The Pennsylvania State University v. Vintage Brand, LLC
Filing
194
MEMORANDUM (Order to follow as separate docket entry) re: 93 MOTION to Exclude Expert Witness Testimony filed by Vintage Brand, LLC, Chad Hartvigson, Michelle Young, Erik Hartvigson, Sportswear Inc. d/b/a Prep Sportswear, 95 MOTION in Limine filed by The Pennsylvania State University, 135 MOTION to Strike filed by Vintage Brand, LLC, 141 MOTION to Strike Portions of the Declaration of Chad Hartvigson [116-2] filed by The Pennsyl vania State University, 159 MOTION to Strike Portions of the Supplemental Declaration of Chad Hartvigson filed by The Pennsylvania State University, 110 MOTION for Summary Judgment filed by Vintage Brand, LLC, and 113 MOTION for Partial Summary Judgment filed by The Pennsylvania State University. Signed by Chief Judge Matthew W. Brann on 2/6/2024. (jr)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF PENNSYLVANIA
THE PENNSYLVANIA STATE
UNIVERSITY,
Plaintiff,
No. 4:21-CV-01091
(Chief Judge Brann)
v.
VINTAGE BRAND, LLC;
SPORTSWEAR, INC., d/b/a PREP
SPORTSWEAR; CHAD
HARTVIGSON; ERIK
HARTVIGSON; and MICHELLE
YOUNG,
Defendants.
MEMORANDUM OPINION
FEBRUARY 6, 2024
Vintage Brand, LLC (“Vintage Brand”) produces goods featuring historical
sports images that feature various universities, including The Pennsylvania State
University (“Penn State”). Penn State challenges Vintage Brand’s use of the
historical images on the goods that it produces, as many of those images incorporate
in some form one or more of Penn State’s trademarks. Although the historical images
indisputably incorporate Penn State trademarks, the images are visually distinct from
those trademarks, and Vintage Brand provides numerous disclaimers on its website
that disavow affiliation with any university. These facts mean that many of Penn
State’s claims fail. However, the existence of dueling facts regarding likelihood of
confusion mean that Vintage Brand’s trademark infringement claim must proceed to
trial.
I.
BACKGROUND
A.
Underlying Facts1
Penn State is a public research university located in State College, Centre
County, Pennsylvania.2 Like many colleges and universities, it sells merchandise
and licenses others to sell merchandise in stores and online.3 It promotes its goods
and services through a variety of images and text that it claims as trademarks.4 Such
examples are the text: “THE PENNSYLVANIA STATE UNIVERSITY,” “TPSU,”
and “PENN STATE” 5 and images like the following:
1
2
3
4
5
Unless otherwise noted, the following facts are undisputed.
Doc. 138 ¶ 1.
Id. ¶ 68.
Id. ¶ 6.
Id. ¶ 7.
2
“S Lion Logo”6
“Penn State Seal”7
“Nittany Lion Rock Design”9
“Pozniak Lion Logo”8
“Nittany Lion Frankfurter Design”10
Collectively, the Court terms the images and text the “Penn State Marks.”
Penn State owns trademark registrations in the Penn State Marks and uses them on
a variety of merchandise, but Vintage Brand disputes the contexts in which those
marks are valid.11 Penn State licenses the Penn State Marks to other entities to use
on merchandise.12 It has a formal licensing program that it began in 1983.13 To this
6
7
8
9
10
11
12
13
Id. ¶¶ 38-41.
Id. ¶¶ 43-49.
Id. ¶¶ 30-37.
Id. ¶¶ 20-29
Id.
See id. ¶¶ 8-41. Vintage Brand admits that the “PENN STATE,” “TPSU,” “Lion Shrine Logo,”
and “Penn State Seal” marks are incontestable. Id. ¶¶ 10, 16, 26, 44. There are two “Penn State
Seal” marks that Penn State owns and purports to use. See id. ¶ 47.
Id. ¶ 55.
Id. ¶ 56.
3
day, it continues to create and execute procedures for the purpose of limiting the use
of its claimed marks.14 Vintage Brand disputes that Penn State adheres to its own
procedures, however.15
Penn State has an exclusive licensing agent, the Collegiate Licensing
Company (“CLC”) to operate its licensing program.16 “CLC facilitates agreements
between [Penn State] and potential licensees, helps review and evaluate prospective
licensees’ merchandise to determine quality, and helps enforce Penn State’s rights
against counterfeiters.”17 Penn State also puts out standards for use of the Penn State
Marks.18
Vintage Brand is a Washington-based corporation whose three members are
co-Defendants Chad Hartvigson, Erik Hartvigson, and Michelle Young.19
Sportswear, Inc. is also a Washington-based corporation owned in part by Chad
Hartvigson.20 Vintage Brand owns a large collection of sports memorabilia.21 It
scans images from these items and reproduces them on products (shirts, hats, mugs
14
15
16
17
18
19
20
21
Id. ¶ 59. Penn State asserts that it has used all of the marks since 1986. See id. ¶ 60. Vintage
Brand does not dispute that Penn State used PENN STATE, TPSU, and the Penn State Seal
“for decades” but disputes that Penn State used the Pozniak Lion, the S Lion Logo, and the
Lion Shrine Logo since the 1980s, as it claims. Id. At some point, the S Lion Logo image
offered on Vintage Brand’s website had a trademark symbol (“TM”) on it. See id. ¶ 120.
Vintage Brand contends that the presence of the symbol was a mistake. See id.
Id. ¶ 59.
Id. ¶ 63.
Id. ¶ 64.
Id. ¶ 66.
Doc. 153 ¶ 1.
Id. ¶ 2.
Id. ¶ 5.
4
etc.) chosen by its customers on its website.22 Sportswear manufactures Vintage
Brand’s apparel and ships it to consumers.23 Vintage Brand’s website contains a
Home Page, a landing page for specific teams and institutions (a “Team Page”), and
individual product pages that offer specific goods (a “Product Page”).24
Vintage Brand’s trademark (a stylized “V” followed by the words Vintage
Brand) appears on each of its website’s pages.25 The team page for Penn State is
titled: “PENN STATE NITTANY LIONS VINTAGE DESIGNS.”26 Underneath
that title is a disclaimer that reads: “Vintage designs not affiliated with, licensed, or
sponsored by any college, team or league.”27 Although the parties dispute its exact
location on the page, each of Vintage Brand’s pages also has a disclaimer reading:
Our products are not affiliated with, licensed, sponsored, or endorsed
by any college, team, league, event or licensing entity . . . All products
are designed by Vintage Brand® and manufactured for Vintage
Brand.28
One Vintage Brand customer, Meghan Maffey, testified at her deposition that
she did not see “any language that [she] might consider legalese or a disclaimer on
the website” when she visited it in July 2022.29
22
23
24
25
26
27
28
29
Id. ¶¶ 5-6.
Id. ¶ 3.
Id. ¶ 11.
Id. ¶¶ 9, 12.
Id. ¶ 14.
Id.
Id. ¶ 13.
Doc. 123-40 at 10; see Doc. 153 ¶¶ 13, 103-10. Maffey is an alumna of Penn State who
researches and reaches out to companies selling apparel featuring Penn State to raffle off to
raise funds for charitable purposes. See Doc. 153 ¶ 103-04.
5
Once a customer chooses an item from a Team Page, they are taken to a
Product Page.30 On that page, the customer will see an image of the product
associated with that Product Page.31 Under the title on each Product Page (example
of such a title: “1929 PENN STATE NITTANY LIONS MEN’S PREMIUM
BLEND RING-SPUN T-SHIRT”), there is another disclaimer that reads: By
Vintage Brand™ not affiliated with or sponsored by Penn State Nittany Lions” in
font smaller than that of the title.32 Once the customer orders a product, the selected
image is printed onto a tangible product and shipped to consumer in packaging
bearing Vintage Brand’s trademark.33 Many, but not all, of Vintage Brand’s products
are also labeled with its trademark.34
In 2018, Vintage Brand sold merchandise on its website depicting Penn State
Marks.35 Vintage Brand contends that it has disabled the Team Page for Penn State.36
Penn State disagrees and asserts that the page remained accessible beyond that
30
31
32
33
34
35
36
Id. ¶ 15.
See id. Vintage Brand asserts that the images on Product Pages are “digital mockups.” See id.
Penn State asserts that the image depicts a physical product that has already been created. See
id. ¶¶ 15, 18.
Id. ¶ 16.
Id. ¶ 19.
Id.
Id. ¶ 20. In 2021, Vintage Brand sold merchandise depicting the Pozniak Lion but later
removed those products from its store. Id. Vintage Brand contends that it did not make any
Penn State Marks available alone on its products save the S Lion Logo. See id. ¶ 96.
Id.
6
date.37 The gross revenue from items bearing Penn State Marks and other related
designs was less than $25,000.38
Penn State claims some images offered on Vintage Brand’s website as images
it has trademarked.39 It never granted Defendants permission to use the Penn State
Marks.40 Penn State asserts its alleged trademark rights in the Penn State Marks
through several registrations.41Its targets for merchandise sales include “students,
37
38
39
40
41
Id.
Id. ¶ 21.
See id. ¶¶ 7, 22.
Id. ¶ 141.
PENN STATE is the subject of Registration Nos. 1,308,610 (the “610 Registration”) and
5,766,698 (the “698 Registration”) (collectively the “PENN STATE Marks”). Doc. 153 ¶ 35.
“The 610 Registration was issued in 1984 and covers various goods as well as educational and
research services.” Id. ¶ 36. The 698 Registration was issued in 2019 and covers a variety of
goods, including “decorative magnets, drinking glasses, cutting boards, fabric flags, hooded
sweatshirts, sweatpants, caps being headwear, coasters, and jigsaw puzzles.” Id. ¶ 37. To obtain
the 698 Registration, Penn State claimed that the mark PENN STATE had “acquired
distinctiveness.” Id. The TPSU text is subject of Registration Nos. 1,315,693 (the “693
Registration”), 5,399,989 (the “989 Registration”), and 5,742,516 (the “516 Registration”). Id.
¶ 43. “The 693 Registration was issued in 1985 and covers a variety of goods and services.”
Id. ¶ 44. It “does not claim the exclusive right to use the words ‘State University’ and includes”
an acquired distinctiveness claim. Id. “[T]he 989 Registration was issued in 2018 and covers
hats, shirts, sweatshirts, and t-shirts but does not claim the exclusive right to use the word
‘PENNSYLVANIA.’” Id. ¶ 46. The 516 Registration was issued in 2019 and includes an
acquired distinctiveness claim as to the word “PENNSYLVANIA.” Id. ¶ 47. The Lion Shrine
Logo is the subject of Registration No. 1,350,286 (the “286 Registration”). Id. ¶ 50. The 286
Registration “covers a variety of different goods, including license plates and decorative
needlepoint clips” but not services. Id. ¶ 51. Penn State also asserts its rights in the text
NITTANY LION and the Lion Design subject to Registration No. 1,397,810 (the “810
Registration”). Id. ¶ 54. “The 810 Registration was issued in 1986 and covers only
“frankfurters.” Id. ¶ 55. The Pozniak Lion Logo is the subject of Registration No. 5,305,910
(the “910 Registration”). Id. ¶ 56. The 910 Registration was issued in 2017 and covers license
plates, clothing and various entertainment services. Id. The Penn State Seal is the subject of
Registration Nos. 1,276,712 (the “712 Registration”) and 5,877,080 (the “80 Registration”).
