Second Circuit Clarifies Polo Trademark Injunction

Posted by on May 18, 2015

It has been a legal showdown spanning several decades, but fashion design company Ralph Lauren Corp., hasn’t given up its trademark fight against the United States Polo Association over the use of its word and pictorial trademarks despite a recent setback.

The U.S. Court of Appeals for the Second Circuit ruled the Polo Association may sell sunglasses with a logo that is similar to the Ralph Lauren trademark. (Read the full decision here) The parties refer to the mark in dispute as the “double horsemen,” which features “two mounted polo players vying for a ball.” Ralph Lauren uses the mark on its clothing and accessories, which are sold worldwide, as well as the word mark, “POLO.” The Polo Association, which is the governing body of the sport in the U.S., uses similar logos on consumer goods and is in competition with Ralph Lauren’s products.

This appeal was heard after a contempt order was made against the Polo Association in 2012 for violating an injunction against it dating back to 1984. That contempt order came as a result of the Polo Association selling about one million pairs of sunglasses using the double horseman mark between 2009 and 2012, in violation of the 1984 injunction.

This appeal was heard after a contempt order was made against the Polo Association in 2012 for violating an injunction against it dating back to 1984. That contempt order came as a result of the Polo Association selling about one million pairs of sunglasses using the double horseman mark between 2009 and 2012, in violation of the 1984 injunction.

The Circuit Court’s decision came last week, and determined that the 1984 injunction did not bar the Polo Association from using the double horsemen mark across all markets. Rather, the court ruled that the injunction only barred use of the double horseman mark and the word “POLO” on its fragrances, beauty products, and other similar merchandise. Reiterating that an injunction must offer clear notice of what specifically a party may or may not do, the Court said that the underlying injunction did not enjoin all uses of the trademark. As such, it vacated the contempt order and remanded for further proceedings.