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 PRL USA Holdings Inc. v. Thread Pit, Inc., Cancellation No. 92047436 (May 14, 2012) [not precedential].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.