Id. ¶ 69. The 712 Registration was renewed in 2014 and covers an older version of the Penn
State Seal. Id. A newer version of the Penn State Seal is the subject of the 80 Registration and
covers a variety of goods. Id. ¶ 73. The S Lion Logo is not registered as a trademark. Id. ¶ 76.
7
alumni, and fans of Penn State throughout Pennsylvania and the entire United
States.”42
B.
The Experts
1.
David Franklyn
Penn State offers the expert testimony of David Franklyn, an intellectual
property law professor at the Sandra Day O’Connor College of Law at Arizona State
University.43 Professor Franklyn prepared a report (the “Franklyn Report”)
summarizing his findings.44 He performed two surveys: (1) a commercial impression
survey and (2) a likelihood of confusion survey.45
a.
Franklyn’s Commercial Impression Survey
(“Survey 1”)
The commercial impression survey presented a sample of individuals with
three images in cells: (1) an image of a Product Page from Vintage Brand’s website
depicting a t-shirt with some Penn State Marks on it, (2) a Vintage Brand Product
Page depicting a t-shirt with the text “PENN STATE BASKETBALL” and the
Pozniak Lion Logo, and (3) an image of a t-shirt with the text “GAME DAY” on it
along with a football.46 Cell 3 served as a control cell.47
42
43
44
45
46
47
Doc. 151 ¶ 124.
Doc. 94-2 at 5.
Id.
See id. at 4, 7-8.
Id. at 7, 9-12.
Id.
8
Cell 1
Cell 2
Cell 3
After viewing the three images, the respondents were shown this definition of
trademark, which Professor Franklyn adapted from the Lanham Act’s statutory
definition:
The term “trademark” includes any word, name, symbol, device (e.g.,
a drawing or design), or any combination thereof, used by an entity to
identify and distinguish its merchandise from merchandise
manufactured or sold by others and to indicate the source of the
merchandise.48
After viewing the definition, respondents were shown one of the images and
asked if it contained any trademarks.49 Respondents who indicated that they believed
the image contained a trademark were asked to identify which parts of the image, if
any, they believed were a trademark.50 The survey results indicated that 81% of
48
49
50
Id. at 13.
Id. Respondents were also permitted to express that they did not understand what a trademark
was or that they had had no opinion. Id. at 13-14.
Id. For Cell 1, the options were “the image of the lion on the rock,” “the image of the seal with
the words The Pennsylvania State University,” “the phrase The Pennsylvania State
University,” “the word Nittany,” and “the color of the shirt.” Id. at 14. For Cell 2, the options
were “the face of the lion,” “the phrase Penn State,” “the word basketball,” and “the color of
the shirt.” Id. For Cell 3, the options were “the phrase Game Day,” “the image of the football,”
“the color of the shirt,” and a fill-in “other” option. Id. at 15. Each question also allowed a
9
respondents believed that Cell 1 contained a trademark, 80% for Cell 2, and 24% for
Cell 3.51
At the Daubert hearing conducted by this Court, Franklyn explained that he
has done the survey before and referred to a similar survey in a case in the United
States District Court for the Southern District of California, Bauer Brothers LLC v.
Nike, Inc. (the “Rea Survey”) and a survey he performed in a pending action before
the United States Patent and Trademark Office, Nike v. Van’s.52 Franklyn also
explained his process for testing the survey. He had members of his team take it to
ensure that respondents would not face any obstacles in taking the survey.53
2.
Tülin Erdem
Dr. Tülin Erdem is a professor of marketing and business administration at
the Stern School of Business at New York University.54 She serves as the editor-inchief of the Journal of Marketing Research, the academic journal of the American
Marketing Association.55 She has “served as an expert witness in several cases, on
51
52
53
54
55
respondent to express that they did not know or had no opinion on whether the Cell contained
a trademark. See id. at 14-15.
Id. at 23. For Cell 1, 45% of respondents identified the image of a lion on a rock as a trademark,
70% identified the image of the seal with the words “The Pennsylvania State University” as a
trademark, 45% identified the words “The Pennsylvania State University,” 44% identified the
word “Nittany,” and 7% identified the color of the shirt. Id. at 24. For Cell 2, 65% of
respondents identified the Pozniak Lion Logo as a trademark, 65% identified the text “Penn
State,” 11% identified the word “basketball,” and 6% identified the color of the shirt. Id. For
Cell 3, 20% identified the phrase “Game Day” as a trademark, 14% identified the image of a
football, and 3% identified the color of the shirt. Id.
Doc. 185 at 21-24, 131-33.
Id. at 34-35.
Doc. 94-7 at 4.
Id.
10
matters relating to marketing, consumer behavior, brand positioning, and brand
equity” and worked with consumer surveys.56 For this matter, she conducted an
“Eveready” consumer survey to assess whether consumers “are confused regarding
(i) the source of Vintage Brand’s products as they relate to Penn State or (ii) whether
a business relationship exists between Vintage Brand and Penn State,” and “whether
consumers believe that Penn State is responsible for the quality of Vintage Brand’s
products that bear Penn State-related images.”57
For her survey, Erdem defined the target population as “current or perspective
purchasers of ‘collegiate apparel or merchandise’ who reside in the United States
and are at least [eighteen] years old.”58 She then “presented respondents with a series
of four stimuli images of Vintage Brand’s website,” which included “(i) the main
Vintage Brand homepage (“home page”), (ii) the landing page for Penn State
merchandise (“landing page”), (iii) a product page for a Vintage Brand sweatshirt
product decorated with Penn State imagery, and (iv) a checkout cart page.59 Her
rationale for the above approach was twofold: “to evaluate the potential for
confusion under existing marketplace conditions by re-creating a real-world
56
57
58
59
Id. at 5.
Id. at 7. Erdem was also asked to evaluate Franklyn’s surveys. The Court discusses her
evaluation below in the context of Vintage Brand’s motion to exclude Franklyn’s Survey 1.
Id. at 10. Erdem designed the screening process such that the resultant sample included “(i)
anyone who had purchased collegiate apparel or merchandise in the past six months; or (ii)
anyone who was planning on purchasing collegiate apparel or merchandise in the next six
months.” Id.
Id. at 12-13.
11
shopping experience” for Vintage Brand products bearing Penn State Marks and “to
test for potential confusion under different scenarios by manipulating two key parts
of the webpage images: the disclaimer and product logo images.”60
Qualified respondents were placed into one of three experimental groups “to
view one of three logos on a gray hooded sweatshirt, within the Vintage Brand
purchasing environment.”61 The three logos were: the “1929 Penn State Nittany
Lions” logo, the “1950 Penn State Nittany Lions” logo, and a “State of Pennsylvania
Seal” logo, the last of which she “designed . . . to be as close as possible to the
Vintage Brand products decorated with Penn State imagery and to control for the
potential influence of elements other than the at-issue imagery on confusion.”62
60
61
62
Id. at 13.
Id.
Id.
12
In addition to the above stimuli, Erdem “also created additional stimuli
conditions that allow [her] to estimate the impact of disclaimers on respondents’
perception of the source of Vintage Brand products, Vintage Brand’s business
relationships, and quality of Vintage Brand’s products as they relate to products
decorated with Penn State imagery.”63 She designed “four website condition groups
with variations on Vintage Brand’s existing disclaimer.”64
Erdem’s survey then asked respondents a series of questions regarding
whether they were confused about the source of the products on the pages they saw
on Vintage Brand’s webpages or the business relationship between Vintage Brand
and Penn State.65 The source questions included an open-ended question asking the
63
64
65
Id. at 14.
Id.
See id. at 23-25.
13
respondent to identify who produced the sweatshirt they saw and an open-ended
question asking the respondent why they felt that way.66 The business-relationship
questions included a close-ended question asking whether the respondent thought
the entity putting out the sweatshirt had a business relationship with another entity,
followed by an open-ended question asking the respondent to identify that entity.67
Respondents who indicated the presence of a business relationship were then asked
why they believed one existed.68 Erdem then queried respondents on their level of
certainty in their answers after each substantive question.69
Erdem also asked whether respondents believed that the “law requires Penn
State’s permission to sell apparel or merchandise with the design on the sweatshirt
shown below.”70 She also assessed respondents’ belief that their answer to the legal
permission question was correct.71
Next, Erdem asked respondents whether they had an opinion on the quality of
the pictured sweatshirt and what entity they felt was responsible for the quality of
the sweatshirt.72 Respondents were also asked whether Penn State, Vintage Brand,
66
67
68
69
70
71
72
Id. at 24.
Id.
Id. at 24-25.
See id. at 25. Respondents were asked whether they were “just guessing,” or if they felt that
their answer was “somewhat likely correct,” “very likely correct,” or “definitely correct.” Id.
at 26.
Id.
Id. at 27-28.
Id. at 28-29.
14
neither, or both were responsible for the quality of the sweatshirt.73 Erdem pretested
her survey to ensure that putative respondents thought the questions were
unambiguous.74
Based on the results of her survey, Erdem concluded that respondents were
not confused as to the source of Vintage Brand’s products or the existence of a
business relationship between Vintage Brand and Penn State.75
C.
Procedural History
By way of its Second Amended Complaint, Penn State sues Vintage Brand
for (1) willfully infringing on Penn State’s trademarks in violation of 15 U.S.C. §
1114 (Count One);76 (2) selling and marketing counterfeit products in violation of
Sections 1114, 1116(d) and 1117 (Count Two);77 (3) unfair competition and falsely
designating Penn State as the source of Vintage Brand’s products in violation of
Section 1125(a) (Count Three);78 (4) falsely advertising and endorsing its products’
affiliation with Penn State in violation of Section 1125(a) (Count Four);79 diluting
Penn State’s trademarks in violation of Section 1125(c) and 54 Pa. C.S. § 1124
73
74
75
76
77
78
79
Id. at 30.
Id. at 31.
Id. at 31-45 (detailing and analyzing survey results).
Doc. 67 ¶¶ 99-105. Specifically, Penn State alleges that Vintage Brand infringed on its PENN
STATE, TPSU, Nittany Lion Logo, Pozniak Lion Logo, and Penn State Seal marks. Id.
Id. ¶¶ 106-12.
Id. ¶¶ 113-16.
