Tuesday, May 15, 2012

PRL (Ralph Lauren) Rides Fame of "Polo Player" Design Mark to Victory in Section 2(d) Cancellation

Petitioner PRL USA Holdings, Inc. (think Ralph Lauren) ran roughshod over Respondent Thread Pit, Inc. in this Section 2(d) cancellation proceeding. The fame of Petitioner's "polo player" design mark (shown below left) for various clothing items, including t-shirts, led the Board to find confusingly similarity with the registered mark shown below right, for "t-shirts and collared polo shirts." Among other unsuccessful arguments, Respondent claimed that its mark was a parody of the "societal elite as embodied by the sport of polo," but the Board was unmoved. PRL USA Holdings Inc. v. Thread Pit, Inc., Cancellation No. 92047436 (May 14, 2012) [not precedential].

The Board began with the factor of fame because fame plays a dominant role in the duPont analysis. Forty years of use, substantial advertising expenditures, media exposure, and substantial sales via many retail stores, resulted in Board's conclusion that PRL's mark is famous for Section 2(d) purposes. In fact, Respondent conceded the fame of the mark; it feebly contended that this fame lessens the likelihood of confusion, but the Board knocked that hopeless argument right out of the saddle.

The involved goods are in part identical (t-shirts), and the channels of trade and classes of consumers are presumed to include the normal channels of trade for these goods, sold to the same, normal classes of consumers.

As to the marks, the Board observed for the zillionth time that when the goods are identical, a lesser degree of similarity between the marks is necessary to find confusion likely. Keeping in mind that famous marks are entitled to a wide scope of protection, the Board found the marks to be "very similar" in appearance.

The horses are in identical positions with the left front leg curling back and crossing the right rear legs, the reins drape in the same manner, and the mallet extends from the rider at the same angle. In addition, the horses and riders are similarly portrayed in silhouette. Moreover, both marks contain no other elements, either design or words.

Although there may be some differences in commercial impression (one rider in control, the other falling off), the overall commercial impression of the polo players is "very similar." Particularly when the marks appear as a small logo on a t-shirt, it would require close inspection to distinguish the marks.

Finally, Respondent argued that it intended to "parody the elite in society as embodied by the sport of polo." The Board pointed out, however, that parody is not a defense if the marks are otherwise confusingly similar. Moreover, the Board likened this case to Nike v. Maher, in which Board rejected a parody defense for the opposed mark JUST JESU IT, which was meant "to promote, satirized, or poke fun at religion or religious themes." Similarly in this case, "parodying a life style is not a parody of a trademark."

And so the Board found confusion likely, and it granted the petition to cancel, declining to reach Petitioner's dilution claim.

TTABlog comment: Isn't Respondent's mark a parody of the Ralph Lauren mark? Isn't that why they have similarities in design? I think the problem is that by making the marks look somewhat similar in order to parody the PRL mark, Respondent made them confusingly similar.

Text Copyright John L. Welch 2012.


At 11:43 AM, Anonymous Kevin Wimberly said...

This is a clear parody to me. A consumer who legitimately thinks that a shirt bearing the logo of a person humorously falling off of a horse with polo club/mallet/stick/thing flailing nearby comes from Ralph Lauren deserves to be confused. I haven't read the opinion, but you'd think someone paying 60 bucks for a short sleeve shirt would know the difference, as would the person presumably paying less for the joke shirt.

This is my common sense approach. No attorney-ing involved...

At 12:01 PM, Anonymous Anonymous said...

Parody is one thing if it was just an ornamental image on a shirt, but the Applicant was trying to own the mark as a brand.

I think it makes a difference when you try to "own" the mark as opposed to being "merely ornamental" parody.

Either way, I would not take on Ralph Lauren to test the idea.

At 9:24 PM, Anonymous Rob said...

There may be some likelihood of dilution but there's absolutely no likelihood of confusion. The Board has wrongly decided the wrong alternate question before it, and left open the only meaningful dispute. Hopefully, this would be remanded with instructions to decide the issue of dilution.

At 11:44 AM, Anonymous Orrin A. Falby said...

Although not specifically stated in the decision, I think that the Board was concerned with "post-sale confusion". The context of the parties' use of the marks on the goods appears to be key on the 2(d) issue.

With regard to the registrant's parody argument, there was an obviuos flaw in its argument. Registrant claimed that the intent of the was to make fun of the sport of polo or something like that. However, the target of the parody has to be the mark and or the owner of the mark. In this case, the Registrant adopted used and registered a mark that clearly evoked Ralph Lauren's admittedly famous Polo Player. If you claim that your mark is a parody, you must admit that you intend to evoke the target of the parody. Registrant's tried to get around this requirement. Additionally, when you are seeking to gain statutory rights in the mark that you claim to be a parody, you have a big problem, since you cannot say that you are trying to evoke the mark, but there are no similarities. Parody is not a defense, it just another factor that is taken into consideration. In this case, the Board rejected the parody claim.

I would have liked to see them reach a decision on the dilution also, but . . . .

At 9:24 PM, Anonymous TTABeer said...

TTAB says what? Yes they are similar; of course they are similar; let me count the ways. They must be similar for parody to work. But confusing? I don't think so. Funny, yes; confusing, no. What am I missing? They engage in a perfunctory analysis to reach an inane conclusion, or something like that.

So, should have been next step, dilution. This is where I get confused. Registrant's mark is a beautiful parody, it hits Ralph where he lives. At the same time it teaches a younger generation to mock Polo; it tarnishes. How to reconcile the two in a commercial context?


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