel
Indeed, USPA disclaimed the use of "U. S."
trademark application,
and "1890" in
that
(addition of "Limousine Services"
can
part
of
properly
their
be
regarded
See
mark.
"ASSN."
t
further underscoring
as
the
principal
Application
Serial
or
Nos.
77/738,105 and 77/760,071.
Considering the totality of factors that could cause
confusion,
unlikely
the
to
differences
be
memorable
between
enough
the
to
parties'
dispel
marks
confusion.
are
The
similarity of
the marks substantially increases the likelihood
of
between
confusion
the
USPA
Parties'
and
PRL
Parties'
products.
3.
The Proximity of the Products
This factor "concerns whether and to what extent the
two products compete with each other." Cadbury Beverages Inc. v.
Cott
-----"'-.,
73
F.3d
proximity of the part
of
the products
market.
474,
480
(2d.
s' products,
themselves
and
the
1996) .
In
assessing
the
courts "look to the nature
structure of
the
relevant
Among the considerations germane to the structure of
the market
are the
class of
customers
27
to
whom
goods
are
sold,
the manner in which the products are advertised,
channels through which the goods are sold.
internal quotations omitted).
goods
are
to
those
the
prior
user's
brand,
"[T]he
consumer
the
more
rd.
II
(citations and
the secondary userls
has
seen
likely
marketed under
the
consumer
mistakenly assume a common source." --'--=:..=.....<-=..:--'--=--'--=~.........Ai...-=-"-=- '
at 150 (cit
urge
that
they
intended
Specifically,
products
Sears,
will
3 3 5 F. 3 d
and
the
PRL
The USPA
Part
are
competitive proximity due to product pricing di
and
the
Cadbury Beverages, 73 F.3d at 480-81) .
Both parties' products are men's
Parties
and the
of
s
the
USPA
Parties
sold
will
Kohl's,
trade,
primarily
and
J.C.
Penney
and
contend
in
that
and
at
clientele.
ir
mid-tier
in
, actual
t
diverse
not
stores
fragrance
as
point
a
such
of
sellon
approximately $25, while USPA argues that PRL f
average for between $50 and $70 and for the most
in high-
end stores such as Bloomingdales and Saks.
testimony
However,
General Manager,
Des
fragrances displaying
of
Leslie
Fragrance Division,
Marino,
L'
,s
established that
PRL Parties' Polo Player Logo and POLO
mark are sold in department stores as well as specialty stores,
28
and over the internet. I I
cosmetic stores,
24. )
over the Internet.
(Tr.
the parties may be
their
to sell its fragrance
209:22-210:2;
285:22-25.)'
direct competition.
licensee
does
not
res
fragrance
Mr.
ct
distribution of its fragrance product,
nothing
that the midso sell
Accordingly,
Cummings
the license agreement between the USPA Parties
acknowledged
is
44:6 45:1; 46:17
David Cummings, CEO of Properties, testif
tier stores where USPA int
and
(Tr.
to
prevent
in the
same
the
and
of
agreed that
distribution
channels
channels
the
used by the
USPA
Parties'
PRL
Parties.
its
(Tr.
fragrances
285:4-10.)
While
lower price-po
vast
as
to
companies'
v.
USPA
contends
a
products.
will
PRL,
s than those
place
Burl
it
I
sell
this difference is not so
competit
distance
Coat
2006
unavailing,
as
defendant's
handbags
Warehouse
WL
that
1424381,
court
I
Inc.,
108
F.
which
Supp.
at
found
which sold for $360 to $3,950.
--"'-'------
between
the
USPA's reliance on Louis Vitton Malletier
------------~--------------------~--------------------~.
2644 (RMB) ,
at
1503
d
(S.D.N.Y.
*6
adequate
for
,
No.
2006) ,
difference
$29.98,
04-civ
is
between
and plaintiff 's,
Nor is Estee Lauder Inc. v. The
(2d Cir.
II
Other PRL Parties'
are
Kohl's and J.e. Penney. (Tr. 44:21-45:3.)
29
sold
1997)
in
of help to USPA.
mid-tier
stores
such
as
Estee
Lauder
Court
found
no
confusion where products were
support
for
1
ihood
of
d in "mutually excl usive types
stores" and plaintiff's products were priced more than 10 to
20 times more per ounce, id. at 1511-12, neither of which is the
case here.
In consideration of
products
to
be
factors,
competitively
competitive
proximity
must
first
Polaroid
factors,"
two
Petroleum
.,
strength
PRL's
818
protection against
between
F.2d
marks
be
measured
Mobil
254
(2d
"demands
infringers,"
two marks
proximate.
with
Oil
Cir.
"Moreover,
reference
Corp.
Pegasus
singular
be
the
great
further
the
the
v.
[they]
and
to
The
1987).
that
id.,
the Court finds the
given
broad
simil
ty
likelihood that
a
consumer will confuse USPA with PRL.
4.
The Likelihood that the PRL Parties will Bridge the Gap
This
that is not
factor concerns the 1
ihood that
senior user
direct competition with a junior user at the time
a suit is brought will later expand the scope of its business so
as to enter
junior user's market.
Stanley Works,
59
F.3d
384,
397
(2d
See Arrow Fastener Co. v.
r.
parties in this case are already competit
30
1995).
Because
ly proximate,
the
there
is
no gap
to bridge
and
so
this
factor
is
irrelevant.
Sarbucks Corp. v. Wolfe's Borough Coffee,
Inc.,
Cir.
is
2009)
where,
(" \ bridging
as here,
each other.")
(2d Cir.
already
i
bridge,
Star Indus. v.
factor
Bacardi
&
Co.,
(2d
irrelevant
this
proximity,
factor
there
is
irrelevant
is
412 F.3d 373,
387
the products are
(holding that "[b] ecause
competitive
and
gap'
588 F.3d 97
the two products are in direct ompetition with
2005)
in
the
See
really
to
no
the
gap
to
Polaroid
analysis") .
S.
Actual Confusion
"It is black letter law that actual confusion need not
be shown to prevail under the Lanham Act, since actual confusion
is
very
difficult
to
prove
and
the
Act
requires
only
a
likelihood of confusion as to source." ------~---------- 799 F.2d
Lois
swear,
at 875.
