United States Polo Ass'n, Inc. v. PRL USA Holdings, Inc.
| Citation | 101 U.S.P.Q.2d 1487,800 F.Supp.2d 515 |
| Decision Date | 13 May 2011 |
| Docket Number | No. 09 Civ. 9476.,09 Civ. 9476. |
| Parties | UNITED STATES POLO ASSOCIATION, INC., and USPA Properties, Inc., Plaintiffs, v. PRL USA HOLDINGS, INC., and L'Oréal USA, Inc., Defendants. |
| Court | U.S. District Court — Southern District of New York |
OPINION TEXT STARTS HERE
Baker & Hostetler LLP, by: Gerald Ferguson, Esq., David Sheehan, Esq., New York, NY, for Plaintiffs.
Paul, Hastings, Janofsky & Walker, LLP, by: Robert L. Sherman, Esq., New York, NY, for Defendant L'Oréal USA, Inc.
Kelley Drye & Warren LLP, by: William R. Golden, Jr., Esq., New York, NY, for Defendant PRL USA Holdings, Inc.
In this action, the plaintiffs United States Polo Association, Inc. (“USPA”) and USPA Properties, Inc. (“Properties”) (collectively, the “USPA Parties” or “Plaintiffs”) sought a declaration pursuant to 28 U.S.C. § 2201: (1) that they have the right to license and sell in the United States fragrance products and packaging bearing “U.S. POLO ASSN.,” the Double Horsemen Trademark and “1890,” and other products bearing the marks identified in Trademark Application Serial Nos. 77/738,105, 77/760,033 and 77/760,071 on the products identified in those applications; (2) that their use and licensing of such fragrance products and packaging does not violate Section 43(a) and (c) of the Lanham Act, 15 U.S.C. § 1125(a) and (c), nor constitute infringement, dilution or unfair competition with respect to the rights of the defendants PRL USA Holdings, Inc. (“PRL”) and L'Oréal USA, Inc. (“L'Oréal”) (collectively, the “PRL Parties” or “Defendants”); and (3) that their use and licensing of such fragrance products and packaging does not violate the common law of the State of New York relating to trademark infringement, unfair competition and trademark dilution.
The PRL Parties have brought counterclaims against the USPA Parties for trademark infringement, unfair competition, and trademark dilution under Sections 32, 43(a) and 43(c) of the Lanham Act, 15 U.S.C. §§ 1114, 1125(a) and (c), and for common law trademark infringement, trade dress infringement, trademark dilution, unfair competition, unfair and deceptive practices, and misappropriation in violation of the statutory and common law of each state in which the USPA Parties do business, including New York General Business Law (“GBL”) Sections 133, 349 and 360–1. The PRL Parties also filed a motion for a preliminary injunction.
Upon all the proceedings had 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.
This action was commenced by the USPA Parties on November 13, 2009, naming only PRL as a defendant. On February 11, 2010, L'Oréal's motion to intervene was granted. PRL filed its answer and counterclaims on February 16, 2010. On March 2, 2010, L'Oréal filed its answer and counterclaims, and the PRL Parties moved for a preliminary injunction.
On consent of the parties, the motion for a preliminary injunction was converted into a request for a permanent injunction. The trial and submission of evidence was held from September 27 through September 30, 2010. Final argument was held on November 17, 2010.
USPA is a not-for-profit Illinois corporation with a place of business at 4307 Iron Works Parkway, Suite 110, Lexington, Kentucky 40511. USPA is the governing body of the sport of polo in the United States. (Tr. 137:3–6. 1) It has been in existence continually since 1890. (Tr. 146:23–147:7.) 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, Lexington, Kentucky 40503, and is a wholly-owned subsidiary of USPA. Properties' sole function is to manage the licensing program of USPA. (Tr. 297:23–299:4.)
PRL is a Delaware corporation with a place of business at 650 Madison Avenue, New York, N.Y. 10022. PRL is the owner and licensor of the trademarks of Polo Ralph Lauren Corporation, including the Polo Player Logo and “POLO” used in connection with fragrances.
L'Oréal is a Delaware corporation with a place of business at 575 Fifth Avenue, New York, N.Y. 10017. L'Oréal is the exclusive licensee of certain PRL trademarks in the categories of fragrances, cosmetics and related goods, including the Polo Player Logo and “POLO.”
In the 1960s, Mr. Ralph Lauren started his own business, which today is known as Polo Ralph Lauren Corporation.
In the late 1970s, when the predecessor to PRL (also referred to as PRL) decided to expand into fragrances, cosmetics and related products, an exclusive license agreement was entered into with L'Oréal. (Deposition of Negar Darsses 25:21–26:9.)
