Introduction

Good morning, Mr. Chairman.

My name is Sherry Jetter, and I am the Vice President responsible for intellectual property matters for the Polo Ralph Lauren Corporation (“Polo Ralph Lauren”).

We appreciate the opportunity to appear before the House Subcommittee on Courts, the Internet, and Intellectual Property to discuss the critical importance of the “Polo” family of trademarks and brands which have come to define Polo Ralph Lauren over a period of nearly 35 years.

I also want to take this opportunity to express our company’s strong support for legislation establishing that likelihood of dilution and not actual dilution is the proper standard for finding dilution under the Federal Trademark Dilution Act of 1995 (“FTDA”).[1]

I want you to know that we at Polo Ralph Lauren like to think of our company as a uniquely American enterprise. Our approach to fashion as lifestyle is American in origin and style. As you may be aware, Polo Ralph Lauren has been inspired by the significance and beauty of our American flag and has interpreted and used it in many of its designs. Indeed, we have built a stylistic association with the flag and the American values the flag represents. This is underscored by Polo Ralph Lauren’s recent contribution of over $14 million to the Star-Spangled Banner Preservation Project. That project supports the preservation of the tattered flag that flew over Fort McHenry in 1814 and provided the inspiration for Francis Scott Key as he wrote what has become our national anthem.

Polo Ralph Lauren is proud of its association with American values and believes that no value is more fundamentally American than the simple concept of property. For Polo Ralph Lauren and many other American companies, the most valuable piece of property that they own is their good name, or as we say in our industry, their brand.

I am here today to explain to you how essential the protection of the Polo family of brands and trademarks is to my company.

History and Value of the Polo Family of Brands

For nearly 35 years, Polo Ralph Lauren’s reputation and distinctive image have been developed across an expanding number of products, brands and international markets. We are a leader in the design, marketing and distribution of premium lifestyle products. Our brands, which include "Polo,” “Polo by Ralph Lauren,” “Ralph Lauren,” “Polo Sport,” “Polo Jeans Co.” and others constitute one of the world’s most widely recognized families of consumer names. We believe that, under the direction of Ralph Lauren – our founder, Chairman and Chief Executive Officer, and an internationally renowned designer – Polo Ralph Lauren has greatly influenced the manner in which people dress and reflects an American perspective and lifestyle.

Today the Polo name is associated with apparel of nearly every kind, accessories, fragrance products and home furnishings.

Polo Ralph Lauren is a large company today. Our products are sold throughout the United States and the world. In fiscal year 2001, Polo Ralph Lauren had net sales of almost $4 billion dollars worldwide – every dollar of which is based upon a customer purchasing a product that bears at least one of the Polo family trademarks.

The vision, tenacity and hard work of Mr. Lauren and others at Polo Ralph Lauren have created a widely recognized and valuable property in the Polo family of brands and trademarks. Polo Ralph Lauren’s commitment to maintain, preserve, and enhance its brands, is evidenced by the company’s annual expenditure of millions of dollars advertising those brands. And, each year, we go to enormous lengths to enforce our trademark rights and protect our good name.

In fiscal year 2001 alone, the company spent in excess of $88 million dollars on advertising.

The Polo brands and family of trademarks are the company’s most valuable assets. Not surprisingly, because of our success, Polo Ralph Lauren’s products have been the subject of counterfeiting and infringement. We have established a global and in depth enforcement program that includes the use of outside investigators, local law enforcement, federal enforcement agencies like United States Customs Service and the FBI and an in-house department dedicated to monitoring a network of sources and contacts that inform us of potentially harmful uses of the Polo name. When necessary, Polo Ralph Lauren engages in litigation to protect the Polo brands. The importance of our trademarks is further demonstrated by the fact that we have joined together with other fashion trademark holders in joint civil and criminal actions to protect our trademarks.