Id. ¶¶ 117-25.
15
(Counts Five and Six, respectively);80 and (7) infringing on Penn State’s
common-law trademarks.81
Vintage Brand denies all of Penn State’s allegations.82 Relevant to the motions
before the Court, Vintage Brand raises the following affirmative defenses: the
Seventh Affirmative Defense, asserting that Penn State’s claims are barred because
it uses its own marks only for ornamental purposes, and the Eighth Affirmative
Defense, asserting that Penn State’s claims are barred because Vintage Brand uses
the images only in an ornamental fashion.83
Lastly, Vintage Brand counterclaims to cancel the registration of Penn State’s
Seal Marks on the ground that the marks incorporate the Commonwealth of
Pennsylvania’s Coat of Arms.84 Vintage Brand further counterclaims to cancel the
PENN STATE Marks on the ground that such marks are merely ornamental.85
II.
LAW
A.
Federal Rule of Evidence 702
Under Federal Rule of Evidence 702 “a trial judge acts as a gatekeeper to
ensure that any and all expert testimony or evidence is not only relevant, but also
80
81
82
83
84
85
Id. ¶¶ 126-34 (Count Five), 135-40.
Id. ¶¶ 141-45.
Doc. 72.
Id. at 40.
Id. at 44-47.
Id. at 47-50.
16
reliable.”86 As gatekeeper, trial judges have three duties: (1) “confirm the witness is
a qualified expert”; (2) “check [that] the proposed testimony is reliable and relates
to matters requiring scientific, technical, or specialized knowledge”; and (3) “ensure
the expert’s testimony is ‘sufficiently tied to the facts of the case,’ so that it ‘fits’ the
dispute and will assist the trier of fact.”87 “The text of Rule 702 contains no exception
to these requirements, so if they are not satisfied, an expert cannot testify before the
‘trier of fact.’”88
Reliable expert testimony must be “based on the methods and procedures of
science, not on subjective belief and unsupported speculation” or “mere haphazard,
intuitive inquiry.”89 But it need not have the “best foundation” or be “supported by
the best methodology or unassailable research.”90 It need only be based on “good
grounds.”91 To test the basis for the opinion, courts should consider the following
list of factors, none of which are dispositive:
(1) whether a method consists of a testable hypothesis; (2) whether the
method has been subject to peer review; (3) the known or potential rate
of error; (4) the existence and maintenance of standards controlling the
technique’s operation; (5) whether the method is generally accepted;
(6) the relationship of the technique to methods which have been
established to be reliable; (7) the qualifications of the expert witness
86
87
88
89
90
91
UGI Sunbury LLC v. A Permanent Easement for 1.7575 Acres, 949 F.3d 825, 832 (3d Cir.
2020) (internal quotation marks omitted).
Id. (quoting Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 591 (1993)).
Id. (citing Fed. R. Evid. 702).
Id. at 833-34 (internal quotation marks omitted).
Id. (internal quotation marks omitted).
Id. (internal quotation marks omitted).
17
testifying based on the methodology; and (8) the non-judicial uses to
which the method has been put.92
Whether the opinion “fits” depends on “whether it ‘will help the trier of fact
to understand the evidence or to determine a fact in issue.’”93 “‘Fit’ is not always
obvious, and scientific validity for one purpose is not necessarily scientific validity
for other, unrelated purposes.”94 “Thus, even if an expert’s proposed testimony
constitutes scientific knowledge, his or her testimony will be excluded if it is not
scientific knowledge for purposes of the case.”95
B.
Summary Judgment
Under Federal Rule of Civil Procedure 56, summary judgment is appropriate
where “the movant shows that there is no genuine dispute as to any material fact and
the movant is entitled to judgment as a matter of law.”96 Material facts are those “that
could alter the outcome” of the litigation, “and disputes are ‘genuine’ if evidence
exists from which a rational person could conclude that the position of the person
with the burden of proof on the disputed issue is correct.”97 A defendant “meets this
standard when there is an absence of evidence that rationally supports the plaintiff’s
case.”98 Conversely, to survive summary judgment, a plaintiff must “point to
92
93
94
95
96
97
98
Id. (internal quotation marks omitted).
Id. (quoting Fed. R. Evid. 702).
Id. (quoting Daubert, 509 U.S. at 591).
Id. (internal quotation marks omitted).
Fed. R. Civ. P. 56(a).
EBC, Inc. v. Clark Bldg. Sys., Inc., 618 F.3d 253, 262 (3d Cir. 2010).
Clark v. Mod. Grp. Ltd., 9 F.3d 321, 326 (3d Cir. 1993).
18
admissible evidence that would be sufficient to show all elements of a prima facie
case under applicable substantive law.”99
The party requesting summary judgment bears the initial burden of supporting
its motion with evidence from the record.100 When the movant properly supports its
motion, the nonmoving party must then show the need for a trial by setting forth
“genuine factual issues that properly can be resolved only by a finder of fact because
they may reasonably be resolved in favor of either party.”101 The nonmoving party
will not withstand summary judgment if all it has are “assertions, conclusory
allegations, or mere suspicions.”102 Instead, it must “identify those facts of record
which would contradict the facts identified by the movant.”103
In assessing “whether there is evidence upon which a jury can properly
proceed to find a verdict for the [nonmoving] party,”104 the Court “must view the
facts and evidence presented on the motion in the light most favorable to the
nonmoving party.”105 Moreover, “[i]f a party fails to properly support an assertion
of fact or fails to properly address another party’s assertion of fact as required by
Rule 56(c),” the Court may “consider the fact undisputed for purposes of the
99
100
101
102
103
104
105
Id.
Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986).
Betts v. New Castle Youth Dev. Ctr., 621 F.3d 249, 252 (3d Cir. 2010).
Port Auth. of N.Y. and N.J. v. Affiliated FM Ins. Co., 311 F.3d 226, 233 (3d Cir. 2002) (internal
quotation marks omitted).
Liberty Lobby, 477 U.S. at 252 (quoting Schuylkill & Dauphin Imp. Co. v. Munson, 81 U.S.
442, 448 (1871)).
Razak v. Uber Techs., Inc., 951 F.3d 137, 144 (3d Cir. 2020).
19
motion.”106 Finally, although “the court need consider only the cited materials, . . .
it may consider other materials in the record.”107
III.
ANALYSIS
Both parties’ respective motions for summary judgment and their oppositions
rely on the expert reports discussed above. Accordingly, the Court addresses the
Daubert motions first.
A.
Vintage Brand’s Daubert Motion to Exclude Franklyn’s Survey 1
Vintage Brand argues that Franklyn’s Survey 1 is not reliable and does not fit
the case. As for fit, Vintage Brand asserts that Franklyn’s Survey 1 does not test a
relevant question.108 With regard to reliability, Vintage Brand contends that
Franklyn’s methodology is largely novel, and therefore fails under the Daubert
factors.109 Vintage Brand also challenges Franklyn’s qualifications.110
1.
Fit
As discussed above, Franklyn’s Survey 1 supplied respondents with a
definition of trademark adapted from the Lanham Act’s definition and then asked
them whether they perceived trademarks on images of two Vintage Brand
products.111
106
107
108
109
110
111
Fed. R. Civ. P. 56(e)(2); see also Weitzner v. Sanofi Pasteur Inc., 909 F.3d 604, 613-14 (3d
Cir. 2018).
Fed. R. Civ. P. 56(c)(3).
Doc. 94 at 11.
Id. at 11-21.
Id. at 15.
That definition read:
20
Vintage Brand argues that Franklyn’s Survey 1 failed to properly assess
whether the respondents regarded the trademarks they identified to indicate Penn
State “as the source, provider, licensor, or sponsor of the apparel itself.”112 Penn
State responds that Franklyn’s reference to merchandise in his definition of a
trademark does just that.113 The Court agrees with Vintage Brand as to fit. Vintage
Brand’s arguments focus on Survey 1’s identification question, which asks
respondents if they think the image they are shown contains one or more
trademarks.114
Vintage Brand correctly notes that the question does not refer respondents to
the proper inquiry—whether the images contain trademarks for the apparel. But the
question appears directly underneath the definition of trademark, which includes the
term “merchandise.”115 A reasonable respondent seeing the definition’s reference to
merchandise would understand that they are looking for trademarks indicating the
The term “trademark” includes any word, name, symbol, device (e.g., a drawing or
design), or any combination thereof, used by an entity to identify and distinguish
its merchandise from merchandise manufactured or sold by others and to indicate
the source of the merchandise.
112
113
114
115
Doc. 94-2 at 13.
Doc. 94 at 11.
Doc. 98 at 13.
Doc. 94-2 at 14.
See id.
21
source of the merchandise.116 And the only merchandise the respondents were shown
were shirts. Accordingly, Franklyn’s Survey 1 fits the case.
2.
Reliability
Vintage Brand also challenges the reliability of Franklyn’s survey on
numerous grounds.
a.
Acceptance
Vintage Brand’s first line of attack is that the novelty of Survey 1’s
methodology precludes its use in this case because it has not been assessed in
scholarly literature, has not been generally accepted, and has no non-judicial use.117
Vintage Brand’s rebuttal expert, David Neal, does not believe that Franklyn’s
methodology has ever been used before in any context.118
Neal also asserts that Franklyn’s survey does not identify the underlying
“trademark construct” he purports to test such as “recognition” or “secondary
meaning.”119 He explains that if the tested construct is secondary meaning, then the
proper analysis is to subtract the percentage of respondents who identified a
trademark on the Game Day shirt (20%) from the percentages that identified a
trademark on either of the other two shirts.120 That analysis substantially reduces the
116
117
118
119
120
Vintage Brand points to Erdem’s survey as a more appropriate test of the relevant question.
Doc. 94 at 13.
Doc. 94-5 at 11.
Id. at 20.
See id. at 23-25.
22
percentage of respondents who identified the Penn State Marks on Vintage Brand’s
products as trademarks.121
Penn State offers two counterarguments. First, it notes the United States
District Court for the Southern District of California’s acceptance of what it suggests
is a similar survey in Bauer Brothers, LLC v. Nike, Inc.122 Second, it offers academic
literature that it argues shows prior use of surveys like Franklyn’s.123
The Bauer Brothers survey sought to determine whether consumers perceived
a certain mark as branding or a trademark.124 But as Vintage Brand notes, the Bauer
Brothers survey’s methodology is markedly different from that of Survey 1.125 Some
of these differences overlap with Vintage Brand’s other criticisms of Franklyn’s
methodology, which the Court discusses below. One notable difference is that the
Bauer Brothers survey provided examples of a brand or trademark that were
unrelated to the goods at issue in the case, whereas Survey 1 does not.126 The Bauer
Brothers survey does little to establish prior use and acceptance of Franklyn’s
methodology due to those differences.
121
122
123
124
125
126
See id. at 26.
