The United States Patent and Trademark Office Trademark Trial and Appeal Board recently put Ralph Lauren’s famous polo player back on his horse in granting the petition of PRL USA Holdings, Inc., a Polo Ralph Lauren Corporation subsidiary (“PRL”) to cancel the trademark registration of Thread Pit, Inc. (“Thread Pit”).
Thread Pit registered a trademark, for “t-shirts and collared polo shirts,” that was similar to the famous Polo Ralph Lauren (“Polo”) mark of a polo player riding a horse, mallet in hand. PRL filed a petition to cancel Thread Pit’s registration based on Sections 2(d) (Likelihood of Confusion) and 43(c) (Dilution) of the Lanham Act. In its defense, Thread Pit argued that its mark was protected on the grounds that it constituted a parody of the iconic Polo mark.
To assess confusion, the Board considered the various DuPont factors (In re E.I. du Pont de Nemours and Co., 476 F.2d 1357 (C.C.P.A. 1973)) and concluded that confusion between the two marks was likely. Of major impact was the Board’s threshold finding that the PRL mark was famous. The Board also found for PRL on other factors, noting that both parties had sought to register the marks for use in connection with similar goods, including t-shirts, and that the goods would likely be sold in the same trade channels and to the same types of consumers. The Board further determined that the similarity between the two marks outweighed their differences. In particular, because the marks at issue were typically only used as part of a small logo in the upper corner of the t-shirts, the average purchaser would have to closely inspect the goods to notice that the rider in Thread Pit’s mark was falling off the horse.
As for Thread Pit’s parody argument, the Board said that “parody is not a defense if the marks are otherwise confusingly similar,” which in this case they were. Furthermore, it was necessary for the trademark to parody the product or company symbolized by the trademark in order to be entitled to the parody defense. Thread Pit did not use the Polo mark for this purpose, but rather used it to parody the lifestyle of the societal elite as embodied by the sport of polo, which is perceived to be a sport reserved for the elites. The Board rejected the defense accordingly, explaining that “parodying a lifestyle is not a parody of a trademark.” As a result, Thread Pit’s trademark registration was cancelled. Because it found likely confusion under Section 2(d), the Board did not consider PRL’s 43(c) dilution claim.
The Board’s decision does not serve as a binding precedent over any other case before the Board, but could be appealed to the Court of Appeals for the Federal Circuit.