Cir.
See also Harold F.
1960)
i
i
2009).
12
This
of
the
F.
Supp.
is particularly true when an
no time at all. 12
Sales
704
2d
305
Pfizer Inc. v. Sachs, 652 F. Supp. 2d 512, 523
product has been on the market
here,
Inc., 281 F.2d 755, 761 (2d
_N_e_w ___ _o_r_k____ ~~______h_a l_o_n,
Y _
__
(S.D.N.Y. 2010)
(S.D.N.Y.
Ritch~e,
USPA's
for only a
infringing
short time -or,
See ________~__c.~_a_t~h~a~l~o~n=,
704 F. Supp.
product through USPA's retail outlets
(Tr. 221:20 222:7; Tr. 278:10-13.)
minimis in duration and scope.
31
as
were
de
2d at 318; Pfizer, 652 F. Supp. 2d at 523
("The absence of proof
of actual confusion is not fatal to a finding of likelihood [of
confusion],
particularly where,
as
here,
the
junior mark
has
been in the marketplace for a relatively short period of time.")
(quotation marks omitted) .
The USPA Parties argue that the PRL Parties proffered
no evidence of actual confusion in the apparel industry and that
the parties' co-existence in the apparel industry weighs against
a
showing
of
fragrances.
First,
a
likelihood
This
argument
insufficient
evidence
of
is
confusion
unconvincing
regarding
with
for
whether
regard
two
or
to
reasons.
not
actual
confusion exists in the apparel industry was presented at trial
for the Court to adequately weigh its potential affect.
Second,
there has been no co existence of fragrances without confusion
a
fact,
which
if
true,
would support
USPA's
claim.
Lack of
confusion as to apparel mayor may not be indicative of lack of
confusion as to fragrances.
Consumer surveys can provide another form of evidence
of
the
of
itan
2005)
likelihood
Bank,
Nat'l
confusion.
388
F.
See
.,
-----''----='-
Supp.
2d
Me tLi.f~_e-,-,__ n_c,,--._v_.
I__
223,
232
(S.D.N.Y.
("a survey as to the potential consumer confusion may be
weighed when considering the likelihood of confusion")
32
(citing
Mobil Oil Corp.
(2d Cir.
Co.,
v.
Pegasus Petroleum Corp.,
Jordache Enterprises
1987))i
841 F. Supp. 506
confusion
consists
consumers
in
the
Here,
the
1
518
of
(S.D.N.Y.
(1)
l
Inc.
v.
Levi
evidence
and
259
Strauss
&
("Evidence of actual
1993)
anecdotal
marketplacei
818 F.2d 254,
of
confused
survey
consumer
(2 )
evidence")
engaged
George
parties
Mantis,
who
each
conducted
conducted
two
surveys.
L'Oreal
Mantis/s
surveys.
first survey was a national mall intercept conducted in each of
the nine Census districts with 324 individuals who had a stated
intention to purchase a men/s fragrance product in the next six
Mantis
months.
Parties
l
l
fragrance
first
as
survey
shown
used
group
was
shown
product. Id. at 152-53.
a
B
(PRL Ex.
declaratory judgment complaint.
control
replica
Exhibit
in
a
Mustang
Blue
of
at
9
of
the
the
USPA
USPA/s
150-51.)
cologne
package
The
and
That cologne comes in metallic blue box
and displays a horse in profile set against a black and silver
grate
l
with
"MUSTANG BLUE"
below.
Survey noise was estimated
based on the proportion of survey respondents who associated the
control sample with PRL
(PRL Ex.
the
levels
reported
confusion
9
to
figure.
33
at 4),
produce
and subtracted from
a
"net
confusion"
Mantis'
but
with
two
second
different
survey
test
followed
samples,
the
due
to
same
methodology,
USPA's
change in the color to be used for their packaging.
involved
over
(Tr.
districts.
Mantis'
500
survey
individuals
86 : 15 -1 7) .
displayed
drawn
Both
the
from
test
Double
The survey
the
samples
nine
in
Horsemen
stipulated
the
census
second
Trademark,
one
bearing "U.S. POLO ASSN." arched above and \\1890" below (PRL Ex.
10 Ex.
E) .
E)
i
Both
and the other bearing
test
marks
appeared
\\USPA"
on
below
beige
(PRL Ex.
packaging.
10 Ex.
The
same
Mustang Blue cologne and packaging was used as the control.
(PRL
Ex . 10 Ex. G.)
Mantis'
4.6%
first
confusion
confusion
in
level
survey
the
of
found
control
group,
This
27.8%.
portion of those who believed the
Horsemen Mark
below
on
blue
with
\\U. S.
packaging
32.4% gross
was
fragrance
put
authorized by Polo Ralph Lauren.
resulting
represents
POLO ASSN."
arched
out
confusion and
by,
the
in
a
net
controlled
bearing the Double
above
and
connected
\\1890"
to,
or
(PRL Ex. 9 at 2.)
The second Mantis survey found gross confusion levels
of
25.9%
for
the
use
combination with \\U.S.
beige background,
of
USPA's
Double
Horsemen
Trademark
POLO ASSN." above and \\1890" below,
on a
as well as 21.2% gross confusion for the use
34
of
the Double Horsemen in combination with
beige background.
for
the
Mustang
"US PA'l
below
on a
I
(PRL Ex. 10 at 6.) Mantis found 3.4% confusion
control
product.
"U. S.
POLO ASSN.
confusion for the
This
equates
to
22.5%
net
test product and 17.8 % net
II
confusion for the "US PA'l test product.
The USPA Parties presented a
survey conducted by Dr.
Myron Helfgott l which involved interviews with 1 / 000 respondents
ten geographically dispersed metropolitan
in shopping malls
(USPA Ex.
areas.
48.)
The sample was screened to consi st of
men and women between the ages of
they are
$20
to
likely to
$30
respondents
in
were
purchase
the
next
shown
a
18 and 35 who reported that
men s
a
fragrance
l
six
months.
bottle
In
and
product
each
carton
for
costing
interview l
a
men's
fragrance, which they were told sells for $24.99.
