Everyone has a favorite college T-shirt. Whether you throw it on to run errands or break it out for game day, we all have at least one shirt proudly displaying the college team’s logo—or trademark—we support.
As a result, collegiate trademark licensing is a big money-maker for colleges and universities, and a pending case involving Penn State and sports apparel retailer Vintage Brand can potentially disrupt that business. The case, The Pennsylvania State University v. Vintage Brand, LLC, currently pending trial in a Pennsylvania federal court, centers around whether a T-shirt manufacturer can use another’s trademark without permission.
What is a trademark and what is trademark infringement?
A trademark is any word, phrase, symbo or design that identifies and distinguishes the source of goods or services. The federal Lanham Act allows trademark owners to sue for trademark infringement when another’s use of their mark is likely to cause consumer confusion as to the source of the goods or as to the sponsorship or approval of the goods, among other things.
What is the Penn State v. Vintage Brand case, and why does it matter?
In The Pennsylvania State University v. Vintage Brand, LLC et al., Case No. 4:21-cv-01091, (M.D. Pa.), Penn State accused Vintage Brand of trademark infringement based on Vintage Brand’s use of Penn State’s trademarks on its shirts and other products.
Penn State claims longstanding trademark rights in several trademarks, including PENN STATE, THE PENNSYLVANIA STATE UNIVERSITY, and several other designs, including images of a Nittany Lion in several variations and the “Penn State Seal.” Penn State has longstanding federal registrations for most of its trademarks and the university licenses them to other entities to use on merchandise.
Its formal licensing program has been in place at least since 1983. According to Penn State, it limits and protects its marks to specific, approved uses and the university uses an exclusive licensing agent to help control the quality of any merchandise using its marks and to identify and stop counterfeiters.
Vintage Brand creates and sells T-shirts and other items featuring images, designs and words incorporating trademarks of numerous universities and professional sports teams. It focuses on “throwbacks” or vintage gear and describes its mission and purpose “to build out the world’s largest collection of historic sporting tickets, retro programs, and rare decals.” According to Vintage Brand, its designers create new composite images that include trademarks as part of a design and, except for limited circumstances, do not use the mark alone.
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Among other things, Penn State alleges that Vintage Brand is intentionally and willfully infringing on Penn State’s trademarks by selling this merchandise with its trademarks prominently featured and displayed and confusing consumers into believing that the products are associated with, endorsed or sponsored by the university.
Vintage Brand denies these allegations for several reasons, including that Penn State’s claims are barred because Vintage Brand’s use of the trademarks is only ornamental. Therefore, their use is not an infringing use.
What is “ornamental use?”
Earlier in the case, the court looked at this particular issue and described that a trademark would be merely ornamental if used solely to make a more attractive product or design. The court was quick to point out that just because “a design is pleasing to the eye and serves a decorative purpose does not mean that the design cannot also serve a trademark purpose.”
Vintage Brand argues that it is not using the marks to serve as a source identifier for the manufacturer of the goods themselves, and therefore, the use is merely ornamental to symbolize support for Penn State or create Penn State memorabilia.
On the other hand, Penn State argues that the use of trademarks on merchandise is a secondary source indicator that consumers view the marks as an indication of Penn State’s approval, affiliation, association, or sponsorship of the goods or manufacturer of the goods.
This case will likely hinge on whether Vintage Brand’s use of Penn State’s trademarks is merely ornamental. This will be for a jury to decide. The trial is scheduled to begin in November 2024.
Takeaways
On the one hand, if consumers are clear about the source, sponsorship, affiliation or endorsement of a particular good as required by section 1125(a) of the Lanham Act, then competitors should be able to compete in the marketplace freely.
On the other hand, if third parties can take registered trademarks and create composite images prominently featuring the trademarks, and sell them on competing products, then it could potentially open up a floodgate of unauthorized trademark uses. This would make it hard for brand owners—in this case, colleges and universities—to generate licensing revenue and also to enforce their marks and maintain control over the quality of goods and services bearing their marks.
Regardless of what is decided at trial this fall, it seems likely this case will be appealed, and this won’t be the end. Stay tuned.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney. Views expressed are those of the author and are not to be attributed to Marshall, Gerstein & Borun LLP or any of its former, present, or future clients.
