PRL USA Holdings, Inc. was entitled to a permanent injunction barring the United States Polo Association (USPA) and its licensees from manufacturing and selling fragrance products bearing the word "POLO" and a logo featuring two polo players with mallets ("double horsemen" mark), the federal district court in New York City has decided. PRL owned the famous "POLO" trademarks (including POLO, POLO BLUE, POLO BLACK, POLO EXPLORER, and polo player logo) for men's fragrances. Confusion was likely to result from USPA's use of the double horsemen mark on men's fragrance products.

Validity of Marks

PRL's POLO marks were valid, the court found. Although the word "polo" may be generic with respect to polo shirts, or descriptive with respect to aspects of the sport, it was arbitrary with respect to fragrances. In addition, PRL's federal registrations for its marks constituted prima facie evidence that the marks were valid.

Likelihood of Confusion

PRL's marks were extremely strong, the court noted, which weighed in favor of finding that confusion was likely to result from USPA's use of a similar mark. The marks were arbitrary with regard to fragrance products and were therefore inherently distinctive. PRL's licensee had spent more than $100 million advertising PRL men's fragrances bearing the marks in the United States, with $40 million alone spent on POLO BLUE. Consumer survey evidence showed that between 82 and 85 percent of respondents were aware of PRL fragrances bearing the POLO brand and logo. Over the last ten years, U.S. retail sales of men's fragrances bearing the POLO marks amounted to just over $1 billion.

Both parties' marks contained a polo player on horseback, facing slightly to the viewer's left, leaning forward with a polo mallet raised. Both were monochrome logos that were similar in their level of abstraction. Both were displayed in embossed metallic or glossy material. The primary difference was that PRL's design contained one player, whereas USPA's logo contained two. This difference was not sufficient to distinguish the marks. Both parties' marks featured the word POLO in a prominent font. Inclusion of the words "U.S.," "ASSN.," and "1890" to its mark did not change the emphasis on "POLO" as the dominant word portion of the mark, according to the court.

The parties' products were in competition in the marketplace, the court said. Although USPA contended that it would sell its fragrances at lower price-points than PRL and in mid-level stores that do not sell PRL's products, these differences were not so vast as to place a large competitive distance between the products. Although purchasers of expensive fragrance products, such as PRL's, were typically somewhat sophisticated consumers, nothing indicated that consumers of lower-priced fragrances, such as USPA's, were similarly sophisticated. In addition, consumers could believe that USPA's product was an authorized "down market" version of PRL's products.

There was evidence of actual confusion in the form of consumer surveys. One survey showed that 27.8 percent of respondents believed that a fragrance bearing the USPA's mark was produced by, connected to, or authorized by PRL. Other surveys showed similar levels of confusion in connection with variations on the USPA's mark. These confusion levels had been accepted as indicative of a likelihood of confusion by other courts, the court said.

USPA was fully familiar with PRL's marks and trade dress, which was evidence that USPA adopted its mark with the intention of capitalizing on PRL's goodwill, the court determined. The parties had been involved in extensive litigation regarding various types of products, including apparel. USPA's mark was strikingly similar to the logo used on PRL's most successful fragrance product, and USPA used similar trade dress to that used for PRL's product, which further indicated an intent to confuse.

Permanent Injunction

PRL would sustain irreparable harm in the absence of injunctive relief. Denying injunctive relief to PRL would cause PRL to lose control over the reputation and goodwill it had cultivated for its fragrance products sold under the POLO marks. This harm could not be quantified and was, therefore, not adequately compensable at law. The balance of hardships favored PRL because PRL had sold men's fragrances under POLO marks for over 30 years, and USPA had yet to enter the market in earnest. The consuming public had an interest in being free from confusion, deception, and mistake.

U.S. Polo Association, Inc., SD N.Y., ¶61,814.