The
Helfgott
survey
tested
three
fragrance
all set on beige packaging with gold lettering:
Horsemen logo with "USPA II beneath
(1)
packages I
the Double
(2)
the Double Horsemen logo
with "U.S. POLO ASSN. II beneath l and (3)
the Double Horsemen logo
with "U.S.
POLO ASSN." arched above and "1890 11 below.
used two controls.
to
the
I
three
Horsemen logol
Helfgott
One sported identical packaging and gold ink
tested
fragrances,
except
instead
of
the
Double
the control featured USPA's horsehead mark l which
35
consists of a picture of a horse's head in an oval shape formed
by a
stylized horseshoe,
second control
is
a
with
"U.S.
fragrance
polo player astride a
horse,
POLO"
arched above.
which presents
facing
a
The
gold embossed
directly to
the viewer's
right, with "Beverly Hills" arched above and "Polo Club" below.
The logo and word mark are in gold and set in a red box.
The
packaging is black.
The Helfgott survey found 28% gross confusion with the
Double Horsemen logo with
"USPA"
beneath;
27% gross
confusion
POLO ASSN."
beneath;
with the Double Horsemen logo with
"U.S.
and
Double Horsemen logo with
25.5% gross
"U.S.
at
confusion with
the
POLO ASSN." arched above and "1890" below.
The
2.)
survey
found
28.5%
confusion
(USPA Ex.
with
the
48
USPA's
horsehead mark control and 32% confusion with the Beverly Hills
Polo Club control.
Id.
The Helfgott
survey concluded that
because confusion levels for the test products were similar to
or
lower than confusion levels
provoked by the
controls,
net
confusion was zero for all test products and "the source of the
measured
test
product
confusion was
something
presence of the double horsemen illustration."
13. )
other
than
(USPA Ex. 48 at
Because the level of confusion associated with the three
test products did not exceed the level of confusion caused by
36
the
Beverly Hills
Polo
Club
control,
"[t]here is not residual confusion."
The
ies dispute
surveys.
ifically,
Helfgott's f
were
being
shown
likely
methodology of
PRL
Parties
each other's
assert
the
a
fragrance
that
costs
$24.99
PRL
Parties
fragrance
a
acknowledged
at
price
could
(Helfgott»,
contend
the
in
and that
trial
s
that
that
$20
Helfgott's
to
category,
$30
responses
those
only
(Tr.
for
limited
id.
at
In
screening
in
$20-$30
Dr.
Hel
first questioni
survey responses
Hel fgot t
(Tr.
to
a
401:17-402:7
forward
looking
likely to purchase
in the
purchasers
(Helfgott).)
intending
rangei
range,
ce
respondents
in a
prospective
405:1-19
those
frangrance
t' s
the
off
the proper sample
not
company's products.
screening
tipping
have
confusion survey consists
limi
and
"organization" put out the product,
preconditioned respondents by referencing price.
study's
Dr.
which limited respondents to those with the intent to
purchase
product
that
fected the way that those surveyed responded.
addition,
method,
that
survey question, which stated that respondents
respondents to what
8,
concluded
Id. at 14.)
the
the
Helfgott
the
to
of
one
The Helfgott
purchase
inclusion
of
a
men's
cost
and that the study's first question
to
"organization",
his survey respondents.
37
all
preconditioned
The PRL Parties also criticize the Helfgott study on
the
basis
reading
that
the
Bill
Bartlett
questionnaires
of
and
Suburban
was
deciding
responsible
how
each
of
for
the
responses on those questionnaires should be coded i.e., confused
or
not
confused
Helfgott
(Tr.
conceded
Helfgott
that
(Tr.
ionnaires.
375:14-16i
he
433:4-7
personally
did
did
scuss
and
Dr.
all
the
However,
not
Dr.
review
fgott) .)
432:23 433:3
testified that he
(Helfgott»,
how to code certain of
the survey responses Mr. Bartlett deemed problematic and read to
him over
telephone,
and the
(Tr.
406:25-407:6,
407:16 22
the
report
Dr.
"verbatim"
that
section
respondents
set
recorded on the
determine
out
prepared
the
that
testimony.
More problematically,
did
not
responses
questionnaires
during the survey interviews,
independently
credits
(Helfgott).)
Helfgott
that
Court
by
contain
of
the
a
interview
interviewers
such that the Court is not able to
whether
the
responses
were
properly
classified.
The most
its
choice
there
is
no
of
control
benchmark
confusion estimate
the
significant error in the Helfgott
is
variables.
for
expert should select a
a
proper
determining whether a
significant
survey methodology.
Wi thout
or merely
"In designing a
control,
likelihood of
reflects
control
study was
flaws
in
group study
I
stimulus for the control group that
38
shares
as
many
characteristics
possible,
with
influence
is being assessed."
and
Selection
the
the
with
the
key exception of
of
Federal
Evidence)
Judicial
Controls
characteristic whose
"Experimental Design
in
Trademark
890,
Reference
and
920
Deceptive
(2002) (quoting
Manual
on
Scientific
Here, Helfgott's controls were improper in that they
included the
mark
as
Jacoby,
J.
Center's
group
the
Advertising Surveys," 92 Trademark Rep.
the
control
"POLO"
very elements being assessed, 13
and,
in the case of
namely,
the Beverly Hills
the
word
Polo Club
control, also a mounted polo player image.
The
high
levels
of
confusion
Helfgott's controls throw the study's use
(USPA
Parties
Ex.
48
Hills Polo Club).)
32
("[I]n
desirable
(28.5%
for
See JacobYI
the
best
for
a
of
all
control
Horse
by
yield
Dr.
into further doubt.
Head,
32%
for
Beverly
92 Trademark Reporter 890 1
possible
to
elicited
worlds,
it
confusion
would
931
not
estimates
be
that
did, the control itself would begin to reach
exceeded 10%. If
an actionable level of confusion and its utility as a control
thereby
compromised.").
disagreement.
He
sample
did
really
Dr.
Helfgott
testified that
not
act
as
13
(See L'Oreal's counterclaims ~~ 36,
Entry 52 at 2, 10.)
39
was
not
in
substantial
the Beverly Hills
a
control.