In light of the company’s wide success, the Polo brands are surely famous in any sense that word can be used – including the legal definition of the word “famous” as found in our trademark laws. Numerous courts have held that Polo Ralph Lauren owns “famous” marks for the purpose of the dilution statute.[2] In fact, in litigation involving Polo trademarks, even our adversaries have conceded the fame of the Polo name and Polo trademarks.

Importance of the Dilution Act and Examples
of Dilution of the Polo Family of Brands

Because of the fame of our family of trademarks and brands, Polo Ralph Lauren was extremely grateful for the passage of the FTDA. It is a valuable and much-needed law for the protection of our intellectual property.

Unfortunately, Polo Ralph Lauren has been an all-too-frequent target of those who attempt to benefit from our good name, diluting our famous brands in the process. In 1998, at Polo Ralph Lauren’s request, a federal court in Houston, Texas enjoined the use of our name and mark on a business called “The Polo Club.” The court referred to The Polo Club as “an adult entertainment business.” In fact, it was what is commonly known as a house of ill-repute. Polo Ralph Lauren sought and was granted this relief under the FTDA prior to the establishment in the Fifth Circuit of the actual dilution standard. Others have diluted the Polo brands by putting them on massage parlors, limousine services and cleaners.

Polo Ralph Lauren is extremely grateful for the protection afforded by the FTDA. Unfortunately, the protection afforded by the FTDA has not always been sufficient. In 1997, a company bought a specialty publication dedicated to the equestrian sport of polo, including its trademark, and converted it into a glossy fashion and lifestyle magazine titled “Polo”. The magazine went from advertising equestrian–related products to putting models and images associated with Polo Ralph Lauren on its cover and in its pages. These changes were made to exploit our famous Polo brand and had the effect of diluting its value. Naturally, we sued under the FTDA.

While this dilution of our famous trademark is the precise situation the FTDA was intended to remedy, we were unable to prevail under that statute. The district court specifically found that while we would have prevailed under a likelihood of dilution standard, we failed to satisfy the more stringent actual dilution standard and we were ultimately denied relief under the FTDA. The court, in effect, said that we had to wait until our brand had been irreparably harmed before we could be granted relief. Given this experience it could not be more clear to us that the dilution standard needs to be clarified. Indeed, if the actual dilution standard had been in effect in the house of ill repute case, we might not have prevailed there either.

Support for the Legislation

It is for this reason that I come before you to support an amendment to the Trademark Act of 1946 (“Lanham Act”).[3] We must insure that what happened to Polo Ralph Lauren in the cases I have described does not happen to others across the country. The FTDA was designed to protect famous trademarks such as ours. We believe that our name, our property, is vulnerable absent the protection which would result from clearly establishing that the appropriate standard under the FTDA is likelihood of dilution rather than actual dilution.

The Polo name is the root of all of our trademarks and is the heart of our company. We cannot afford to fail to vigilantly protect the Polo brand. This trademark is more important to the success of our company than any distributor, licensee, factory or store. It is without question the single most important piece of property owned by Polo Ralph Lauren.

It has been said that there is a magic behind the Polo brand and its family of trademarks and brands. Over the years Mr. Lauren and his team have built this magic from a single men’s tie to an array of consumer products defining a distinct lifestyle. When others are afforded an unearned advantage by using the good will we have created in these brands and trademarks, we believe it is theft. And when others are allowed to tarnish our good name and public acceptance that we have cultivated and nurtured, we believe it is vandalism. Protecting our family of brands and trademarks is the highest corporate priority.

This amendment to the FTDA is necessary for the protection of our property and the property of other famous brand owners.

Conclusion

Thank you Mr. Chairman, for the opportunity to explain the importance of the Polo name and its trademarks to Polo Ralph Lauren and our company’s view that an amendment to the Lanham Act to clarify that likelihood of dilution is the appropriate standard is critically important to all owners of a famous trademark.

[2] See, e.g., Polo Ralph Lauren L.P. v. Schuman, No. Civ.A. H97-1855 1988 WL 110059, at *2 (S.D. Tex. Feb. 9, 1998).