Doc. 98 at 14-15 (citing Bauer Bros., LLC v. Nike, Inc., 159 F. Supp. 3d 1202, 1211 (S.D. Cal.
2016)).
Id. at 15-16 (citing TRADEMARK & DECEPTIVE ADVERTISING SURVEYS: LAW, SCIENCE, AND
DESIGN, 115 (ABA 2d ed. 2022) (S. Diamond & J. Swann, eds.) (“DIAMOND & SWANN”)).
See 159 F. Supp. 3d at 1211.
Doc. 99 at 10-12.
See Bauer Bros, LLC v. Nike, Inc., No. 3:09-CV-00500, ECF 134-11 at 3 (Oct. 12, 2011, S.D.
Cal.) (“For example, ‘Ford’ is a brand/trademark for cars. The oval shaped emblem with ‘Ford’
written in the center is also a brand/trademark for cars”).
23
Penn State next cites to Diamond & Swann’s discussion of “Teflon surveys”
as evidence of general acceptance of Franklyn’s methodology as well as one case
from the United States District Court for the Eastern District of New York that
accepted a similar survey: DuPont Cellophane Co. v. Waxed Products Co.127 As
Diamond & Swann explains, a Teflon survey “define[s] a brand name and a common
name in the introductory section and then ask[s] respondents to classify a list of
names (including the challenged mark) as one or the other.”128 Diamond & Swann
notes that the DuPont Cellophane survey provided a list of names and asked
respondents to identify which were trademarks, defined as “a name or mark which
indicates that the goods bearing this name or mark are manufactured or sponsored
by one concern only.”129
Vintage Brand responds that both Teflon surveys and the DuPont Cellophane
survey go to the question of whether a disputed term is a trademark or a generic term,
which it contends is not the relevant question.130 The Court agrees. The differences
between the Teflon and DuPont Cellophane surveys and Survey 1 are inherent in
the survey’s different structures. The first two provide a list of several names, both
127
128
129
130
Doc. 98 at 15-16 (citing DIAMOND & SWANN at 115; DuPont, 6 F. Supp. 859 (E.D.N.Y. 1934)).
The DuPont Cellophane court found the survey to be “fairly presented” but did not ultimately
rely on it on hearsay grounds, a view to which modern courts no longer subscribe. 6 F. Supp.
at 885.
DIAMOND & SWANN at 115.
Id. at 115-16 n. 32. The DuPont Cellophane survey may have served as the inspiration for the
Teflon survey. Id.
Doc. 99 at 13.
24
generic and trademarked, to assess whether consumers perceive the disputed term as
generic. Here, no one argues that Penn State is or has become a generic term. The
relevant question is whether consumers perceive the Penn State Marks to associate
Penn State with goods that carry the Penn State Marks.
Given the novelty of Franklyn’s approach, Vintage Brand also cites the lack
of any error rate or standards to measure Franklyn’s methods.131 Penn State responds
that Franklyn’s work meets generally accepted standards for general consumer
surveys.132 The Court agrees that the lack of any error rate adds to the difficulty in
assessing Franklyn’s Survey 1, and indicates its further unreliability.
b.
Demand Artifacts
Vintage Brand also maintains that Franklyn’s methods are unreliable because
his survey is structured in such a way to bias respondents to find trademarks.133
Erdem refers to these biased aspects as demand artifacts, which are cues or other
aspects of a survey that suggest to respondents what goal the survey seeks to
accomplish.134 She explains that that Franklyn’s definition of a trademark “primed”
131
132
133
134
Doc. 94 at 14-15.
Doc. 98 at 17.
Doc. 94 at 12-13.
Doc. 94-7 at 51-52; see Alan G. Sawyer, Demand Artifacts in Laboratory Experiments in
Consumer Research, JOURNAL OF CONSUMER RESEARCH (March 1975) (“Sawyer”); see also
Simon Prop. Group L.P. v. mySimon, Inc., 104 F. Supp. 2d 1033, 1048 (D. Ind. 2000) (“The
question about whether the two [non-competing] items are put out by the same or a related
source is likely to generate so-called ‘demand effects’ that bias the survey by suggesting to
respondents, at least implicitly, that they should believe there is at least some sort of
relationship between the different items when the possibility might not even have occurred to
the vast majority of consumers who see the items”); Gov’t Employees Ins. Co. v. Google, Inc.,
25
respondents to “hunt” for trademarks, biasing the results in favor of Penn State.135
Lastly, she criticizes Franklyn’s failure to portray the images of Vintage Brand’s
products in a marketplace context.136
Erdem claims that the combination of Franklyn’s trademark definition and
his questions asking the respondents to state whether the images contain trademarks
gave respondents the impression that Franklyn wanted them to find trademarks
and/or that the images contained at least one trademark.137 She explains that “[i]t
would have been important to review a respondent’s initial thoughts about the
definition of a trademark as a quality control measure to see if there was any
confusion, and then ask whether anything in the image constitutes a trademark.”138
Similarly, Erdem criticizes as out of line with generally accepted survey practices
Franklyn’s failure to offer open-ended questions after the close-ended questions to
better contextualize the responses.139 She also faults Franklyn for not pretesting his
questions and definition of trademark as she did to assess whether they confused
respondents, suggesting that without pretesting, “Franklyn has no way of knowing
135
136
137
138
139
No. 1:04CV507, 2005 WL 1903128, at *6 (D. Va. Aug. 8, 2005) (“demand effect results when
the interviewer’s questions or other elements of the survey design influence participants’
responses by suggesting what the ‘correct’ answers might be or by implying associations that
might not otherwise occur to participants”).
Doc. 94-7 at 51.
Id.
Id. at 52.
Id.
Id. at 52-53 (citing Shari S. Diamond, Reference Guide on Survey Research, in REFERENCE
MANUAL ON SCIENTIFIC EVIDENCE 392 (Nat’l Acad. Press 2011) (“Reference Guide on Survey
Research”).
26
if respondents understood his included definition of a trademark as applied to the atissue Vintage Brand products.”140
Neal also criticizes Franklyn’s Survey 1 for priming respondents to think of
Penn State by naming it in multiple screening questions, which he contends made
Penn State “artificially salient in survey respondents’ mind just prior to key
questions.”141 He notes that Diamond & Swann recommends that the party names
“should not be mentioned to respondents during the screener” because such
identifications can “bias or influence the participants’ responses to the questions that
follow in the main questionnaire.”142 He also suggests that the screening questions
at issue (which asked whether respondents had purchased apparel featuring any of a
list of several universities, including Penn State), had no functional role in the
survey.143
As to priming respondents to hunt for trademarks, Penn State responds that
the structure of the survey allays any concerns over priming.144 Penn State breaks
Survey 1 into three steps:
140
141
142
143
144
Id. (citing Sawyer at 20). As noted above, Franklyn provided an option for respondents to
indicate that they did not know what a trademark is. But Erdem contends that this option fails
to meaningfully assess respondents’ knowledge because survey respondents are generally
motivated to avoid such answers. Id. at 53-54 (citing Ran Kivetz & Itamar Simonson, Demand
Effects in Likelihood of Confusion Surveys: The Importance of Marketplace Conditions, in
TRADEMARK AND DECEPTIVE ADVERTISING SURVEYS 245 (2012)). Neal echoes this criticism.
See Doc. 94-5 at 21.
Id. at 10-11, 15-19.
Id. at 18 (quoting DIAMOND & SWANN at 55-56).
Id. at 17-18.
Doc. 98 at 18.
27
(1) respondents were shown one of the test Images or the Control
Image;
(2) respondents were shown the definition for “trademark” and asked
whether they believed one or more trademarks was present on the
image; and
(3) respondents who had indicated that at least one trademark was
present were then given the option to select what specific
components they believed to be trademarks.145
Penn State contends that step two is a filter question that “insulated against
the sort of priming effects [Vintage Brand] claim[s] here.”146 But respondents were
shown the images again in connection with the filter question. So, as Vintage Brand
notes, the combination of the image and the definition may have “affected how they
responded to the filter question itself—i.e., by making them more likely to report
that they did believe a trademark was present.”147
The Court is also troubled with Franklyn’s trademark definition. There is no
doubt that it accurately tracks the Lanham Act’s language, but Neal’s and Erdem’s
concerns regarding respondents’ ability to apply the definition are well-taken. Neal
explains that “Franklyn failed to test if people understood, and could accurately
apply, his definition of a trademark, even though such a test is standard practice in
trademark surveys with comparable goals.”148 Notably, Neal cites to Diamond &
145
146
147
148
Id.
Id. at 19.
Doc. 99 at 14.
Doc. 94-5 at 21.
28
Swann’s discussion of Teflon surveys and how they “first teach[] respondents the
distinction between a brand name and a common name and then test[] respondents’
ability to apply this definition accurately to two terms,” only allowing respondents
who pass the test to proceed.149
c.
Marketplace Conditions
Vintage Brand next contends that Survey 1 is unreliable because it fails to
sufficiently replicate the marketplace conditions in which consumers would see
Vintage Brand’s products.150 Erdem discusses Franklyn’s alleged failure to use a
marketplace context, pointing out that Franklyn cannot reliably test the commercial
impression of Vintage Brand products without showing respondents the products on
Vintage Brand’s website, where a putative consumer would be able to purchase
them.151
Penn State responds that showing the test images in a marketplace condition
“would have been improper here because this would have injected information other
than the Penn State Marks on the relevant goods which could affect respondents’
perceptions,” citing to two cases.152 Penn State first cites to Thomas & Betts Corp.
v. Panduit Corp., where the United States Court of Appeals for the Seventh Circuit
149
150
151
152
Id. at 21 n.55 (citing DIAMOND & SWANN, at 107-161).
Doc. 94 at 19-20 (citing THOIP v. Walt Disney Co., 690 F. Supp. 2d 218, 230-41 (S.D.N.Y.
2010)).
Doc. 94-7 at 54 (citing Survey methodology—Approximating market conditions, 6 MCCARTHY
ON TRADEMARKS AND UNFAIR COMPETITION, § 32:163 (5th ed., June 2022) (“MCCARTHY”).
Doc. 98 at 22 (citing Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 662-63 (7th Cir.
1995); Gucci America, Inc. v. Guess?, Inc., 831 F. Supp. 2d 723, 745-46 (S.D.N.Y. 2011)).