46,
47;
(Tr.
Polo Club
436:21 437:7
PRL Parties Ex.
14;
Docket
fgott) .14) The USPA Parties argue that surveys using controls
that generate confusion levels in excess of 20% have been used
and
accepted.
However,
those
different from those here,
cont
s
in which
were
used
surveys
survey respondents were
shown both the plaintiff's product and the defendant's product
bearing the mark. See Fortune Dynamic, Inc. v. Victoria's Secret
618
2010) (side-by-side
Inc. v.
(same) .
Cosmair,
product
Inc.,
F.3d
1025,
comparison);
651 F.
Supp.
1547,
Edison
1559
(9th
Bros.
Cir.
Stores,
(S.D.N.Y.
1987)
Studies using that methodology generally produce higher
levels
See Phyllis J. Welter, TRADEMARK SURVEYS
confusion.
6.01[4]
ease #6,
June 1999).
Dr.
Helfgott's
because
confusion"
it
by reading
survey
permitted
the
label
14
§
The results of those studies
studies here.
therefore cannot be properly compared with
utility
1036
is
further
respondents
back to
the
limited
in
its
"correct
for
interviewer,
and
to
In relevant part the transcript reads:
And in your report you referred to that control as a benchmark,
isn't that right?
A. Yes.
Q. You can look at it.
A. Yes, yes, yes.
Q. But you don't -- but the report doesn't describe what the benchmark
was, right? I mean, what was the measurement that constituted the
benchmark?
A. It was a likelihood of confusion response.
Q.
So you would agree with me that it wasn't measuring what survey
experts called background noise?
A. No,
. I agree with that.
(Tr. 436:21 437:7 (Helfgott).)
Q.
40
allowed respondents
while
being
391:12
to view the test samples for
questioned.
(Helfgott).)
(Tr.
387:23 388:1;
In sum,
8 10 minutes
388:2-20;
390:16
due to its significant drawbacks,
the Court gives the Helfgott study no weight.
With regard to
contend that Mantis'
the Mantis
first
surveys,
survey question was leading.
question asked "who or what individual,
makes or puts out this product?"
USPA's packaging and product.
sequence
of
questioning
infringement
trademark
366
become
surveys,
9 at 5.)
cert.
denied,
1302
question
(N.D.
is
now
known
as
Ga.
required
following
429
2008),
the
is
to
830
answer
in
the
531
(1976)
test) .
537 F. Supp.
Inc.
There,
misplac
respondent
U.S.
"Ever-Readyfl
the
USPA's reliance on Smith v. Wal Mart Stores
2d
methodology
however,
1976)
what
That form and
standard
r.
(7th
(approving
company or organization
after respondents were shown
(PRL Ex.
has
That
_U~n~i~o~n _ ~C~a_r~b~l~·d_e~__~~_.~v_.__E_~e~r~__~~__I~n~c~.,
_
_v
methodology used in
F.2d
the USPA Parties
the
survey
"which company or
store do you think puts out this shirt?" despite the fact that
the
defendant
(there,
was
the
was
"individual
choice
an
ff
),
being
Here, Mantis included,
individual.
Omitting
a
possible
choice
where it was not only relevant but also
tested,
was
not omitt
found
to
be
inappropriate.
all reasonable choices, and
allowed the respondent to provide his/her genuine answer.
41
The
first Mantis survey question therefore was not misleading.
finding is confirmed by the
This
atively similar levels of gross
confusion found by both Mantis l and Helfgott's surveys.
The USPA Parties' criticisms that the Mantis study did
not screen for price are meritless.
USPA was not marketing the
product
was
at
(Mantis) . )
25
the
time
and
its
price
unknown.
(Tr.
89: 7 15
As Dr. Helfgott principally acknowledged (Tr. 405:1
(Helfgott)),
it
was
proper
for
Mantis
not
to
screen
for
price.
The
Parties
USPA
appropriateness
the
was
Mantis
too
additionally
study's
famous
to
control,
act
as
dispute
arguing
a
proper
that
the
the
Mustang
mark
However,
the Mantis control replicated market conditions in so
far as the Mustang product is currently on the market,
control.
did not
contain any of the elements being assessed, provided the survey
respondent the opportunity for guessing, contained a symbol of a
horse and, with respect to the first survey, was the same color
as
the
test
sample.
While the Mantis
survey's control
could
have perhaps shared more features with the test product in terms
of the shape and material of the fragrance box,
some weight to its results.
42
the Court gives
The confusion levels ascertained by the Mantis surveys
have been accepted as indicative of likelihood of confusion by
other courts in this Circuit.
~llied Old English,
See Kraft General Foods,
831 F. Supp. 123,
Inc.,
130
Inc, v.
(S.D.N.Y. 1993)
(discussing a mall intercept survey that indicated net confusion
of
twenty-six
percent
(26% )
and
finding
the
"extreme
demonstration of confusion evidenced by the survey demonstrates
Kraft's
likelihood
of
success
on
the
merits,
as
even
a
substantially lesser showing of confusion would support Kraft's
motion for a preliminary injunction").
Del
Tabaco
2004),
v.
rev'd
(confusion
70
on
rate
other
of
21%
confusion) ; Energybrands,
No.
02 CIV.
3227
(JSR),
U.S.P.Q.
399
15%
Inc. v.
See also Empressa Cubana
F.3d
2d
462
indicates
1650
(2d
a
(S.D.N.Y.
Cir.
2005)
likelihood
Beverage Marketing USA,
2002 WL 826814
(S.D.N.Y.
May 1,
of
Inc.,
2002)
(17% net confusion warranted grant of preliminary injunction) ;
Volkswagen Astiengesellschaft v. Uptown Motors, No. 91 Civ. 3447
(DLC)
f
showing
1995
WL
17.2%
605605
and
(S.D.N.Y.
15.8%
net
May
11,
confusion
1995)
(two
justified
surveys
grant
of
suggestive
of
injunction) .
The
actual
Mantis
confusion.
surveys
are
Accordingly,
appropriately
this factor weighs in the PRL
Parties' favor.
43
6.
