(Professor Festinger please mark this post for my 20%)
Introduction
In class a few weeks back we compared the two penguin designs that were the subjects of the case, Promafil Canada Ltée v. Munsingwear Inc. This case got me thinking of two logos that have caused me some confusion personally. Polo Ralph Lauren (PRL) and the US Polo Association (USPA) both use a logo that to me is remarkably similar. When I first came across USPA goods while shopping in Winners, I remember assuming that they were goods from PRL. I was familiar with Ralph Lauren but had never heard of the USPA brand before. Upon further inspection, I noticed there were two horsemen in the USPA logo as opposed to the single horseman logo I was familiar with in regards to PRL clothing. I further assumed this was some offshoot of their PRL brands like Polo Ralph Lauren Red or Double RL. It was not till years later that I actually realized this was a completely different brand. I had purchased plenty of sets of boxers thinking they were associated with PRL. Now, I am not upset with my purchase, USPA makes perfectly adequate garments too, but I was definitely persuaded to purchase their garments thinking they were coming from PRL. I brought up this example in class when we were discussing the doctrine of confusion and Professor Festinger invited me to look into it to explore what’s been going on with these two companies.
An Embattled History
1984
Turns out PRL and USPA have been dueling in the courts regarding this issue for decades. The dispute started back in the 1980s. Ralph Lauren was founded in 1967 and began producing its iconic PRL fragrance in 1978. Enter the US Polo Association. Despite having existed since 1890 USPA never engaged in product creation or licensing until the late 1970s when PRL began gaining popularity (red flag). USPA began producing goods and specifically a fragrance that bore the word “POLO” and a logo with 2 horsemen that was quite similar to PRL’s iconic single horseman logo. In 1984 USPA launched an action against PRL seeking a declaratory judgment that various articles of merchandise bearing a mounted polo player symbol did not infringe PRL’s Polo player logo. PRL filed a countersuit for trademark infringement alleging the use of the double horsemen logo (designed in 1981) infringed on their logo. USPA tried to argue that the logo was a weak mark and just a realistic depiction of a polo player and had not acquired any secondary meaning. The court’s response to this line of argument was if USPA thought the mark to have no secondary meaning – why were they trying so hard to copy it? The judge in the 1984 case found that USPA had been infringing on PRL’s marks, specifically their polo player mark and the word “POLO.” USPA and their licensees were enjoined from using their marks that infringed on PRL’s marks. The court however allowed USPA to continue its retail licensing program and left open the possibility of USPA using its name, and a mounted polo player that was distinctive from PRL’s polo player in its content and perspective. This left USPA able to produce various retail items.
2000-2006
The battle did not stop there. Once again in 2000, PRL entered litigation against USPA seeking to bar the use of the USPA name, the double horsemen mark, and multiple variants. It seemed like the two companies were finally finding some common ground by entering a partial settlement in 2003 allowing USPA to use its name and certain other logos on apparel, leather goods, and watches as well as incorporating the 1984 order giving PRL a mechanism to raise complaints and objections when it felt USPA were violating their rights or the settlement. Despite this seeming progress, the parties remained unsettled on the matter of four variants of the double horsemen logo and took to court. In 2005, a jury found that three out of the four logos in question (an outline of the double horsemen, solid double horsemen with ‘USPA’, and an outline of double horsemen with ‘USPA’) did not infringe PRL’s marks but the solid double horsemen logo did. PRL tried to appeal in 2006 but this request was denied. This bout led to USPA being allowed to use their marks on apparel, watches, and leather goods.
2009-2011
These two combatants weren’t done just yet. USPA filed a suit seeking a declaratory judgment to let them use the words “U.S. POLO ASSN.,” the double horsemen logo, and “1890” to sell fragrance products – the creme de la creme of PRL’s product line. Of course, PRL countersued. The court in 2011 determined that USPA’s “confusingly similar” logo with two mounted polo players and their use of the word “POLO” infringed on PRL’s marks with respect to fragrance products. The court noted that, unlike apparel, PRL’s Player logo and POLO trademarks for fragrance products were valid and “extremely strong” and thus were entitled to be afforded substantial protection from infringement. PRL’s original scent had actually been inducted into the Fragrance Foundation hall of fame in 2004. The court took this further and claimed that USPA had acted in bad faith by producing a fragrance with the double horsemen logo and the word “POLO” knowing the product had a high likelihood of causing confusion. This led to USPA being enjoined from using the marks in relation to any fragrance product. PRL was also granted a permanent injunction imposing a duty on USPA to use a distinctively different mark from PRL’s polo horsemen logo on “any goods or rendering of any services” aside from those found to be non-infringing in the apparel litigation.
2012-Present
But wait, there’s more. USPA put the above injunction to the test entering the eyewear market with their double horse logo and the word “POLO.” PRL unsurprisingly took USPA to court once again. PRL had been making eyewear since the late 70s and citing the previous injunction, the court came down on USPA and held that USPA was in contempt for violating the injunction awarding PRL any profits coming from the sale of USPA eyewear bearing the double horsemen logo. In 2015 on appeal, the higher court vacated the contempt order and sent the case back down to the lower courts for further review explaining that the current record could not support a finding for contempt. In 2016, USPA filed for summary judgment for a finding they were not in contempt of court, PRL requested the motion be denied in favour of a targeted discovery process. The motion for summary judgment was denied and the now 38-year saga of litigation continues to the present day.
References:
https://casetext.com/case/us-polo-assn-inc-v-prl-usa-holdings
https://casetext.com/case/us-polo-assn-inc-v-prl-usa-holdings-inc-1
https://casetext.com/case/us-polo-assn-inc-v-prl-us-holdings-inc-1
Communications Law