A Judge Just Risked Penn State’s Trademarks — And Those of Other Schools

It’s not uncommon to see sports fans representing their favorite collegiate teams by wearing their merchandise. This is particularly clear on Saturdays when Penn State fans gather at Beaver Stadium — typically sporting their favorite Pozniak Lion attire. There’s currently a lawsuit over Penn State’s trademarks due to what the college sees as trademark infringement, but the real story involves a judge’s decision regarding a countersuit by the alleged infringer.

Penn State’s Trademarks May Be at Risk

If you were to visit the online retail store of Vintage Brand, you may think you’ve stumbled across an officially licensed NCAA store. The website is chock full of what appears to be official collegiate sports attire. In reality, Vintage Brand has no connection to any of the teams its clothing represents. This is why Penn State — along with UCLA, Arizona State, Oregon, Purdue, Arizona, Washington, Utah and USC — are all currently engaged in trademark litigation against the company.

To be clear, these schools believe the infringing behavior is about as obvious as it could be. Even when just looking at the Penn State-related attire, you’ll see the school’s mascot, logo and name emblazoned across various clothing types. The case may seem like a slam dunk, but that assumption took quite a hit when a judge ruled in favor of Vintage Brand after Penn State requested that a claim in the company’s countersuit be dismissed.

In addition to asserting they have the right to sell seemingly infringing merchandise — claiming public domain rights and ornamental usage — Vintage Brand also countersued Penn State in order to have many of their trademarks canceled. They claim that Penn State’s long-time logos and intellectual property have entered the public domain. Such a claim could prove disastrous for sports teams if upheld in court, and it appears as if one judge may be considering it.

A Theoretical Approach to the Law

On July 14, 2022, Judge Matthew Brann — a graduate of Penn State Dickinson Law — refused to dismiss the counterclaim from Vintage Brand. Even though Vintage Brand is using Penn State imagery without their permission — and the school has clearly maintained usage of such imagery over the years — the judge decided that the counterclaim should not be dismissed on the law alone. In his decision, there was quite a bit of theoretical discussion.

In fact, he directly stated that a symbol doesn’t identify the source of goods merely because consumers associate it with a brand. He went on to claim that the “modern trademark regime has struggled” in dealing with the associations created by trademarks. Brann even stressed that intellectual property laws have gone beyond their intended purpose. On top of that, he went as far as to question how we currently deal with likelihood of confusion issues.

The judge stated that the law should have the goal of correcting consumers who think that an item featuring a brand’s logo is always licensed by the brand itself. He also said that future questions of consumer confusion should center on whether said consumers believe the Penn State trademark can only be used with the school’s permission. Essentially, it seems he wants to give average folks a crash course in intellectual property law. To be clear, if such claims survive in court, it could very well upend the entire trademark protection system that we currently know.

Major Implications for Other Sports Teams

If Vintage Brand is successful in its counterclaim, it would do more than simply remove many of the protections provided by Penn State’s trademarks. By proxy, it could weaken intellectual property protections for all collegiate sports teams — and potentially even professional sports teams. If a company can use logos and other representative symbols owned by schools with a mere claim that historic recognition equates to the public domain, most major universities would be in trouble.

The important thing to note here is that Judge Brann’s ruling does not mean that Vintage Brand will be successful in its attempt to cancel Penn State’s trademarks. It merely means that he believes the questions raised by the counterclaims warrant further review. Judging by the statements made in his decision, this is not a surprising outcome. Still, it was no doubt a surprise to many in the sporting world.

There’s no real way to predict how this plays out, and Penn State will almost certainly appeal any ruling against them to the U.S. Court of Appeals for the Third Circuit. It’s too early to predict whether this will happen, however, since we don’t know how the current court will decide on the issues.