USPA's Intent in Adoptinq Its Mark
"Courts
and
commentators
who
have
considered
the
question equate a lack of good faith with the subsequent user's
intent
to
trade
on the good will
of
the
trademark holder by
creating confusion as to source or sponsorship."
Partnership
F.3d 56,
is
67
(2d Cir.
"whether
capitalize
Hill,
v.
Holliday,
2000)
defendant
Cosmopulos
(citations omitted)
in
on plaintiff's
Connors,
EMI Catalogue
adopting
its
good will").
228
(noting inquiry
mark
"Bad
Inc.,
intended
faith
to
generally
refers to an attempt by a junior user of a mark to exploit the
good will and reputation of a senior user by adopting the mark
with
the
intent
products."
97
sow
confusion
between
Starbucks v. Wolfe's
(2d Cir.
Under
to
this
2009)
confuse.'" Id.
"the
'only
two
Coffee
(quoting Star Indust
factor,
the
es,
relevant
Inc.,
412
§
588 F.3d
F.3d at 388).
intent
(quoting 4 McCarthy on Trademarks
companies'
is
intent
to
23.113).
Bad faith can be found where prior knowledge of the
senior user's mark or trade dress is accompanied by similarities
so
strong
that
it
seems
plain
that
deliberate
copying
has
occurred. Paddington Corp. v. Attiki Imps. & Distrib., Inc., 996
F.2d 577,
587
(2d Cir.
1993)
("Intentional copying,
of course,
does not require identical copying. Where the copier references
44
apparent aim
the prlor dress in establishing her design with
of
securing
the
customers
of
the
on
other
confusion,
intentional copying may be found.") .
ly familiar with the PRL
Here, USPA was undoubtedly
Parties'
extensi ve history of
marks and trade dress,
trademark
litigation
between
USPA's
the
intent
to
capitalize on PRL's reputation and goodwill can be inferred from
its decision to adopt a mark
is so strikingly similar to
the PRL Polo Player Logo and
similar
trade
dress
ly employ the same color and
t
to
PRL's
popular
Player Logo.
(Tr.
55: 10 -21
fragrance
line sold under
(Marino)
PRL Parties Exs. 16 and 27.)
i
USPA's President, Mr.
of
similar
blue
o
most
Cummings,
to explain its initial adoption
s
trade
The explanation given by
is
not
persuasive.
Cummings
testified that blue packaging was used because USPA had adopted
on the inseam and waistband labels and
blue trade dress,
hangtags
in
artic
its
apparel
lines,
and
USPA
believed that using blue packaging would better enable consumers
to identify
product as USPA's.
Notably,
USPA
enti
by choosing a
position
and
from
a
could
logo
(Tr. 215:8-218:2 (Cummings)).
have
that
perspective
45
avoided
depicts
that
dif
a
this
polo
from
situation
in a
Polo
Player Logo with a more clearly distinct form of packaging
initially utilizing
a
different
color,
non metallic
with no thin matching border edging).
so.
(~.g.
ink,
and
But it chose not to do
That the USPA Parties and their licensee did not have any
expertise
in
purveying
business plan,
fragrances
or
develop
a
strategic
a budget, or sufficient funding for advertisingi
and that they worked with a
licensee which would not disclose
its name because it was concerned,
as USPA was aware,
that it
might be dragged into a lawsuit with Ralph Laruen and had been
unable to find sublicensees due to threat of a trademark action
(Tr.
270: 22-277: 10
(Cummings))
further indicates that
the USPA
Parties intended to capitalize on PRL's reputation and goodwillTherefore, the Court finds that
instead of building their own.
USPA adopted
its
mark with
the
intention
of
capitalizing
on
PRL's reputation and goodwill.ls
7.
The Quality of USPA's product
Under
examination of
the
the
seventh
Polaroid
factor
quality of
USPA's
fragrance
calls
for
product.
an
The
This is distinct from a finding that USPA knowingly acted unlawfully at
least with regard to USPA's adoption of the Double Horsemen mark on
fragrances.
Whether or not the USPA parties acted in reliance on the 1984
Order and 2006 apparel litigation in adopting the Double Horsemen with regard
to fragrances, this is not in tension with the Court's finding that USPA
adopted the mark, and for fragrances initially with trade dress that is
strikingly similar to the POLO BLUE line, with the intention of capitalizing
on PRL's reputation, goodwill, and any confusion between its and the PRL's
product.
15
46
Court makes no findings on this issue,
PRL
Parties
Parties'
proffered
evidence
in
as neither USPA nor the
this
regard,
product was pulled from the market
and
the
USPA
nearly immediately
after being introduced.
However,
is
the
user
real
may
it
is the
gravamen
sue
infringerfs
to
goods
of
user,
junior users]
Id.
{quoting
826
(Sup.
have
create
an
"is
not
hands,
his
top
Accordingly,
reputation
qual i t Y ,
even
"a
senior
where
the
_M_o_b_l_'l_ _ _ _C_o_r",-p_,__
O_i_l
v_,
1/
required
to
put
its
reputation
in
[a
no matter how capable those hands may be.
--------~~-----------
Ct.
found
of
factor,
over quality that
. , 818 F.2d 254, 259, 260 (2d Cir. 1987).
Petroleum
A senior
this
protect
are
loss of control
1957)).
At the same time,
,
165 N.Y.S.2d 825,
courts in this Circuit
that
similarity in the quality
even
greater
likelihood
of
1/
the products may
confusion
as
to
source
inasmuch as consumers may expect products of similar quality to
emanate
from
the
Inc.
(S.D.N.Y. 2002)
junior user's
v.
same
Nature Labs
(S. D. N. Y .
See
~-~~---~
LLC,
221
(discussing the two ways
product
Paco Rabanne Parfums,
(same) i
source.
has
been analyzed) i
86 F. Supp.
Jordache
2d 305,
Inc.
---------~---~----
1993)
{stating that
841
F.
Tommy
Supp.
Hilfiger
2d 410,
420
which quality of the
Paco
325-26
F.
Sport,
Ltd.
v.
(S.D.N.Y. 2000)
Supp.
506 1
520
because parties both manufacture
47
quality apparel,
the
senior user need not
reputational harm due
quality
of
the
to tarnishment,
products
"supports
be
but
the
concerned about
that
the equivalent
inference
that
they
emanate from the same source") .