29
took issue with a survey because it showed both the protectable trade-dress along
with “clearly non-protectable elements.”153 Because most survey respondents
explained that they identified the product at issue from a non-protectable element,
the court found the survey worthless.154 In Gucci America, Inc. v. Guess?, the
Honorable Shira A. Scheindlin of the United States District Court for the Southern
District of New York excluded a survey that presented products at the point-of-sale
context because they were irrelevant to the plaintiff’s theory of post-sale
confusion.155 Penn State further contends that “[s]howing the shirts in a store or
marketplace setting would have also been entirely inconsistent with the law on
whether a mark is merely ornamental, which requires an examination of the mark as
used on the relevant good and does not consider point of sale context.”156
However, the Court agrees with Vintage Brand that the cases on which Penn
State relies are inapposite.157 This is not a case involving consumers’ perception of
non-protectable elements of a product as was the case in Thomas & Betts. Nor does
this case involve a theory of post-sale confusion, as was the case in Gucci
America.158
153
154
155
156
157
158
65 F.3d at 662.
Id. at 663.
831 F. Supp. 2d at 745-46.
Id. (citing TMEP § 1202.03(a)-(g)).
Doc. 99 at 17-18.
Although the Third Circuit does not appear to have precisely answered the question, the great
weight of authority holds that post-sale confusion is reserved for cases where the junior use of
the mark makes substantially inferior products; most cases involve luxury brands. See
30
The Court finds the marketplace context of substantial importance in a case
like this one, where the allegedly infringing defendant claims that its use of the
plaintiff’s marks is not a trademark use. The context in which a consumer sees the
product naturally informs their perception of whether a product is associated with a
particular source or endorsed/sponsored by a particular entity.
d.
Improper Control
Vintage Brand next challenges Franklyn’s control image (the “Game Day”
shirt) as improper. Franklyn chose his control because it was “not specific to any
team or other affiliated entity and expresses an informational message about
football.”159 Erdem disagrees with his choice, maintaining that it “does not serve as
a control at all.”160 She notes that a proper control is one that “shares as many
characteristics with the experimental stimulus as possible, with the key exception of
the characteristic whose influence is being assessed.”161 She explains that Franklyn
“not only changes the color scheme and the imagery in the control, he also removes
the product from its marketplace context.”162 She therefore argues that “[a]s a result,
it is impossible to determine if respondents selected Penn State as a trademark
159
160
161
162
MCCARTHY, § 23:7. Penn State does not appear to allege that Vintage Brand’s products are
inferior.
Doc. 94-2 at 12.
Doc. 94-7 at 55.
Id. (quoting DIAMOND & SWANN Ch. 9 and citing MCCARTHY § 32:163).
Id.
31
because of the manipulated imagery, manipulated color scheme, or the removal of
relevant marketplace context.”163
Penn State responds that Vintage Brand and Erdem’s argument miss the mark
because Franklyn’s survey sought to determine whether respondents were confused
about Vintage Brand’s products’ association with Penn State rather than why
respondents were confused.164 But as Vintage Brand correctly notes, Franklyn does
appear to inquire into what caused respondents’ confusion.165 Moreover, the Court
believes that the failure to use marketplace conditions in the survey also undermines
Franklyn’s choice of a control image for the same reasons stated above.
3.
Qualifications
Vintage Brand additionally argues that Franklyn is unqualified to testify to his
novel survey because he lacks training in “marketing, statistics, or psychology”
despite having performed numerous consumer surveys in the past.166 The Court
disagrees to the extent that Franklyn’s lack of qualifications independently warrants
163
164
165
166
Id.
Doc. 98 at 24 (citing Jacob Jacoby, Experimental Design and the Selection of Controls in
Trademark and Deceptive Advertising Surveys, TRADEMARK REPORTER, 92 TMR 890, 903
(2002)).
See Doc. 94-2 at 24 (“Consumers who indicated that they believed that the image contained
trademarks were shown a follow up question to further understand what caused this
perception”); 25 (“Furthermore, this commercial impression is driven by the Penn State name
and imagery, rather than other elements of the shirt design such as the color of the shirt or
descriptions of the sport”).
Doc. 94 at 15-16.
32
his exclusion. But the Court is concerned about the combination of Franklyn’s lack
of training in relevant disciplines and the novel method he appears to have used.
4.
Conclusion
In sum, Vintage Brand has presented persuasive arguments as to Survey 1’s
unreliability that Penn State largely fails to rebut. The overarching issue is the
Court’s concern that, without pretesting or examples of trademarks to guide
respondents (or any similar efforts to that end), there is no way to adequately assess
whether respondents applied Franklyn’s definition of trademark properly. From a
broad level, it appears that Franklyn’s Survey 1 asks respondents to perform the
same sort of analysis that a USPTO examining attorney might undertake when
presented with an application for registration. That seems to be a tall order for a
layperson respondent. Asking survey respondents to perform such a complex
analysis is not in itself an insurmountable problem. But doing so without ensuring
that respondents can reliably apply a legal definition (or a simplified version of it) is
a fatal flaw in this Court’s view. Accordingly, based on a totality of the
circumstances, the Court will grant Vintage Brand’s motion to exclude Franklyn’s
testimony on Survey 1.
B.
Penn State’s Motion to Exclude Erdem
Penn State moves to exclude Erdem’s testimony regarding the conclusions
she reached from her survey research because her methodology is unreliable due to
33
several flaws. Penn State contends that (1) Erdem used an improper control167 and
(2) improperly assessed respondents’ certainty in a way that departs from accepted
survey research practices.168 Penn State also argues that Erdem’s work does not fit
the relevant question in this case because her query on whether Penn State and
Vintage Brand have a business relationship improperly measured respondents’
confusion.169
1.
Fit
Penn State challenges Erdem’s business-relationship questions to measure
confusion because they do not address the full scope of the question in this case:
whether consumers are confused about Penn State’s potential approval or
sponsorship of Vintage Brand products.170 Penn State notes that traditional Eveready
surveys ask questions related to sponsorship, such as: “Who do you believe, if
anyone, is sponsoring or promoting [the product]?”171 Based on that accepted
practice, Penn State argues that Erdem’s business-relationship questions are overly
general and confusing.172 Vintage Brand responds that the wording of Erdem’s
questions has been accepted in academic literature.173 Erdem’s justification for using
167
168
169
170
171
172
173
Doc. 96 at 17-27.
Id. at 30-33.
Id. at 27-30.
Id. at 27-28.
Id. at 28 (quoting Jerre Swann, Eveready and Squirt—Cognitively Updated, 106 TRADEMARK
REPORTER 727, 729 (2016)).
Id. at 29-30.
Doc. 97 at 20 (citing Jerre B. Swann, Likelihood of Confusion Studies and the Straitened Scope
of Squirt, 98 TRADEMARK REPORTER 739, 740-42 (2008)).
34
alternative wording was her own experience that questions regarding “business
relationships” resonate better with respondents.174
The Court concludes that Erdem’s wording of the question “fits” the issues
present in this case. As she suggests, a “business relationship” arguably brings to
mind sponsorship and/or official approval and the like.
2.
Erdem’s Allegedly Infringing Control
Erdem’s control was a sweatshirt with the Seal of the Commonwealth of
Pennsylvania.175 She chose that logo “to be as close as possible to the Vintage Brand
products decorated with Penn State imagery and to control for the potential influence
of elements other than the at-issue imagery on confusion.”176 Penn State first argues
that Erdem used an infringing control by placing the control image in the context of
Vintage Brand’s website, which itself contains Penn State Marks like “PENN
STATE.”177 Second, Penn State asserts that Erdem’s control image itself, the Seal
of Pennsylvania, is substantially similar to the Penn State Seal such that it also
infringes.178
174
175
176
177
178
Doc. 97-1 at 18-20.
Doc. 94-7 at 13-14.
Id. at 13.
Id. at 17-19.
Id. at 19-24.
35
Example of one of Penn State’s
Registered Seal Marks
Control Product Image
Penn State also directs the Court’s attention to Erdem’s results.
Approximately 17-30% of Erdem’s controlled group was confused, a figure that
Penn State argues is unacceptably high.179
Vintage Brand responds that the presence of the text “PENN STATE” on its
pages is not improper because Erdem sought to test whether consumers were
confused about the merchandise bearing Penn State Marks, not the website.180 As
for the similarities between the seals, Vintage Brand asserts that Penn State’s
argument “inappropriately dissects the seals for comparison, in violation of
trademark law’s anti-dissection rule.”181 Beyond its point regarding dissection,
Vintage Brand contends that Penn State’s argument is overbroad. Under its
179
180
181
Id. at 25 (citing Jacob Jacoby, Experimental Design and the Selection of Controls in Trademark
and Deceptive Advertising Surveys, 92 TRADEMARK REPORTER 890, 931-32 (2002)).
Doc. 97 at 11.
Id. at 15-16 (citing In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed Cir. 1985)).
36
reasoning, any circular seal could potentially infringe on the Penn State Seal.182
Vintage Brand also admits that Erdem’s results for confusion in the control group
are high but argues that they are not unacceptably high and are overshadowed by the
difference in confusion between the test and control groups, which is the more
appropriate measure.183
As Penn State argues, the Seal of Pennsylvania and the Penn State Seal do
have some similarities.184 They both incorporate the words “Pennsylvania” and
“State” as well as some elements of the Pennsylvania Coat of Arms.185 But in the
Court’s view, these are similarities that nearly all seal-type logos will share. They
are usually all circles. They often contain symbolic images like the ones in the Penn
State Seal. These similarities alone do not render Erdem’s control infringing or
invalid. Nor does the high confusion rate render the survey invalid, due to the
difference in confusion between the test and control groups.
3.
Erdem’s Measurement of Certainty
Lastly, Penn State challenges Erdem’s certainty questions as deviations from
accepted survey practice.186 Erdem had respondents assess how certain they were of
their answers on a four-point scale from “definitely correct” to “just guessing” and
182
183
184
185
186
Id.
Id. at 17 (citing Jacoby, supra note 150 at 932 n.76).
Id. at 25-26.
Id.
Doc. 96 at 30-33.
37
excised any response marked as “somewhat likely correct” and “just guessing.”187
Penn State argues that Erdem’s approach has no basis in academic research and
therefore undermines the reliability of Erdem’s survey.188 In its view, “confused
people are generally uncertain, and asking someone if they are ‘certain of their
answer’ prompts them to assume they are not.”189
Penn State further argues that even if it had a basis, Erdem’s four-point
certainty scale is problematic because she does not include more options, such as an
option indicating 50% certainty.190 Penn State argues that Erdem’s certaintyadjusted results should be excluded even if the rest of results are not.191
Vintage Brand responds by noting that Erdem provided her unadjusted results,
which still showed low levels of confusion.192 Vintage Brand questions Penn State’s
argument about the effect of certainty questions in a likelihood-of-confusion survey,
noting that under Penn State’s reasoning, respondents who answer “don’t know”
should be marked as confused, a conclusion with which even Franklyn disagrees.193
Lastly, Vintage Brand notes that at least one court has held that certainty-adjustment
was not grounds for exclusion.194
187
188
189
190
191
192
193
194
See Doc. 94-7 at 26.
Doc. 96 at 30-31.
Id. at 8.
Id. at 32.
Id. at 33.
Doc. 97 at 22-23.
