January 7, 2025

A Losing (Trademark) Defense Against Penn State

I talk a lot about trademarks here, but do you know exactly what one is? Well, according to the United States Trademark Office, a trademark is something that “Identifies the source of your goods or services.” Put another way, it’s anything — a logo, a word, a swoosh — that tells buyers who made the merchandise on which it appears. 

So, who made this stuff?

Penn State, right? No! These items were sold by a company called Vintage Brand, which insists it has every right to do so despite not being affiliated in any way with the university in State College, Pennsylvania.

Next (and obvious) question: WTF?!

Vintage Brand claimed its use of these designs and others, which were taken from (appropriately) vintage Penn State materials featuring the school’s Nittany Lion trademark, didn’t infringe on Penn State’s trademarks for a couple of reasons. First, it claimed that these Penn State designs were just there for decoration; they weren’t intended to inform consumers that the apparel and accessories were made and sold by Penn State. Vintage Brand further asserted these designs were merely functional, because they allowed people to express support for or affiliation with Penn State, and thus were not a trademark use. Finally, Vintage Brand said there was no way consumers would be confused (the central inquiry in trademark infringement) as to who made the merch because Vintage Brand’s website included disclaimers saying that it was not affiliated with Penn State (sure, everybody reads the fine print). 

Unsurprisingly, Penn State did not see things this way and, in 2021 it sued Vintage Brand for trademark infringement, accusing the company of being a “serial infringer,” and seller of “counterfeit” goods. Penn State lawyers argued that consumers would mistake the fakes for official Penn State merchandise, diluting their trademarks and reducing their value and exclusivity, while also taking revenue that should have otherwise gone to the university. Other schools, including Purdue and Stanford, also sued on similar grounds, but Penn State’s case was the first to go to trial. 

As the case progressed, Vintage Brand continued to insist its use of Penn State’s marks was permissible because the designs were solely ornamental and functional. While they did not dispute that their merchandise included properly registered trademarks that belong to Penn State, Vintage Brand said its designs were independently recreated from vintage artwork to celebrate nostalgia and history and that any resemblance between its designs and Penn State’s trademarks was coincidental and not likely to cause confusion among consumers. 

In response, Penn State pointed out that if consumers couldn’t tell what products originated with Penn State and what products originated with Vintage Brand (or someone else) that was, pretty clearly, trademark infringement. 

The judge allowed Vintage Brand’s defenses to stand and the case was tried in front of a jury in November, 2024. The jury found in favor of Penn State and, while they only awarded the school a little more than $25,000 in damages, the victory was far more valuable in the continued trademark protection it extended to Penn State and other universities that sell branded merchandise. 

Seems weird there was even enough here for a judge to send the case to a jury, right? Well, there’s actually some precedent for companies successfully defending similar trademark infringement claims. This dates back to the 1970s when the National Hockey League sued a company called Dallas Cap & Emblem for selling knockoff patches of NHL team logos to sporting goods stores. Dallas Cap claimed that the emblems, when attached to clothing by consumers, were functional and served no trademark purpose. The District Court in that case agreed. Even though the District Court’s decision was overturned, the idea that logos can be functional and not identify the source of goods has continued to crop up. But, maybe Penn State’s victory here will put an end to this defense.