No-Go on the Logo: Jury Finds in Favor of Penn State on Willful Trademark Infringement Claims

In a closely watched case involving merchandise bearing university imagery, logos, and registered trademarks, on November 19, 2024, a jury found that both the seller and the manufacturer willfully infringed Penn State's trademarks in The Pennsylvania State University v. Vintage Brand, LLC, et al., Case No. 21-01091 (M.D. Pa.). The jury awarded $28,000 in compensatory damages.

Vintage Brand, an online clothing retailer, was selling merchandise on its website that featured Penn State's logos and other images of lions and references to Penn State's history. Use of the name, logos, and images was not authorized by Penn State. Penn State sued both Vintage Brand, the online retailer, and Sportswear Inc., the manufacturer of the merchandise, asserting trademark infringement, unfair competition, and false designation of origin pursuant to the Lanham Act, and common law trademark infringement and unfair competition pursuant to Pennsylvania law.

Vintage Brand and Sportswear's defenses garnered attention. They claimed that use of the logos on merchandise was not trademark use, i.e.,did not indicate a source, but was merely ornamental. Moreover, they claimed there could be no confusion given that the website where the merchandise was sold featured a disclaimer stating that it is not affiliated with, nor sponsored by, the universities and teams represented on its merchandise. 

The ornamental use defense was the subject of extensive briefing and motion practice. Ultimately, the court denied Penn State's motion to dismiss the issue of whether consumers view the logos as merely ornamental, leaving the issue for the jury to consider. At the conclusion of Penn State's case at trial, Sportswear—the manufacturer—moved for judgment as a matter of law on the direct infringement claim against it, which the court granted on November 15, 2024. Penn State asked the court to reconsider, which it did. On November 19, 2024, the court reversed its prior holding. The court found that unique facts and circumstances supported its decision, noting that "Sportswear manufactures the goods on demand, affixes the marks, and ships them directly to customers." Further, "[r]egardless of whether a defendant's manufacture or shipment of goods featuring a protected mark could support direct trademark infringement in isolation, a reasonable juror could find that they can do so together" such that Sportswear can be liable for direct infringement.

The jury rendered a verdict in Penn State's favor, finding all of the marks at issue were infringed, and awarded damages of $28,000. Vintage Brand's manufacturer Sportswear Inc. was also found liable despite the fact it did not control Vintage Brand's website. The verdict is seen as a victory for colleges and their official licensees, and as a cautionary tale for clothing retailers and manufacturers that may seek to monetize the use of a university's marks without a license on apparel and other merchandise.