United States Polo Association, Inc. et al v. PRL USA Holdings, Inc., No. 1:2009cv09476 - Document 80 (S.D.N.Y. 2011)

Court Description: 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)

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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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