Thus,
while this factor is neutral,
either reasoning
might additionally support the PRL Parties' claims.
8.
The Sophistication of Fragrance Buyers
"Generally,
the
more
sophisticated
average consumer of a product is,
similarities
in
and
careful
the
the less likely it is that
trademarks
will
result
in
concerning the source or sponsorship of the product.
confusion
II
Bristol
Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1046 (2d
Cir.
1992).
fragrances
Although it may be that purchasers of expensive
are
typically
found
to
be
somewhat
sophisticated
consumers, see
e . . , Nina Ricci, S.A.R.L. v. Gemcraft Ltd., 612
F.
1529
Supp.
record
1520,
to
fragrances
indicate
that
at
to
sophisticated.
apparel
and
(S.D.N.Y.
low-
1985),
there
purchasers
mid-range
of
is nothing in the
low-
retailers
to
mid-priced
are
comparably
The USPA Parties state that they will sell their
other
products
at
Sears
and
similar
mid-tier
merchandisers at price points below those of the PRL Parties.
48
In so far as this will be the case,
the
USPA
Parties'
believing
that
products
USPA's
may
product
prospective purchasers of
nonetheless
is
an
USPA and
Nikon Inc.
the
v.
Parties
Ikon Corp.,
court's finding
sophisticated
PRL
and
"could
a
"Where
II)
the
American
Cir.1983)
Inc.,
i
618
fragrance products,
otherwise
F. 2d 91,
be
95
affiliated.
or
See
(affirming district
has
Broadcasting
Fit
F.2d 950,
King Distributors,
acts
succeeded
586 87
Cos.,
Industries,
954
973 F.2d at 1044-45;
about
an
in
bad
trademark or trade dress,
996 F.2d at
Perfect
confused
second-comer
copier
Paddington Corp.,
v.
market II
affiliation
•
intentionally copies a
that
"down
into
that consumers of lower-end products were less
between the products.
arises
987
are
confused
authorized
version or extension of the PRL Parties'
that
be
(2d Cir.
in
1980)
v.
i
231,
832
F.2d
1317,
Acme
49
confusion.
II
(2d
Quilting Co. ,
Bristol-Myers
Squibb,
v.
Quality
(2d Cir.
1987)).
1322
This factor therefore cuts in the PRL Parties' favor.
Weighing the Factors
presumption
246 47
Charles of the Ritz Group Ltd.
Inc.,
and
~W.-=a::.=r::.=n_e_r
_______
I_n_c_.
F.2d
Inc.
a
causing
(citing
720
faith
Weighing the various Polaroid factors and based on the
evidence presented at trial
the Court finds that USPA/s use of
l
Double Horsemen Mark along wi th the word mark
ASSN.
in
II
the
likelihood of
context
of
men s
fragrances
confusion with
the
creates
PRL
1
l
"U. S .
Parties
a
POLO
strong
products.
The
marks are so similar that it is likely that consumers would be
confused
PRL had authori zed a down
whether by believing
1
market product or by confusing
II. State Law
products out
Cla~s
\\ [T]
standards
Section
43(a}
claims
the
Lanham Act and unfair competition claims under New York Law are
almost indistinguishable.
F. Supp. 2d 339 1
363
Tri - Star Pictures 1
II
Bros. - Barnum
B.E. Windows
1996) .
only
•
808 F.
1477
(2d Cir.
competition
Supp.
1112,
1993)
claims
14
937 F.
l
&
Supp.
element
204 ,
that
208 - 0 9
must
be
(S.D.N.Y.
shown
to
ir competition under the common law is
Girl Scouts v.
Inc.,
1
additional
establish a claim for
bad faith.
Unger 1
(S.D.N.Y. 1998); see also Genesee Brewing
124 F.3d at 149;
Inc. v.
Inc. v.
Bantam Doubleday Dell
1131
(S.D.N.Y.
("Under New York
closely
resemble
1992)1
law,
Lanham
Publ' g Group,
aff'd,
common
Act
996 F.2d
law unfair
claims
except
insofar as the state law claim may require an additional element
50
-
-------_._------ - - - - _ . _ - - - - - -
of bad faith or intent II)
(internal quotations omitted)
Milstein,
Lawlor, Roth,
(2d Cir.
Inc. v. Gregor,
1995)
Inc.,
i
Jeffrey
58 F.3d 27,
34 35
(" [T]he essence of unfair competition under New
York common law is the bad faith misappropriation of the labors
and expenditures
of
another,
likely to
cause
confusion or
to
deceive purchasers as to the origin of the goods H) .
Since the PRL Parties have demonstrated a
of confusion between the parties'
likelihood
marks under their Lanham Act
claims and USPA intended to capitalize on PRL's reputation and
goodwill,
the
PRL Parties prevail
on their unfair competition
claims as well.
Because the PRL Parties have prevailed on their Lanham
Act and unfair competition claims,
parties'
permanent
additional
state
The
injunction.
injunction prohibiting
the
law
the Court need not reach the
claims
scope
USPA
of
in
order
the
Parties
to
relief
from
using
issue
a
sought- an
the
"U. S.
POLO ASSN.H name in conjunction with the Double Horsemen mark in
men's
fragrances--is
identical
regardless
of
whether
Parties would succeed on any of their additional claims.
IV. Per:manent Injunctive Relief
51
the
PRL
Traditionally,
this
Circuit,
a
in
party
trademark
seeking
a
infringement
permanent
actions
injunction
in
"must
succeed on the merits and show an absence of an adequate remedy
at law and irreparable harm if the relief is not granted." Gayle
Martz,
Inc. v. Sherpa Pet Group,
(S.D.N.Y.
Cir.
2009)
2006).
Salinger
(citing Roach v.
F.
3d 53,
56
(2d
Colting,
v.
607
copyright
MercExchange,
that
440
the Second Circuit's recent decision in
injunctive
held
Morse,
However,
context of a
for
Inc., 651 F. Supp. 2d 72, 84 5
relief
L.L.C.,
a
F.3d
68,
74-75,
announced
infringement action that
had
been
547 U.S.
preliminary
abrogated
388
(2006).
injunction
this
by
in
the
standard
Inc.
v.
