Polo Fashions, Inc. v. Extra Spec. Prods., Inc.

• Decision Date: 08 May 1978
• Docket Number: No. 77 Civ. 5023 (GLG).,77 Civ. 5023 (GLG).
• Citation: 451 F. Supp. 555
• Parties: POLO FASHIONS, INC., Plaintiff, v. EXTRA SPECIAL PRODUCTS, INC. and Lomar Enterprises, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

451 F. Supp. 555

POLO FASHIONS, INC., Plaintiff, v. EXTRA SPECIAL PRODUCTS, INC. and Lomar Enterprises, Inc., Defendants.

No. 77 Civ. 5023 (GLG).

United States District Court, S. D. New York.

May 3, 1978.

As Amended May 8, 1978.

COPYRIGHT MATERIAL OMITTED

Amster & Rothstein, New York City, for plaintiff by Morton Amster, Roy H. Wepner, New York City, of counsel.

Pennie & Edmonds, New York City, for defendants by George F. Long, III, Jonathan A. Marshall, Robert T. Scherer, New York City, of counsel.

OPINION

GOETTEL, District Judge.

Plaintiff, Polo Fashions, Inc., ("Polo"), seeks to enjoin defendants, Lomar Enterprises, Inc. ("Lomar") and Extra Special Products, Inc. ("Extra Special")¹ from infringing plaintiff's trademarks.^* The four causes of action stated in the complaint, falling within the broad generic categories of trademark infringement and unfair competition, are: (1) infringement of registered trademarks, 15 U.S.C. § 1114; (2) infringement of common law trademarks and unfair competition; (3) use of false designations of origin in violation of Section 43(a) of the Trademark Act of 1946, 15 U.S.C. § 1125(a);² and (4) injury to business reputation and dilution of trademark under Section 368-d of the General Business Law of the State of New York.³ In essence, plaintiff, which is identified with the famous fashion designer, Ralph Lauren, claims that defendants' successful marketing of several lines of men's wearing apparel stems from their use of trademarks confusingly similar to POLO, POLO FASHIONS, and POLO BY RALPH LAUREN, often in conjunction with a design of a polo player mounted on a horse (hereinafter "Polo Player symbol").

Argument of plaintiff's motion for a preliminary injunction was heard on November 23, 1977. Concluding that issues of fact foreclosed immediate relief, the Court, by order of November 28, 1977, referred the matter, pursuant to 28 U.S.C. § 636(b)(1)(B), to a Magistrate to conduct an evidentiary hearing and to submit proposed findings of fact and conclusions of law. (A consent order, temporarily restraining defendants from certain conduct, pending determination of the motion for preliminary injunction, was thereafter entered.) The referral order outlined five primary areas of factual dispute which can be summarized as the likelihood of confusion between plaintiff's and defendants' marks, the rights of each to the marks and whether defendants were motivated by an intent to deceive.

Following a hearing, the Magistrate issued a report on February 24, 1978 recommending the issuance of a preliminary injunction. Defendants object to the report, emphasizing several purported omissions which, they contend, render the report inadequate to support a preliminary injunction and necessitate further hearings. Defendants point first to the Magistrate's failure to make specific findings of the prerequisites to preliminary relief, i. e., plaintiff's probable success on the merits and irreparable injury. Secondly, they claim the Magistrate failed to weigh the consequences of certain statements made by plaintiff in connection with its application to register its trademark, POLO BY RALPH LAUREN, and of a statement contained in its answer to a prior infringement suit brought by Brooks Brothers. Defendants also disagree generally with the Magistrate's primary conclusions that plaintiff had a protected trademark interest in the word "POLO" and that its rights in the mark were superior to those of defendants.

The Court concurs with the Magistrate's conclusion that plaintiff is entitled to a preliminary injunction under the circumstances disclosed by the hearing. Moreover, on the facts of this case, it appears to matter little under which legal theory plaintiff proceeds.

Trademark infringement has been described as just a part of the broader field of unfair competition with the essence of both claims being the likelihood that the infringing mark will cause confusion in the minds of the public. Safeway Stores, Inc. v. Safeway Properties, Inc., 307 F.2d 495 (2d Cir. 1962); Stix Products, Inc. v. United Merchants & Mfrs., 295 F.Supp. 479, 493 & n. 15 (S.D.N.Y.1968). Thus, courts employ the same standards for determining the likelihood of confusion, regardless of the underlying theory of liability. Mortellito v. Nina of California, Inc., 335 F.Supp. 1288, 1294 & n. 8 (S.D.N.Y.1972).

