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Sometimes it pays just to be thankful, and if you’re in any rugby-related business you might be thankful for the perseverance of Jim Carlberg of Rugby America and Liquid Rugby.

It’s been a little over a year now since Carlberg’s battle with apparel monolith Polo Ralph Lauren (PRL) came to a head, but it’s a story worth remembering in case it (inevitable) rears its head again. 

It was 2004 when Polo opened their first Rugby stores. The stores used the name because the rugby shirt has long been a big part of the Polo line. Of course Polo doesn’t have exclusive rights on a sport almost 200 years old … but they tried.

Within months Polo decided to take steps to garner exclusive rights to the word Rugby in apparel sales. They sent a cease and desist letter to Rugby America, telling them to stop selling products under the titles Rugby Girl, Rugby Since 1823, and others. Polo Ralph Lauren had already sued the United States Polo Association for trademark infringement (arguing that the sport’s governing body should not be allowed to use a polo player on a horse as their logo, because PRL uses a horse), and they successfully prevented Old Navy from a rugby-related ad campaign, so Carlberg, who owns Rugby America and Liquid Rugby, knew they were serious.

Over the years the adversaries engaged each other. Barbarians Rugby Supply joined as defendants, and despite PRL’s massive legal budget, they held firm.

Polo seemed to try to win these trademark cases by flooding the system with money. The more any legal action cost, the less likely a defendant would be to stick it out. The US Polo Association eventually won three out of four arguments – they USPA was forced to change one logo. Old Navy simply looked at their legal bill and settled.

But Carlberg et al. couldn’t afford to settle or give up. Had they done so, it is quite possible that any rugby-related retailer or apparel seller would be prevented from using the word rugby in a trademark.

“No individual, family or small company should go through what we did, emotionally, financially and business wise. They drug me, my wife, my kids and my company through hell,” says Carlberg.

In the end, Carlberg and Barbarians, both, ultimately, represented by attorney Mark Weimelt, prevailed. The defendants ended up suing Polo for fraud related to their original trademark application (they were looking for attorneys fees, which they didn’t get). RPL claimed the trademark for Rugby on a wide variety of products and businesses, even products they didn’t make yet, and didn’t seem to have plans to make. That was a Patent and Trademark no-no – you have to at least make the thing you want to put the trademark on, and Polo Ralph Lauren did not for many of the items on their list.

The damage had been done.

PRL attorneys stated in court that they were disavowing any claims they made in their original cease and desist letters to Carlberg, and were backing away from the case altogether.

The US District Court of Southern New York dismissed all of Polo’s claims, and they did it with prejudice, which means they can never sue Carlberg, Rugby America, Liquid Rugby or Barbarian on this matter again.

While that doesn’t mean any other rugby-related retailer is immune from being sued by Polo Ralph Lauren, it does make it a whole lot harder for the retailing monolith.

“If we didn't hold our ground on our brands, PRL would own the word RUGBY,” says Carlberg. “No other person or company would ever be able to brand merchandise with the word rugby on it, which is basically a monopoly.  With the way our sport is growing in the US, Ralph Lauren would have secured himself as the sport. No one would ever be able to sell to the retail world, anything that has to do with our sport. We stood firm, won our case, were awarded our trademarks, and can sell rugby branded apparel. Plus along the lines, we established many ‘legal time stamps’ of use of our brands from 1981 to present day.”

And just to make sure, Carlberg’s Illinois-basedcompany received confirmation from the US Patent and Trademark Office on a trademark for Rugby Girl on June 10, 2010 and Rugby Since 1823 on December 21, 2010.

Those notifications were the victory lap for the company.

“I've spent 29 years designing and printing rugby T-shirts,” said Carlberg. “I'm now retired from playing. I coach high school and men's club rugby. I have three sons who all play rugby and I referee. No one ever goes into business only wanting to get so big, only wanting to sell so many ‘widgets,’ or wanting to be limited to who they can sell to. This is America, right? I always wanted to spread the word of our sport through our brands and designs.

“You will not believe what being in a lawsuit of this size can do to you. You can't borrow money; you can't grow. All expansion efforts had to be put on hold because anyone in the retail world who knew about the lawsuit wouldn't touch me with a 100-mile-long pole. Employees quit because they are unsure of the company's future. The domino effect is like something you have never seen.

“And then there is the mental aspect. I don't know how many times I almost gave up and started looking for a job, thinking this effort was ridiculous. Knowing in the back of my mind that I was right and that no one should be able to trademark the name of a sport, monopolize a sport or say who we can or can't sell to.”

 

Comments

Not so fast! This story has no end. World Rugby has picked up where Ralph Lauren gave up. A supposed non-profit is now going after every trademark registration claiming it causes "confusion" with their brand. It doesn't matter what trademark is, or that the word "rugby" is generic and is open for registration. This is public knowledge and you can see at uspto.gov how any trademark registrant using the word "Rugby", no matter what words go in front of it or behind it, that business owner immediately earns a legal battle with World Rugby. World Rugby knows they are wrong and there is no cause for confusion with their brand in most cases, but their goal is to own the trademark landscape by throwing their lawyers, with unlimited non-profit funds, after these small business owners and bully them into submission. Most business owners who see the giant who is battling them legally, just plainly abandon their trademark registrations...having been bullied into submission. This is not the spirit of rugby. And, most of these rugby trademarks are registered by real rugby players. World Rugby would be wise to reconsider such bullying tactics, knowing that picking on a smaller opponent rugger is not always a good idea, and you will be tip-tackled some day by the one you pick on. Props to Jim Carlberg for the battle you won, but the war still rages on. If you donate to World Rugby thinking it is a good cause, you may want to reconsider knowing this is going on, where they are bullying small business owner/rugby players with these kind of tactics.
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I was coaching the University of Utah, but visiting my hometown of Chicago when RL opened the first Rugby store I had ever seen. I have to admit was fun to see a lot of memorabilia decorating the store but surprised to see it included pictures of my Utah boys playing BYU. I didn't recall any correspondence from Ralph and Company requesting permission; but instead pointed this out and asked the store manager if RL contributed to USAR. The fashionable lad had no idea what I meant. I wrote RL and suggested they sponsor USAR, but never got the courtesy of a reply. Just lots of catalogs of clothes that would never fit.
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