The Second Circuit
should
issue
where
the
plaintiff has shown a likelihood of success on the merits 16 and
that:
absence
(1)
of
"he
an
is
likely
to
injunction";
suffer
(2)
irreparable
"remedies
at
injury
law,
in
the
such
as
monetary damages, are inadequate to compensate for that injury";
(3)
the balance of hardships tips in his favor;
'public interest would not be disserved'
preliminary injunction."
(2d Cir.2010)
Salinger v.
(citing eBay,
Inc.
v.
and
(4)
"the
by the issuance of a
Colting,
607
MercExchange,
F.3d 68,
80
L.L.C.,
547
U.S. 388, 391 (2006)).
16
"The standard for a preliminary injunction is essentially the same as
for a permanent injunction with the exception that the plaintiff must show a
likelihood of success on the merits rather than actual success."
Prod
Co. v. Village of Gambell, 480 U.S. 531, 546 n.12.
52
Although
holding
the
in
Salinger
explicitly
was
"limited to preliminary injunctions in the context of copyright
cases,"
Id.,
607 F.3d at
78 n.7,
the Court
saw no reason why
"eBay would not apply with equal force to an injunction in any
Id.
type of case."
panel noted that
principles
of
at 78 n.7(emphasis in original).
And the
"eBay strongly indicates that the traditional
equity it
employed are
the presumptive
standard
for injunctions in any context." Id. at 78.
While
issue
in
the
the
Second Circuit has not yet
context
of
trademark
spoken on this
actions,17
infringement
Salinger suggest that these cases should be analyzed under the
standards for injunctive relief articulated by the Supreme Court
ln
eBay,
This
Inc.
Court
considered
v.
agrees
MercExchange,
with
Salinger's
other
L.L.C.,
courts
applicability
ln
to
547
this
U.S.
388
Circuit
trademark
(2006).
to
have
actions
that
there appears to be no principled reason not to adopt the newly
announced standard in the trademark context.
Inc.,
See Pretty Girl,
2011 WL 887993, at *2; New York City Triathlon LLC v. NYC
Triathlon Club, Inc., 704 F. Supp. 2d 305, 328 (S.D.N.Y. 2010).
17
Prior to Salinger, there was a split among the district courts about
the applicability of the eBay standard to trademark cases.
See Gayle Martz,
Inc. v. Sherpa Pet Group, Inc., 651 F.Supp.2d 72,84-85 (S.D.N.Y. 2009)
(comparing Microsoft Corp. v. AGA Solutions, Inc., 589 F.Supp.2d 195, 204
(E.D.N.Y. 2008)
(applying eBay standard in trademark action) with Patsy's
Italian Restaurant, Inc. v. Banas, 575 F.Supp2d 427, 464 & n.25 (E.D.N.Y.)
(declining to apply eBay)).
53
------
-~-
------
-------~----
--------_.__.----
__ __
-~\rlJliI1'1i
Moreover,
this
Court
recognizes
"\ a
that
maj or
departure from the long tradition of equity practice should not
be lightly implied.'" eBay,
547 U.S. at 392
v. Romero-Barcelo, 426 U.S. 305, 320
suggested that
injunction,
eBay's
standard applies
federal
at
in the
context
of
391 92.
courts
any
607
As in eBay, no Congressional intent to the
contrary is evident here t
U.S.
Salinger strongly
so long as Congress does not intend otherwise.
F.3d at 77-78 & n.7.
547
(1982)).
(quoting Weinberger
The
but
instead the reverse.
Lanham Act
"have power to grant
expressly provides
injunctions,
that
according to
the principles of equity" in trademark infringement and dilution
15
cases.
U.S.C.
§
1116 (a).
SimilarlYt
the
Act
expressly
states that the senior owner of a mark "shall be entitled" to an
injunction "subject to the principles of equity" with respect to
dilution claims.
15 U.S.C.
Accordingly,
factored
the
§
1125 (c) (1) .
Court
concludes
injunction standard articulated
applies to this action.
A.
Likelihood of Irreparable Injury
54
that
the
in eBay and
four-
~S_a_l_~_
This
of
Circuit
irreparable
harm
has
in
previously
trademark
recognized
infringement
a
presumption
act ions.
Even
quite recently,
the Circuit has held that as long as there has
not
delay
been
undue
establishes that
likelihood
of
in
bringing
a
an infringer's use of
consumer
confusion
Luigino's,
Davidof f
also,
Inc. ,
SA v.
Dunkin'
423
F.3d
.,
CVS
137,
571
144
F.3d,
Sept.
15,
(KAM) (MDG) ,
2009)
a
"plaintiff
who
trademark creates a
is
entitled
to
Weight Watchers lnt'l,
246
Donuts Franchised Rests.
07-CV-3662
No.
(E.D.N.Y.
sati
Inc.,
its
generally
presumption of irreparable injury."
v.
claim,
(2d
Cir.
2005)
(2d Cir.
2009
Inc.
2009)
LLC v.
WL
a
Zino
i
See
Tim & Tab
2997382,
at
*8
(irreparable injury "is automatically
ied by actual success on the merits as irreparable harm is
established by a showing of likelihood of confusion.")
(internal
quotation and citation omitted) .
Prior
presumption
clear
to
in
the
whether
Salinger,
context
eBay's
which
of
eliminated
copyright
elimination
of
an
claims, 18
the
analogous
was
presumption
irreparable harm applied to trademark infringement actions.
also Chloe v.
(CS) (GAY),
DesignersImports.com USA,
2009
WL
1227927,
at
*11
18
Inc.,
(S.D.N.Y.
ss
No.
07 Civ.
April
30
1
of
See
1791
2009)
"After eBay .
courts must not simply presume irreparable harm.
Rather, plaintiffs mush show that, on the facts of their case, the failure to
issue an injunction would actually cause irreparable harm. II Salinger, 607
F.3d at 82.
55
(retaining
pre-eBay
Colibri Corp.!
presumption);
692 F. Supp.
Montblanc-Simplo
2d 245
(E.D.N.Y.
v.