Id. at 24.
Id. at 25 (citing BBK Tobacco & Foods LLP v. Cent. Coast Agric. Inc., 615 F. Supp. 3d 982,
1004-05 (D. Ariz. 2022)).
38
The Court concludes that the issues cited by Penn State do not warrant
exclusion of Erdem’s survey or the analysis related to controlling for certainty. The
inclusion of a certainty analysis does not itself warrant exclusion of Erdem’s
survey.195 Particularly so here, where the information gathered by this portion of
Erdem’s survey provides additional data for evaluating the responses, but did not
result in the exclusion of any of the respondents, and Erdem provided her unadjusted
results which still demonstrate confusion. Erdem’s methodology is not therefore
flawed; regardless of whether it is the best method, Erdem’s results are sufficiently
reliable, and sufficiently fit the case, for their admission at trial. Accordingly, Penn
State’s motion to exclude Erdem’s survey will be denied.
C.
Vintage Brand’s Motion to Strike
Vintage Brand moves to strike several paragraphs and portions of paragraphs
from Penn State’s SUMF in support of its motion for summary judgment.196 They
are: paragraphs 1, 5, and 114 of Penn State’s SUMF, the first sentence of paragraph
6, the entirety of paragraph 15 of the Declaration of Stephanie Petulla (Penn State’s
Director of Licensing and Visual Identity), the entirety of exhibit 12 to Penn State’s
SUMF, and portions of exhibits 3, 5, 8, 14, 15, 16, 48, and 57.197 The Court turns to
these items in turn.
195
196
197
See BBK Tobacco, 615 F. Supp. 3d at 1004-05 (noting that the inclusion of such questions and
analysis “does not so distort the survey’s results as to render them wholly inadmissible”).
Doc. 135.
Id.
39
1.
Paragraph 1 of Penn State’s SUMF
Paragraph 1 of Penn State’s SUMF states: “Penn State is the flagship public
research university in the Commonwealth of Pennsylvania and is famous throughout
the United States and the world for its educational programs, athletics programs, and
many other goods and services.”198
That paragraph has one source: paragraph 6 of the Petulla Declaration, which
reads:
Penn State is the flagship public research university in the
Commonwealth of Pennsylvania and is famous throughout the United
States and the world for its educational programs, athletics programs,
and many other goods and services that Penn State offers and provides
to students, alumni, and members of the general public. Penn State
enrolls approximately 100,000 students from across the United States
and abroad each year and employs over 31,000 faculty and staff. Penn
State has one of the largest living alumni bases among all U.S.-based
universities. Almost one percent of all college graduates in the United
States are Penn State alumni.199
Vintage Brand argues that Petulla’s observation violates Federal Rule of
Evidence 701 because her lay opinion that Penn State is famous is not, and cannot
be, based on Petulla’s perception and/or is not based on her own personal
knowledge.200 Penn State responds that it does not intend to use Petulla’s testimony
to show Penn State’s fame for the purposes of trademark dilution.201 Rather, her
198
199
200
201
Doc. 122 ¶ 1.
Doc. 123-1 ¶ 6.
Doc. 136 at 9-10 (citing Adidas-Salomon AG v. Target Corp., No. CV-01-1582-ST, 2002 WL
35633578, at *4 (D. Or. Jan. 17, 2002)).
Doc. 157 at 2-3.
40
testimony “is squarely about the recognition of the University around the
country.”202
In the Court’s view, regardless of the purpose for which Penn State uses it,
Petulla’s observation that Penn State is famous cannot be based on her personal
knowledge. The only support Penn State offers is a case admitting an executive’s
opinions about a business’ particular practices.203 Petulla’s testimony goes much
farther than that and is accordingly inadmissible. The Court will therefore strike
Paragraph 1 of Penn State’s SUMF, along with Paragraph 15 and the first sentence
of Paragraph 6 of Petulla’s Declaration.
2.
Paragraphs 5 and 114 of Penn State’s SUMF
Paragraph 5 of Penn State’s SUMF reads “[t]hese students, faculty, staff, and
alumni, as well as the general public nationwide, have come to recognize and
associate the University Marks, as defined below, with goods sourced from or
licensed by Penn State,” and cites Paragraph 15 of the Petulla Declaration, a
document depicting the results of a Penn State engagement study, and the Franklyn
Report.204
202
203
204
Id. at 3.
See Webster v. Dollar Gen., Inc., 197 F. Supp. 3d 692, 701 (D.N.J. 2016) (cited in Doc. 157 at
3).
Doc. 122 ¶ 5. Paragraph 114 of Penn State’s SUMF reads: “Consumers perceive the
merchandise sold by Vintage Brand bearing the University Marks as being trademarks,” and
cites the Franklyn Report. Id. ¶ 114.
41
The relevant portion of the Petulla Declaration explains consumers’ general
recognition of the Penn State Marks, their expectation that goods displaying Penn
State Marks are of a certain standard of quality, and their desire to purchase such
goods to support Penn State.205
Vintage Brand appears to argue that Petulla lacks the personal knowledge to
support her statements in Paragraph 15 of her Declaration. Again, Vintage Brand is
correct. Petulla has no personal basis evident in her Declaration to understand
consumers’ attitudes about the Penn State Marks or the quality of Penn Statesponsored goods.
Vintage Brand next argues that the engagement study is inadmissible because
it was submitted after the discovery deadline and has no expert attached to it.206 Penn
State disclosed the ongoing study to Vintage Brand before the discovery deadline,
and therefore its late submission is entirely excusable. Penn State contends that the
study is an example of a business record, which is generally admissible under Rule
803(6) and it could authenticate it as such at trial.207 Penn State notes that other courts
have accepted similar documents in other cases, but in the one case most on point,
205
206
207
See Doc. 123-1 ¶ 15.
Doc. 136 at 6.
Doc. 157 at 8-9.
42
the court accepted the survey as admissible but concluded it had no evidentiary value
for the proponent’s claims.208
As an initial matter, the Court cannot rely on other cases finding that such
surveys constitute business records—those cases are based upon the evidence
presented therein, and this Court must make its determination based upon the
evidence presented—or not presented—by Penn State in support of its contention
that the survey is a business record.
To qualify under the business records exception to the hearsay rule, the
proponent of the evidence must demonstrate, through the testimony of the custodian
or another qualified witness, that the purported business record was: (1) made at or
near the time of the event the record describes; (2) was made by a person with
knowledge of the record’s contents; and (3) was kept in the regular course of
business.209 At oral argument this Court asked Penn State to forecast what evidence
it would offer in support of its assertion that the survey was a business record, as
Penn State provided no such evidence in its briefing; other than unsupported
statements that the survey was “done in the ordinary course of business,” Penn State
208
209
See In re EpiPen (Epinephrine Injection, USP) Mktg., Sales Practices & Antitrust Litig., 507
F. Supp. 3d 1289, 1369 (D. Kan. 2020), aff’d sub nom. In re EpiPen (Epinephrine Injection,
USP) Mktg., Sales Practices & Antitrust Litig., 44 F.4th 959 (10th Cir. 2022) (cited in id.).
Fed. R. Evid. 803(6). See also United States v. Bansal, 663 F.3d 634, 666 (3d Cir. 2011).
43
provided no genuine evidence or explanation to support its claim that the survey is
a business record.210
In absence of any explanation or evidence relating how the survey was kept
in the regular course of business, or even relating to when the report was recorded
in relation to the survey itself, the Court cannot conclude that the survey constitutes
a business record. Accordingly, Paragraphs 5 and 114 may not properly rely on that
survey.
Finally, Vintage Brand argues that the statement cannot permissibly be based
upon the Franklyn Survey 1, given the flaws inherent in that survey.211 The Court
has excluded the Franklyn Survey 1 and, as a result, agrees that Paragraphs 5 and
114 may not be based upon that evidence. Because there is no evidentiary support
for Paragraphs 5 and 114, the Court will grant Vintage Brand’s motion to strike those
paragraphs.
3.
The Wayback Machine Screenshots
Finally, Vintage Brand argues that the Court should exclude from
consideration Exhibits 3, 5, 8, 14-16, 48, and 57 because they are all screen captures
using the “Wayback Machine,” an internet application that allows users to see how
webpages appeared in the past.212 Vintage Brand argues that in the absence of a
210
211
212
Doc. 186 at 233-36.
Doc. 136 at 13.
Id. at 14-16; see Bansal, 663 F.3d at 667 (explaining the Wayback Machine).
44
witness authenticating the screenshots, they are inadmissible.213 Penn State advises
the Court that it will be able to produce an authenticating witness at trial,214 and the
Court therefore defers consideration of this aspect of Vintage Brand’s motion to
strike, pending authentication of the exhibits at trial.
D.
Penn State’s Motion to Strike Portions of Hartvigson’s Declaration
Penn State moves to strike portions of Chad Hartvigson’s declaration and their
use in Vintage Brand’s SUMF.215 Penn State seeks to strike the following portions:216
213
214
215
216
217
218
219
220
1.
“. . . all works of authorship contained thereon are believed to be in the
public domain.”217
2.
“. . . to the best of my knowledge, all of the historic images were authored
or created by third parties; none of the images were authored by [Penn
State].”218
3.
“Customers can choose to have those images printed on a range of tangible
goods. . . .”219
4.
“. . . The historic images . . . are what makes customers want to buy the
merchandise in the first place. The attractive nature of these historic
images satisfies customer preferences for a custom item with a retro look
and a nostalgic feeling, while also allowing customers to express affinity
for the team or school referred to in the historic images. Customers decide
if they like a historic image enough to place it on a t-shirt or other item and
order the product.”220
Id.
Doc. 157 at 10-11.
Doc. 141.
Doc. 142 at 4-14.
Doc. 116-2 ¶ 12.
Id. ¶ 15.
Id. ¶ 13.
Id.
45
5.
“. . . a customer’s selection of a particular digital mockup indicates that
customer’s interest in the historic image itself . . .”221
6.
“Vintage Brand does not use any historic images as a trademark.”222
With respect to the first statement, Penn State argues that Hartvigson’s
statement on his personal beliefs are inadmissible because they are subjective and
unsupported by personal knowledge.223 Vintage Brand counters that Hartvigson’s
statement is based on his belief about the law and his belief is relevant because Penn
State sues Vintage Brand for willful trademark infringement.224 The Court agrees
with Vintage Brand, and concludes that the statement is relevant to this case.225
With respect to the second statement, Penn State first offers the same
argument it did in connection with the first: that Hartvigson’s beliefs are insufficient.
Again, the Court finds them relevant to his and, by extension, Vintage Brand’s state
of mind. Penn State also argues that Hartvigson’s assertion is contradicted by his
prior deposition, in which he testified that he did not search for the artists of
memorabilia that did not have an artist listed.226
The relevant excerpt of the deposition transcript reads:
Q: And so you’ve never asked any artist their permission to use their
work?
