Does the LIFEGUARD mark need saving?

1 09 2009

By Seth Chadab

              Lifeguard Licensing Corp., owner of federally registered trademarks for LIFEGUARD and LIFE GUARD, is suing Polo Ralph Lauren in federal court for trademark infringement and unfair competition, and deceptive trade acts and practices under New York law.  The complaint, filed in the United States District Court for the Southern District  of New York (S.D.N.Y.) on August 12, 2009, alleges that Lifeguard’s President, Mr. Ruben Azrak, discovered the Polo-branded clothing while shopping in Macy’s this past June.  Polo’s clothing line includes shirts and sweatshirts featuring “Life Guard,” as well as a red-cross design. 

             Lifeguard claims that they have continuously used and licensed their marks for swim trunks as far back as 1937, and since 1993 for other clothing.  The company alleges that Polo’s merchandise undermines the value of Lifeguard’s “lucrative licensing agreements” with clothing distributors, Warnaco and Popularity Products.  The website for Popularity Products lists an extensive line of t-shirts and other clothing for sale that commonly serves as uniforms for lifeguards. 

             While it appears that Lifeguard may have a legitimate claim of infringement, Polo will undoubtedly challenge to the validity of Lifeguard’s marks for genericness.  This “defense” will be particularly appealing to Polo because it is available to a party beyond the five-year cancellation period. As Justice Brandeis wrote in Kellogg Co. v. National Biscuit Co. 305 U.S. 111 (1938), the owner of the challenged mark “…must show that the primary significance of the term in the minds of the consuming public is not the product but the producer.  This leaves Lifeguard Licensing Corp. in a tricky situation:  either drop the complaint against Polo and possibly lose control over their marks (including licenses), or be prepared to defend their marks’ validity against a genericide attack.  Neither prospect is particularly appealing to a company who simply is seeking to protect their registered marks and the value of their licenses to third-party vendors.