In 1978, the first fragrance introduced into the market under that license appeared in a green bottle and packaging and prominently featured, and to this day continues to feature, the logo known as the “Polo Player Logo,” as well as the word mark “POLO” and less prominently “Ralph Lauren.” (Tr. 35:4–9; PRL Ex. 26.2)
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, the PRL Parties began adding new men's fragrances to the line, each prominently displaying the Polo Player Logo and the word mark “POLO.” In 2002, POLO Ralph Lauren BLUE was launched, followed by POLO BLACK in 2005, POLO DOUBLE BLACK in 2006, POLO EXPLORER in 2007 and POLO Ralph Lauren RED, WHITE & BLUE in 2009. (Tr. 36:8–37:21; PRL Exs. 11, 27–31.) The PRL Parties recently introduced four new fragrances to the marketplace, referred to as the “Big Pony Collection,” each displaying the Polo Player Logo and the word “POLO.” (PRL Exs. 32–35.)
All of the aforementioned PRL Parties' fragrances are still being sold today. (Tr. 38:8–17.) The PRL Parties' products come in different sizes and colors and exhibit different scents, but all of them use the Polo Player Logo and the word “POLO.” (Tr. 36:8–37:21; 51:11–19; PRL Exs. 26–35.)
PRL owns a number of federal trademark registrations for the Polo Player Logo, alone or in combination with words, names, symbols or devices, for fragrances and related products, including, among others, U.S. Reg. Nos. 1,212,060; 1,327,818; 2,922,574; 3,076,806; and 3,095,176, as well as a pending use-based Trademark Application Serial No. 77/883,516. Those registrations are valid and subsisting in PRL, with Reg. Nos. 1,212,060 and 1,327,818 having attained incontestable status. (PRL Ex. 14.)
USPA currently owns more than 900 trademarks worldwide, including “U.S. POLO ASSN.” and the “Double Horsemen Mark,” which are the primary trademarks of USPA's licensing program. (USPA Ex. 14; Tr. 163:16–165:6.)
Existing trademark registrations with respect to these two primary marks include: (a) Registration No. 3,370,932 for USPA and the Double Horsemen Trademark in International Class 25; (b) Registration No. 3,598,829 for the Double Horsemen Trademark in International Classes 14, 18 and 25; (c) Registration No. 2,188,594 for the Double Horsemen Trademark in International Class 14; (d) Registration No. 2,991,639 for U.S. POLO ASSN. SINCE 1890 in International Class 25; (e) Registration NO. 2,282,427 for U.S. POLO ASSN. SINCE 1890 in International Classes 14 and 18; (f) Registration No. 2,908,391 for U.S. POLO ASSN. in International Classes 14 and 18; and (g) Registration No. 3,367,242 for U.S. POLO ASSN. in International Class 25.3
USPA began to commercially license its trademarks in the early 1980s, but did not actively license in the United States until 1998. (Tr. 167:19–168:15.)
The USPA Parties and their licensees have manufactured, marketed, and sold products bearing the words “U.S. POLO ASSN.” and the “Double Horsemen Mark,” in numerous apparel and accessory categories. The products have been sold in more than 5,000 independent retail stores throughout the United States, including major national chains such as Kohl's, J.C. Penney, Sears, Ross, Peebles, Goody's, Dr. J's, and Stage Stores, as well as in fifteen USPA outlet stores. (Tr. 209:22–210:2.)
JRA Trademark Company Ltd. (“JRA”) is USPA's master licensee in the United States for fragrances and all products other than rosaries and watches. (Tr. 166:15–18.)
In 2008, USPA commenced discussions with JRA about expanding into the fragrance market. (Tr. 212:24–213:4–8.)
In 2009, JRA designed packaging for use on a USPA men's fragrance that featured the Double Horsemen Mark, which was being used by USPA on apparel. (Tr. 214:22–24.) 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 the front panel all appearing in gold. (PRL Ex. 16; Tr. 54:1–55:21.)
Approximately 10,000 units of USPA's fragrance bearing the Double Horsemen Mark were produced in November 2009. (Tr. 277:11–15.) Around that time and shortly thereafter, USPA's fragrance product was offered for sale at USPA outlet stores and through V.I.M. Jeans stores. (Tr. 221:20–222:7.) Between November 2009 and March 2010, approximately 3,500 units were sold through USPA outlet stores. (Tr. 278:10–13.)
On March 19, 2010, counsel for USPA represented in writing to this Court that USPA agreed to “immediately cease all sales of fragrance products, and use of packaging bearing the Double Horsemen mark and to refrain from advertising, offering for sale, selling, transferring or donating fragrance products and packaging bearing the Double Horsemen Trademark” until after the decision on the PRL Parties' motion for a preliminary injunction motion. (Tr. 277:16–25.) On March 24, 2010, the USPA's written submission was “so ordered” by the Court.
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