221
222
223
224
225
226
Id. ¶ 25.
Id. ¶ 16.
Doc. 142 at 5-6.
Doc. 154 at 5-6.
Of course, the Court gives no weight to Hartvigson’s beliefs with respect to whether Vintage
Brand objectively infringed on Penn State’s trademarks.
Doc. 142 at 8.
46
A: Game tickets and programs, you know, a lot of these things—well,
most of them there’s no copyright notice, nor is there any
authorization or author established on that item. Most of these items
are throwaway, printed for one day only. A few people decided to
start collecting these things, and that’s how we’ve come across
them. But these—these are works of art that, you know, never meant
to be copyrighted.
Q: But how do you know that? I mean, have you asked the artist?
A: Most of the artists are dead.
Q: Artists from 1989 are dead?
A: Well, it is 33 years ago. But majority of the stuff that’s on our
website is from the ‘40s, ‘50s, and ‘60s.
Q: But, I mean, you don’t know ‘cause you never bothered to find the
artist, correct?
A: I haven’t searched for artists. I don’t know how you go about doing
that for items when there’s no artist listed.227
Based on the above excerpt, Vintage Brand contends that Hartvigson’s
testimony does not show that he never researched any artists, just that he did not
specifically locate artists who were unlisted.228 The Court does not find the blatant
contradiction between the two testimonies that Penn State suggests, and will not
strike that portion of Hartvigson’s declaration based on its possible inconsistency
with his deposition testimony.
227
228
Doc. 142-1 at 9-10.
Doc. 154 at 8.
47
Moving onto the third statement, Penn State contends that Hartvigson’s
assertion that customers can choose what images to have printed contradicts his prior
testimony that “a customer’s never going to just click on an image; they’re always
going to click on a product that has an image on it.”229 Penn State argues that given
Hartvigson’s “testimony conceding that Vintage Brand customers select and click
on products rather than images, Hartvigson’s contrary statements in his declaration
must be struck.”230 The Court discerns no contradiction. Based on its understanding
of Vintage Brand’s business model, customers can choose from a variety of products
depicting a variety of graphics.
Penn State next seeks to strike portions of the Hartvigson declaration
regarding customers’ motivations for purchasing Vintage Brand products because
he lacks foundation as to those customers’ motivations.231 On this point, the Court
agrees with Penn State for the same reasons it agreed with Vintage Brand that
portions of the Petulla Declaration must be stricken. Hartvigson has no basis to say
that the “[historic images] make customers want to buy the merchandise in the first
place” or “satisf[y] customer preferences” or indicate where a consumer’s “interest”
lies.232 Consequently, Paragraphs 16 and 25 of Hartvigson’s declaration will be
stricken.
229
230
231
232
Doc. 142 at 9 (quoting Doc. 142-1 at 3).
Id.
Id. at 10-11.
Doc. 116-2 ¶¶ 16, 25.
48
Finally, Penn State moves to strike Hartvigson’s statement that Vintage Brand
does not use any historic images as a trademark because it is a legal conclusion.233
However, the statement has value outside of the alleged legal proposition it contains
because it demonstrates a lack of willfulness on Hartvigson’s part, which is a
contested issue in this matter. That statement is therefore admissible. Consequently,
the Court will grant Penn State’s motion to strike only as to Paragraphs 16 and 25,
and will deny the remainder of the motion.
E.
Penn State’s Motion to Strike Portions of Hartvigson’s
Supplemental Declaration
Penn State also seeks to strike portions of Chad Hartvigson’s supplemental
declaration.234 Specifically, Penn State seeks to strike portions of Paragraphs 5 and
7:235
1.
“. . . Vintage Brand would have scanned both images below from historic
memorabilia:
233
234
235
Doc. 142 at 12.
Doc. 159.
Id. at 2-3.
49
The image on the left was most likely sourced from a decal created by a
third party around the early 1950s. . . . I believe the image on the right was
sourced from a historic ticket for the 1929 Penn State v. University of
Pennsylvania (ticket image below):”
2.
“Vintage Brand consumers typically browse or purchase merchandise
from multiple teams.”
As to the first statement, the Court concludes that Hartvigson’s assertion
regarding the first image is inappropriately speculative. With no explanation,
Hartvigson declares that it is likely that the image was culled from a decal. But
without any further explanation, it is impossible to determine that Hartvigson speaks
from any sort of personal knowledge, and it is not likely that he would possess such
knowledge. That is not the case, however, as to the second image, and Hartvigson’s
statement regarding that image appears, at this time, to be sufficiently based upon
Hartvigson’s personal knowledge. Hartvigson is intimately familiar with Vintage
Brand and its procedures for obtaining historical items; that he only “believes” that
the image was pulled from one historical item rather than another—and does not
50
know with absolute certainty—does not render his statement inadmissible. And he
points to the very historical item from which he believes the image was pulled.236
This is sufficient for the statement to be admissible at this time.
With respect to the second statement, Penn State argues that Hartvigson’s
assertion is not based on personal knowledge and is contradicted by other
testimony.237 The Court agrees with Vintage Brand that the testimony to which Penn
State cites does not explicitly contradict Hartvigson’s challenged statement.238
Moreover, there is no evidence that the statement is not based on his personal
knowledge and would appear to be within Hartvigson’s purview at Vintage Brand,
meaning the statement is admissible.239 Accordingly, Vintage Brand’s motion to
exclude portions of Hartvigson’s supplemental declaration will be granted in part
and denied in part.
F.
Vintage Brand’s Motion for Summary Judgment
Vintage Brand moves for summary judgment on:
1.
236
237
238
239
All of Penn State’s claims other than its dilution claims because there is no
actionable confusion.
The Court disagrees with Penn State’s assertion that the historical item is markedly different
from the image used by Penn State. Doc. 160 at 7. And Penn State’s argument that the image
would have required more work to edit than Vintage Brand performed on other images does
not impact the admissibility of Hartvigson’s statement..
Doc. 160 at 8-11.
See Doc. 162 at 8-11.
Regardless of its admissibility, the statement has no impact on this Court’s summary judgment
opinion.
51
2.
All of Penn State’s claims because the Penn State-related historic images
are functional when used ornamentally on merchandise.
3.
Penn State’s counterfeiting claim because the historic images are neither
substantially indistinguishable from Penn State’s purported marks nor
spurious.
4.
Penn State’s dilution claims because PENN STATE is not a famous mark.
5.
Penn State’s false advertising claim because it does not allege an
actionable false statement.
6.
Penn State’s false endorsement claim because the purported
“endorsement” comes only from Penn State’s association with the historic
images, and because Vintage Brand’s website contains numerous
disclaimers.
7.
Vintage Brand’s counterclaim to cancel the registrations for the Seal
Designs because those designs comprise the Coat of Arms of
Pennsylvania.240
1.
Willful Trademark Infringement Claim
To successfully demonstrate trademark infringement, in accordance with 15
U.S.C. § 1114(1)(a), “a plaintiff must demonstrate that (1) it has a valid and legally
protectable mark; (2) it owns the mark; and (3) the defendant’s use of the mark to
identify goods or services causes a likelihood of confusion.”241 “If a mark is both
240
241
Doc. 127 at 12-15.
A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir. 2000).
52
federally registered and ‘incontestible,’ the mark is presumed to meet the first two
requirements.”242 “The plaintiff bears the burden of proof.”243
Penn State’s marks that are at issue here are all incontestable save for one, the
Pozniak Lion Design, registration number 5,305,910.244 Vintage Brand’s motion for
summary judgment therefore rises or falls on the issue of whether its use of Penn
State’s marks causes a likelihood of confusion.
“A likelihood of confusion exists when consumers viewing the mark would
probably assume that the product or service it represents is associated with the source
of a different product or service identified by a similar mark.”245 The Third Circuit
has “developed a nonexhaustive list of factors to consider in determining whether
there is a likelihood of confusion between marks.”246 Those factors, known at the
“Lapp factors,” are:
242
243
244
245
246
Express Servs., Inc. v. Careers Exp. Staffing Servs., 176 F.3d 183, 185 (3d Cir. 1999) (internal
citation omitted). “A trademark becomes incontestable after the owner files affidavits stating
that the mark has been registered, that it has been in continuous use for five consecutive years,
and that there is no pending proceeding and there has been no adverse decision concerning the
registrant’s ownership or right to registration.” Fisons Horticulture, Inc. v. Vigoro Indus., Inc.,
30 F.3d 466, 472 n.7 (3d Cir. 1994).
A & H Sportswear, 237 F.3d at 210-11.
Vintage Brand argues in a footnote that Penn State does not own rights in the marks because
it only uses those marks in a trademark maintenance program, which does not qualify as a bona
fide use of the marks. Doc. 127 at 21 n.2. However, “[w]hether a particular use constitutes a
‘trademark maintenance program’ depends upon the specifics of the use,” and here Vintage
Brand’s arguments are insufficiently developed for the Court to reach any reasoned decision
on this particular issue. Bd. of Trustees of Univ. of Ill. v. Vintage Brand, LLC, No. 21-CV6546, 2023 WL 6388302, at *6 (N.D. Ill. Sept. 29, 2023). Accordingly, the Court will not
address Vintage Brand’s argument at this time.
A & H Sportswear, 237 F.3d at 211 (internal quotation marks omitted).
Id.
53
(1) the degree of similarity between the owner’s mark and the alleged
infringing mark;
(2) the strength of the owner’s mark;
(3) the price of the goods and other factors indicative of the care and
attention expected of consumers when making a purchase;
(4) the length of time the defendant has used the mark without evidence
of actual confusion arising;
(5) the intent of the defendant in adopting the mark;
(6) the evidence of actual confusion;
(7) whether the goods, though not competing, are marketed through the
same channels of trade and advertised through the same media;
(8) the extent to which the targets of the parties’ sales efforts are the
same;
(9) the relationship of the goods in the minds of consumers because of
the similarity of function;
(10) other facts suggesting that the consuming public might expect the
prior owner to manufacture a product in the defendant’s market, or
that he is likely to expand into that market.247
Vintage Brand offers four broad reasons why Penn State’s trademark
infringement claims fail: (1) the marks are merely ornamental; (2) Vintage Brand’s
use of the marks creates no confusion as to the source of the tangible goods; (3) the
images used by Vintage Brand are aesthetically functional; and (4) under the relevant
Lapp factors, there is insufficient likelihood of confusion.248
247
248
Id. (quoting Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983)).
Doc. 127 at 20-39.
54
a.