The factors which should be weighed are the strength of the plaintiff's mark, the degree of similarity between both the marks and the products to which they are affixed, the competitive proximity of the products, the degree of care likely to be exercised by consumers, the presence of actual confusion and the motive of the alleged infringer in adopting the mark. Helene Curtis Industries v. Church & Dwight Co., 560 F.2d 1325 (7th Cir. 1977); Grotrian, Helfferich, Schulz v. Steinway & Sons, 523 F.2d 1331 (2d Cir. 1975); Carl Zeiss Stiftung v. VEB Carl Zeiss Jena, 433 F.2d 686, 705 (2d Cir. 1970), cert. denied, 403 U.S. 905, 91 S.Ct. 2205, 29 L.Ed.2d 680 (1971).

A. Strength of the Mark

The Magistrate's report details the evidence supporting his conclusion that plaintiff's registered mark, POLO BY RALPH LAUREN, and its common law use of POLO, both alone and in connection with the Polo Player symbol, have acquired a secondary meaning with regard to all men's wearing apparel. Defendants have contended throughout the proceedings that POLO alone and in connection with the Polo Player symbol are inherently weak marks. They premise their arguments upon the fact that "polo" is a generic word denoting certain types of shirts and coats,⁴ while it may be used descriptively to indicate a specific style of shirt with a particular type of collar. Indeed, in an answer filed in the infringement action brought by Brooks Brothers, Polo Fashions averred that for these reasons "the word polo as applied to the genus of men's shirts is not susceptible of being a trademark for men's shirts." Defendants seek to further weaken plaintiff's mark by pointing to third party registrations containing the word "polo" either alone or in combination with other words or symbols. Again, this tactic was employed by Polo Fashions in the suit by Brooks Brothers.

Plaintiff responded that defendants raise only a straw issue by referring to the generic and descriptive functions of the word "polo," because defendants seek to use the words as trademarks, not descriptively. While Lomar may have used the word only on ties, Extra Special apparently intends to use it on diverse articles of men's wearing apparel, including "coordinating knits," which, plaintiff asserts, are not products which implicate either the generic or descriptive connotations of the word.

It may be useful, before proceeding further, to note that trademark law affords protection relative to a trademark's inherent "distinctiveness." In ascending order, the categories used are generic, descriptive, suggestive and arbitrary or fanciful. Generic words are words which identify the nature of the product. 1 Nims, Unfair Competition & Trademarks § 41 (1947). No matter how successfully a manufacturer promotes public identification of the word, it is incapable of attaining trademark status. J. Kohnstam, Ltd. v. Louis Marx & Co., 280 F.2d 437 (Cust. & Pat.App. 1960). Descriptive words stand on a better footing in that they can become trademarks if they gain a secondary meaning. In contrast, suggestive and arbitrary or fanciful words do not require proof of secondary meaning before their trademark status will be protected.

As a final observation, a trademark may shift categories depending upon the product to which it is affixed. Applying these elementary principles, as they are explained in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976), it is clear that "polo" is generic to polo shirts and coats, descriptive as to other shirts and coats and fanciful as it is applied to other articles of wearing apparel. Thus, on the facts of this case, plaintiff's position is that the use of POLO on ties is fanciful. As to Extra Special's prospective use, it appears that the term is fanciful as to most of the items of sportswear but probably generic or descriptive of some of the "coordinating knit" shirts.

To the extent that the word is generic, an injunction can be tailored to protect defendants' right to use the word generically. To the extent that the word is descriptive, distinctions must be drawn as to the use to which defendants have put the word. If a competitor uses a descriptive word in its trademark sense as a "`symbol to attract public attention'" and accomplishes its purpose by adopting the trademark holder's distinctive typestyle or emphasis upon the descriptive word, such use can be enjoined as trademark infringement or unfair competition. Venetianaire Corp. of America v. A & P Import Co., 429 F.2d 1079 (2d Cir. 1970). Thus, while defendants should not be foreclosed from using POLO descriptively, their use of such marks as POLO BY MARCO POLO and POLO in conjunction with the Polo Player symbol using typestyle and label colors similar to plaintiff's distinctive materials, infringes plaintiff's subsisting rights in POLO BY RALPH LAUREN and POLO with the Polo Player symbol.

With regard to third party usage of similar marks on other products, the Court agrees with the Magistrate's conclusion that plaintiff's mark had not become weakened thereby since there was no evidence that the trademarks were well promoted by their holders. Scarves By Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167 (2d Cir. 1976). In contrast, the evidence revealed that plaintiff's marks have been strengthened through their use and promotion by plaintiff. The Court will not give a reprise of the Magistrate's factual findings, supported by the record, which amply demonstrated that Polo Fashions, through its principal and designer Ralph Lauren, has become a nationally, perhaps internationally, known creator of...