The Second Circuit recently vacated a contempt order entered against the U.S. Polo Association for selling sunglasses with its logo depicting two mounted polo players vying for a ball. The Second Circuit found that the Southern District of New York failed to apply a “market-by-market analysis” to determine whether the U.S. Polo Association’s logo was confusingly similar to Ralph Lauren’s trademarks when used in the eyeglass industry.
The Second Circuit’s decision marks the latest chapter in a 30-year dispute between Ralph Lauren and the U.S. Polo Association involving polo trademarks on consumer goods. In 1984, the Southern District of New York permanently enjoined the U.S. Polo Association from using any of Ralph Lauren’s marks “or any name or mark or symbol which is confusingly similar thereto, in connection with the sale” of any goods or services. Although the injunction applied to all markets, the term “confusingly similar” was not a bright line and required a comparison of the logos in various markets in order to determine if the U.S. Polo Association was infringing Ralph Lauren’s senior marks. As a result, in 2003, the Second Circuit affirmed a jury’s finding that U.S. Polo Association’s logo was not “confusingly similar” to Ralph Lauren’s trademarks in the apparel, leather goods, and watch markets. Yet, in 2012, the Southern District of New York found that the U.S. Polo Association’s logo on fragrance products did violate Ralph Lauren’s trademark rights in the fragrance and beauty markets and, therefore, entered a permanent injunction against the U.S. Polo Association.
Three decades since it began, the dispute between Ralph Lauren and the U.S. Polo Association has moved to the eyeglass industry and the U.S. Polo Association’s sale of more than one million pairs of sunglasses from 2009 and 2012. Most recently, in vacating a contempt order against the U.S. Polo Association, the Second Circuit found that the Southern District of New York improperly concluded that the 2012 injunction in the fragrance dispute barred the U.S. Polo Association’s logo in every market (including eyeglasses) except for apparel. The Second Circuit stressed that, as the prior injunctions make clear, a market-by-market analysis is required to determine whether the U.S. Polo Association’s logo is “confusingly similar” to RalphLauren’s. The Second Circuit also explained that the fact that the 2003 apparel litigation did not shield the U.S. Polo Association from infringement in the eyeglass industry could not, without more, make the U.S. Polo Association liable for infringement. Further, the Second Circuit suggested, without an evidentiary record, that “the eyeglass and apparel industries seem closer to each other than either is to the fragrance/cosmetic market.”
The Second Circuit’s recent decision does not prevent the Southern District of New York from entering another contempt order against the U.S. Polo Association after the court applies the “market-by-market-analysis” to the U.S. Polo Association’s sunglass sales. However, the Second Circuit counseled against another contempt order. Given the long and complicated history of this case, in addition to the “often unpredictable results of [the] market-by-market analysis,” the U.S. Polo Association likely did not have “clear notice” that using its logo on eyewear violated prior injunctions, as required to hold it in contempt. In other words, Ralph Lauren will likely lose this polo match battle on the issue of contempt, but still may win the war on infringement in the eyeglass industry as this dispute proceeds.