(same).
2010)
GmbH
In
light of Salinger's clarification that "eBay's central lesson is
that, unless Congress intended a
'major departure from the long
tradition of equity practice,! a court deciding whether to issue
an injunction must not adopt 'categorical! or 'general! rules or
presume
that
standard!
11
a
party
F.3d
607
has
at
met
an
77-78
element
n.7,
&
of
the
the
injunction
presumption
of
irreparable injury in trademark cases is no longer appropriate.
See Pretty Girl,
Triathlon!
704
presumption,
2011 WL 887993,
F.
Supp.
however,
2d
the
at
at
*2
342 43.
Even
Parties
PRL
New York City
n.4i
&
have
without
the
adequately
demonstrated irreparable harm here.
"Irreparable harm exists in a trademark case when the
party seeking the
over
the
control
injunction shows
reputation of
over
one's
its
that
reputation
is
2d
quotation marks
(internal
ommitted)
Inc. v. Calcu Gas
95
(2d Cir.
1985);
Omega Importing Corp.
Co.! 451 F.2d 1190! 1195 (2d Cir. 1971).
56
of
nor
704 F.
Supp.
(quoting
Power
Inc.,
v.
loss
'calculable
neither
New York City Triathlon,
11
343
lose control
because
trademark
precisely compensable.
at
it will
754 F.2d 91,
Petri-Kine Camera
Here,
confusion
absent
between
an
the
Horsemen Trademark,
injunction,
Polo
the
Player
given
Logo
the
likelihood of
and
USPA's
reputation and goodwill
Double
cultivated by
PRL's would be out of its hands.
The USPA Parties' product may
or may not
sold with
be of high quality,
customer service,
been
highly
or convey the
cultivated
by
sufficient
same branding
Ralph
Lauren.
image
In
any
care
to
that
has
event,
the
impression given to consumers by the USPA Parties' product, and
so the reputation and goodwill of the PRL Parties', will not be
in PRL's control.
harm the
PRL
goodwill
The Court therefore agrees that though the
Parties will
cannot
be
suffer
quantified,
in
terms
the
PRL
of
reputation
Parties
will
and
be
irreparably injured in the absence of a permanent injunction.
B.
Adequacy of Remedies at Law
Because
resulting
loss
the
of
losses
customers
of
are
reputation
not
and
goodwill
precisely
and
quantifiable,
remedies at law cannot adequately compensate Plaintiff for its
injuries.
See
Mi
Wisc.
( "The
generally
v.
irreparable
Northwestern
Alberts,
injury
937
F.2d
requisite
Nat!l
77,
for
80
Ins.
Co.
(2d Cir.
the
of
1991)
preliminary
injunction overlaps with the absent lack of adequate remedy at
law
necessary
to
establish
57
the
equitable
rights.") .
Accordingly, the court finds that remedies at law are inadequate
to compensate the PRL Parties in this case.
C.
The Balance of Hardships
The equities weigh in the PRL Parties'
favor.
PRL
has sold men's fragrances bearing the PRL Polo Player logo and
POLO marks
for
over thirty years
and has
trademarks for their use on fragrances.
14.)
The
potential
substantial
loss
to
likelihood
PRL both
in
consumer
of
sales
confusion
and
threaten to cause the PRL Parties serious harm.
the
USPA
Parties
have
yet
to
enter
registered
(Tr. 52:13-21.; PRL Ex.
of
terms
multiple
the
and
reputation
In contrast,
fragrance
market
in
While 10,000 units of the USPA's product have been
earnest.
produced at their cost (Tr.
of which
277:11-15),
only approximately 3,500
were sold (Tr. 278:10-13), this is not so great as to
outweigh the harm that would be done to the PRL Parties absent
an injunction.
D.
The Public Interest
The
consuming
public
has
a
protectable
being free from confusion, deception and mistake.
Ci ty Triathlon,
704 F.
Supp.
2d at
58
344
interest
in
See New York
( \\ [T] he public has an
interest in not being deceived- - in being assured that the mark
it associates with a product is not attached to goods of unknown
ting SK & F. Co. v. Premo Pharm. Labs.,
origin and quality.")
Inc'
r
625 F.2d lOSS,
1067
(3d Cir.
1980))
the
likelihood
i
Gayle Martz,
651 F.
Supp. 2d at 85).
Because
this case,
of
of
consumer
confusion
in
the public interest would be served by the issuance
of an injunction, and this factor weighs in Plaintiff's favor.
Conclusion
The
USPA
Parties
contend
that
the
PRL
Parties
are
attempting to monopolize the depiction of the sport of polo.
No
monopoly over the use of the word polo or its depiction exists.
As Judge Sand noted, the PRL Parties do not have a right to take
action with respect to the use of any equestrian figure or the
word "polo."
Sand Opinion, 1984 WL 1309, at *17.
observed, and Judge Goettel before him,
As Judge Sand
it is clear that "polo"
is generic with regard to polo shirts and coats.
rd.
at
*2.
Polo may be descriptive as to other shirts and coats as well as
to various uses with regard to the sport.
Nothing in this order
is intended to prevent the USPA Parties from using "polo" to the
extent they do so generically or descriptively.
59
There continue
to be countless ways in which the sport of polo can be depicted
without infringing on the PRL Parties' marks.
There is,
vast
in Judge Sand's words,
clearly room in our
society for both the USPA Parties and the PRL Parties to
engage
in
another,
1 icenaing activities
and
construed
nothing
Nonetheless,
conjunction
contained
to
the
another matter.
the
extent
Double
do
in
such
precluding
as
that
not
this
conflict
opinion
the
USPA
Horsemen
mark
Parties
on
The USPA Parties use of
should
Id.
activities.
use
at
be
*8.
~polon
fragrances,
;'POLO'I
with one
in
this
is
in conj unction
with the Double Horsemen mark in the context here infringes the
PRL Parties' substantive trademark rights.
Based on the findings and concluaions set forth above,
the
claims
of
the
united
states
Polo Association
Parties
dismissed and the PRL Parties are granted injunctive relief.
Submit judgment on notice.
New York, NY
MAy
2011
if '
60
It is so ordered.
are
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