Verdict in trademark case could be legal test for sports merchandising

Penn State University has won a closely watched trademark fight over an online retailer’s use of its vintage sports logos and images.

A Pennsylvania jury awarded Penn State $28,000 in damages on Wednesday over products made and sold by Nashville, Tennessee-based Vintage Brand and Seattle-based print-on-demand company Prep Sportswear, two firms co-founded by former minor league baseball player Chad Hartvigson.

Penn State accused them of selling “counterfeit” clothing and accessories, while the defendants said their website makes clear they are not affiliated with the university.

At least a dozen other schools have sued the defendants on similar grounds, including Purdue University, Stanford and UCLA, Penn State said in its 2021 lawsuit. However, the Penn State case was the first to go to trial and is seen by some as a test case in the sports merchandising industry.

“It addresses an important issue with trademark law—whether or not the mark owner is able to prevent third parties from using its marks on T-shirts and paraphernalia without permission,” said Tiffany Gehrke, a trademark lawyer in Chicago who was not involved in the case.

The verdict, she said, maintains the status quo, while a victory for Vintage Brand “could have shaken things up.” It followed a six-day trial in federal court in Williamsport, Pennsylvania, overseen by Chief U.S. District Judge Matthew W. Brann.

Defense lawyers declined to comment on the verdict and whether their clients planned to appeal.

Vintage Brand often markets “throwback” merchandise using “historical” images related to college sports teams, often taken from old sports memorabilia. The company maintained that those images are in the public domain as documented history and ought to be viewed as lawful under trademark law.

Penn State, in a statement, called its trademarks “critical” to the school’s brand, and said it was grateful for the verdict.

“The university appreciates this result as it relates to the many hundreds of licensees with whom the university works and who go through the appropriate processes to use Penn State’s trademarks,” the statement said.

Founded in 1855, Penn State adopted the Nittany Lion as its mascot in 1904 and has been using various images of the animal, along with the school’s seal and other logos, for decades, the lawsuit said. The school now has more than 100,000 students at 24 campuses.