Riding on the Coattails of Ralph Lauren’s Horseman Logo Gets Bumpy
It appears Ralph Lauren is just as good at fashioning its trademark as it is at fashioning apparel. This past week the Second Circuit upheld a district court’s dismissal and permanent injunction of the United States Polo Association’s (USPA) use of its double-horseman logo in conjunction with the word “polo” on fragrance bottles. The court found that the use of the USPA’s mark on fragrance products would likely cause confusion with Ralph Lauren’s fragrance line.
The Ralph Lauren logo and the USPA’s logo are shockingly similar. Given that the USPA has been around since 1890 as the official organizing body of the polo sport, and that Polo Ralph Lauren sprung onto the scene and into window displays circa 1968, one might think that the late blooming Ralph Lauren copied the USPA’s logo as a way to associate itself with the allure of polo. While RL probably did choose a horseman logo to evoke whatever cultural associations polo had garnered in the late 60s, it did not copy the USPA’s logo. It appears that the USPA copied Ralph Lauren’s logo after the company developed its goodwill with consumers. Ralph Lauren trademarked its logo in 1971, three years after the company’s launch. The USPA introduced a new logo, the double-horseman, around 1981 – a good deal of time after its inception in 1890.
The legal disputes between Ralph Lauren and the USPA started in 1984 when Ralph Lauren claimed the USPA’s marketing of clothing products bearing the double-horseman logo infringed on Ralph Lauren’s trademark. The USPA in turn opposed Ralph Lauren’s attempt at trademarking the horseman logo by itself, without any accompanying words. The 1984 opinion opted for compromise: it allowed the USPA to continue using its double-horseman logo on apparel but enjoined it from using its name or mark in a way likely to cause confusion with Ralph Lauren’s marks.
Not surprisingly, this decision has led to many more lawsuits. This most recent decision by the second circuit bars the USPA from marketing a fragrance line with its double-horseman logo with the words “polo” or “polo since 1890” underneath. The court rejected the USPA’s argument that the 1984 decision allowing the USPA to use its logo on apparel barred Ralph Lauren from claiming the USPA’s use of its logo on fragrance products infringed Ralph Lauren’s marks; apparel is one market sector and fragrance is another. The court found the similarity of the proposed fragrance line to Ralph Lauren’s fragrance products and the USPA’s history of bad faith infringement weighed in favor of upholding the permanent injunction.
It appears that the Second Circuit’s decision is saying that if the USPA uses its double-horseman mark without also using its word mark “United States Polo Association” or “USPA,” it will be infringing on Ralph Lauren’s mark. There it is. Ralph Lauren has won the branding war over the polo logo. The USPA’s proposed fragrance bottle does sound cool, especially with “polo since 1890” or just “1890” underneath the double-horseman logo, but that’s the problem – the USPA is trying to find appeal from somewhere other than its word mark, yet its efforts end up looking too much like Ralph Lauren when the USPA uses its double-horseman logo. It’s understandable that the USPA would like to sex up its brand with chic logo-emblazoned items, but it can’t do that by trying to ride on the coattails of Ralph Lauren’s horseman logo. It’s time for the USPA to reconsider its target market and redo its logo.
