By: Claire E. Reynolds-Peterson, Ph.D. & Teige P. Sheehan, Esq., Ph.D.
A recent jury trial signals a possible important turning point in trademark holders’ ability to police others’ use of their marks even if such use is not necessarily use “as a trademark” per se.
The Federal District Court for the Middle District of Pennsylvania released its most recent decision in the protracted litigation of The Pennsylvania State University (“Penn State”) v. Vintage Brand on June 25, 2025, after the jury returned a verdict of willful infringement by Vintage Brand. Defendant Vintage Brand runs an online store selling a wide variety of memorabilia featuring designs that incorporate the trademarks of Penn State.
This was the first of several similar infringement suits by educational institutions against the defendant to reach a verdict. The court’s first decision in this case made a splash in 2022 when it questioned the control so-called “cultural institutions,” such as universities and sports teams, have over uses of their trademarks. Although Vintage Brand has requested a new trial, this verdict and opinion is optimistic for the rights of trademarks holders to police and protect the use of their marks.
The court opinions issued in this litigation all highlight a decades-long tug-of-war between institutions attempting to protect their reputations and vendors attempting to compete in the marketing of memorabilia to fans. Trademark law protects “source identifying marks,” which allow consumers to easily and accurately identify the source of goods and services. Preventing competitors from imitating marks protects both the producer and the consumer from counterfeit goods, encouraging a transparent and competitive marketplace where consumers can easily recognize the source of goods and make informed purchase decisions based on the reputation of that source.
Institutions like Penn State sit in a unique and difficult position with respect to trademark law because they only directly produce a limited range of goods and services which produce significant goodwill and social cachet. Consumers want to purchase merchandise representing the university, which is necessarily manufactured by other companies that produce physical goods. Officially licensed merchandise bearing Penn State’s registered marks must meet the university’s guidelines for product quality and use of the university’s registered marks on those conforming products is a valid indicator of secondary source.
However, courts have differed substantially in the treatment of companies’ sales of competing unlicensed memorabilia bearing protected trademarks. That is, to obtain protection of a trademark, it must be used in a way that is consistent with a customary manner of source-identification, such as on a tag attached to a shirt, a small logo on the shirt’s breast, etc. Some uses are not considered as serving such a source-identifying function, such as a large symbol or design full across the front of a shirt. The U.S. Patent and Trademark Office traditionally refuses registration of marks used only in the latter fashion on the ground that such use of a mark is “ornamental,” as a decoration, not as a mark signifying source or origin of the product.
In that regard, some examples of Vintage Brand’s use of Penn State’s marks introduced as evidence at trial are pictured below (uses which, for a trademark owner, might be considered merely “ornamental” uses and not sufficient to satisfy the requirement that, to warrant legal protection, trademarks must be used in a source-identifying manner):
Here, Vintage Brand argued that because a mark owner cannot obtain protection of a mark used only in an ornamental fashion, then Vintage Brand should be able to use another’s mark in a strictly ornamental fashion as well, because consumers would not mistake such use as indicating that the goods are from the mark owner. In contrast, Penn State argued that Vintage Brand’s use of its trademarks inherently raised a mental association between the product and the university, putting its reputation and goodwill on the line, especially for low-quality goods.
Importantly, here the court disagreed with Vintage Brand. Thus, whether or not the way Vintage Brand used the marks would have entitled Vintage Brand to be able to protect them (had they been Vintage Brand’s own marks), its use was sufficient as a matter of law to support a finding that Vintage Brand caused confusion as to the source of the goods and was therefore liable for infringing Penn State’s trademark rights.
Furthermore, in its most recent opinion issued in the case, the court embraced the jury’s verdict that Vintage Brand infringed Penn State’s rights by granting Penn State’s request for a permanent injunction, forbidding Vintage Brand’s further sales of products bearing Penn State’s marks. The court noted that while it rejected a per se approach to the issues of source-identification and confusion, leaving a factual inquiry that can include consideration of, but is not strictly determined by, the ornamentality of a third parties’ use of a protected mark, it would follow legal precedents which permits drawing inferences on behalf of Penn State based on a finding of willful infringement. This included the inference that continuing infringing activities would constitute irreparable harm to Penn State’s reputation and consumer goodwill. The Court noted that an injunction was appropriate and rejected the alternative of permitting continued sales contingent Vintage Brand providing a disclaimer informing consumers of no affiliation with Penn State so as to dispel any mistaken associations, as Vintage Brand had sought.
Whether an appeal will provide a higher-level court the opportunity to issue a precedential opinion on the questions raised by this case remains to be seen.
Claire E. Reynolds-Peterson, Ph.D., is a law clerk and Teige P. Sheehan, Esq., Ph.D. is a partner with Heslin Rothenberg Farley & Mesiti P.C.