Ornamentality
Vintage Brand first argues that Penn State cannot prove likelihood of
confusion because consumers perceive that Penn State uses its marks for purely
ornamental/aesthetic, rather than trademark, purposes.249 Vintage Brand asserts that
there is no evidence that Penn State uses the images that appear on Vintage Brand
products as trademarks and any claims to the contrary “rely on illegitimate dissection
of the composite images” in violation of trademark law’s anti-dissection rule.250
As an initial matter, as noted above, several of the marks that Penn State seeks
to protect are incontestable. Incontestable registrations may only be challenged on
limited grounds, and a defendant cannot defend against trademark infringement
claims for incontestable registrations “on the ground that they are merely”
ornamental.251 Therefore, Vintage Brand is prohibited from presenting this defense
as to most of Penn State’s marks at issue in this case. And even if it were not, there
remains a genuine issue of material fact as to whether Penn State’s marks are merely
ornamental.
Although “[a]ny picture, design or symbol may be capable of playing the role
of a trademark, . . . a design [that] is solely or merely ornamental and does not also
249
250
251
Id. at 9-12.
Id. at 10.
Marketquest Grp., Inc. v. BIC Corp., 316 F. Supp. 3d 1234, 1264 (S.D. Cal. 2018) (citing Park
’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 (1985); 15 U.S.C. § 1115(b)).
55
identify and distinguish source” cannot be a trademark.252 “To be a trademark, a
design or ornamentation must do the job of a trademark: to identify and distinguish
a source.”253 “If customers perceive a design solely and only as attractive
ornamentation, then the design is not a trademark.”254 “If customers perceive a
design as not only attractive, but also as an indicator of source, then it is a
trademark.”255
A registration fails on this ground when its overall commercial impression is
“solely as attractive ornamentation” and not “also as a symbol that identifies and
distinguishes a single source.”256 In assessing aesthetic ornamentation—the first half
of this conjunctive requirement—courts have considered the symbol’s “size,
location[,] and dominance,” and whether it is accompanied by a ™ or ®.257 Sitting
at the non-ornamental end of this continuum are the small symbols affixed to the tag
of a shirt or stamped on the bottom of a mug. On the ornamental side stand the large,
dominant, and centrally located symbols, such as shirts with text emblazoned across
the chest or a coaster with a mascot featured across the top. As this Court has
previously noted, Penn State’s marks appear to fall into the latter category.258
252
253
254
255
256
257
258
MCCARTHY § 7:24.
Id.
Id.
Id.
Id. § 7:81; see Macy’s Inc. v. Strategic Marks, LLC, No. 11-CV-06198-EMC, 2016 WL
374147, at *3 (N.D. Cal. Feb. 1, 2016); Bobosky v. Adidas AG, 843 F. Supp. 2d 1134, 1145
(D. Or. 2011).
Bobosky, 843 F. Supp. 2d at 1145.
Doc. 43 at 5.
56
But that finding does not settle the matter. The ornamentality requirement is
conjunctive; that “a design is pleasing to the eye and serves a decorative purpose
does not mean that the design cannot also serve a trademark purpose.”259 The Court
must also consider whether the marks “identify and distinguish” the goods. This
requirement, which invokes the Lanham Act’s definition of a trademark, broadens
the analysis to the fundamental trademark question: does the mark serve a source
identifying function?260 And here, the parties’ understanding of the law diverges.
Vintage Brand contends that a mark only serves a source identifying function
if it indicates the source of the tangible goods themselves.261 And since the Penn
State Marks do not indicate the source of the tangible goods sold by Vintage Brand,
they are merely ornamental.262 Penn State in turn argues that marks serve a source
identifying function if they indicate the secondary source of the marks263—i.e.
“sources such as licensors who authorize licensees to use the licensor’s trademark in
a manner that indicates sponsorship or authorization of the product.”264 Because,
Penn State asserts, it has proffered evidence demonstrating that its marks indicate it
as a secondary source, the marks are not merely ornamental.265
259
260
261
262
263
264
265
MCCARTHY § 7:24.
Id. § 7:81 (“The ‘merely ornamental’ rule is simply a facet of the basic trademark factual
question: is the disputed feature in fact perceived by customers as a trademark or not?”).
Doc. 127 at 23-25.
Id.
Doc. 143 at 28-29.
Ducks Unlimited, Inc. v. Boondux, LLC, No. 214CV02885SHMTMP, 2017 WL 3579215, at
*23 (W.D. Tenn. Aug. 18, 2017).
Doc. 143 at 28-29.
57
As this Court stated in ruling on Penn State’s motion to dismiss, it is not
willing to adopt the per se approach utilized by the Trademark Trial and Appeal
Board (“TTAB”), wherein the use of a university’s marks will always identify that
university as a sponsor of the physical goods.266 However, neither is the Court
willing to adopt the opposite position advocated for by Vintage Brand—that the use
of a mark is ornamental unless it is perceived as indicative only of the source of the
tangible product itself.267
Rather, the ground staked out by numerous other courts—and the ground that
seems to be proposed by amicus counsel—is the better position.268 Those courts have
held that a plaintiff must demonstrate that the use of a “mark[] is likely to create
consumer confusion as to origin, source, approval, affiliation, association, or
sponsorship,” not merely as to the source of the tangible good itself.269 This test is
consistent with the plain language of the statute, and adequately addresses the
interests of the mark holder in protecting its reputation270 while permitting the free
266
267
268
269
270
Doc. 43 at 9-10, 16-17.
Doc. 127 at 23-25.
See Doc. 167 at 18 (“This Court can properly refocus infringement analysis on confusion about
source or sponsorship of the product, rather than of the trademark” (emphasis added)).
Savannah Coll. of Art & Design, Inc. v. Sportswear, Inc., 872 F.3d 1256, 1264 (11th Cir. 2017).
The mark holder may, for instance, be concerned with the prospect of being associated with a
goods manufacturer whose practices are in opposition to the values mark holder—i.e., perhaps
the manufacturer uses child labor, or engages in strong political activities when the mark holder
prefers to express only neutrality on political topics.
58
market to operate in ways that do not deceive consumers or diminish the rights or
interests of the mark holder.271
Applying that standard here, the Court cannot conclude that, as a matter of
law, Penn State’s marks are merely ornamental. Relevant to that inquiry is Professor
Franklyn’s second survey, which raises questions as to whether Penn State’s marks
identify it as a secondary source when used on Vintage Brand’s goods.272 In that
survey, respondents were asked to examine the three images shown below—with
Cell C being a control cell273—and identify who made the tangible goods.274
271
272
273
274
See 15 U.S.C. § 1125(a)(1)(A) (a trademark claim may lie where use of a mark “is likely to
cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or
association of such person with another person, or as to the origin, sponsorship, or approval of
his or her goods, services, or commercial activities by another person”).
Although Vintage Brand sought to exclude Franklyn’s Survey 1, it did not move to exclude
the second survey, which this Court describes below.
According to Franklyn, “[t]he role of the control cell is to account for noise in the dataset (i.e.
could any shirt offered on the Vintage Brand website create a latent connection with a
university or Penn State specifically).” Doc. 94-2 at 40.
Id. at 27-29.
59
Cell A
Cell B
60
Cell C
The vast majority of respondents correctly identified Vintage Brand as the
manufacturer, with 5% identifying Penn State as the manufacturer for Cell A, and
9% identifying Penn State as the manufacturer for Cell B.275 When those same
respondents were asked whether the product was sponsored or approved by another
entity, 30% believed that the product in Cell A was sponsored or approved by
another institution, while 43% believed it was not, and 35% believed that the product
in Cell B was sponsored or approved by another institution, while 36% believed it
was not.276 However, 20% of respondents believed that the item in Cell C was
sponsored or approved by another institution, with 36% believing it was not.277 “This
275
276
277
Id. at 39-40.
Id. at 41.
Id.
61
creates a net of 10 to 15% sponsorship or affiliation.”278 In Cell A, 16% of
respondents identified Penn State as the sponsor or affiliate, while 20% did so in
Cell B.279
Respondents were far less clear in answering whether they believed the
company that made the products were affiliated with another company: 19%
responded in the affirmative for Cell A, 21% for Cell B, and 22% for Cell C, while
48% responded in the negative for Cell A, 44% for Cell B, and 36% for Cell C.280 In
both Cell A and Cell B 11% of respondents identified the affiliate as Penn State,
whereas in Cell C 0% identified the affiliate as Penn State.281
Finally, the survey also measured whether respondents believed that any of
the products were licensed by a company or institution.282 Many of the respondents
believed they were: 43% for Cell A, 52% for Cell B, and 50% for Cell C.283 In answer
to whether the respondents believed the product was not licensed, 31% answered
affirmatively for Cell A, 28% for Cell B, and 8% for Cell C.284 In Cell A, 7% of
respondents identified the licensor as Penn State, while 12% said so for Cell B, and
0% provided that answer for Cell C.285
278
279
280
281
282
283
284
285
Id.
Id.
Id. at 42.
Id. at 42-43.
Id. at 43.
Id.
Id.
Id. at 44.
62
From this data, Franklyn “created a composite metric, which aggregated
responses” and “included consumers who were confused as to source, sponsorship,
affiliation, or licensure and indicated Penn State or ‘college, university, NCAA’
within their open-ended responses.”286 He concluded that, for Cell A, “31% of
consumers were confused as to source, sponsorship, affiliation, or licensure and
mentioned ‘Penn State’ or ‘college, university, NCAA’, with 28% explicitly
mentioning ‘Penn State.’”287 As to Cell B, “43% of consumers were confused as to
source, sponsorship, affiliation, or licensure and mentioned ‘Penn State’ or ‘college,
university, NCAA’, with 37% explicitly mentioning ‘Penn State.’”288 And, with Cell
C, “4% of consumers were confused as to source, sponsorship, affiliation, or
licensure and mentioned ‘Penn State’ or ‘college, university, NCAA’, with 0%
explicitly mentioning ‘Penn State.’”289
While that survey was primarily concerned with determining whether the use
of Penn State’s marks created a likelihood of confusion, it also reveals something
about whether the marks are perceived as identifying a secondary source of those
goods.290 That survey reveals that many of the respondents believe the marks identify
a secondary source—often Penn State. And while the Court has concerns about
286
287
288
289
290
Id.
Id.
Id.
Id. at 45.
Vintage Brand raises issues that it claims render Franklyn’s survey inherently unreliable. Doc.
127 at 31-34. Again, however, Vintage Brand has not moved to exclude Franklyn’s survey.
63
whether this survey is influenced by a consumer belief that, as a legal matter,
permission must be obtained to use a university’s logos, images, or marks, that issue
has not been offered as a ground to exclude the survey, and therefore must be left to
a jury to evaluate.
This is not to say that Penn State’s evidence is incontrovertible. To the
contrary, in addition to the Erdem survey data presented by Vintage Brand, other
evidence raises questions as to whether consumers view the marks as indicators of
primary or secondary source. As Vintage Brand notes, under its licensing
agreements, Penn State requires that licensees attach a label to all goods that states
they are officially licensed by Penn State.291 The very fact that Penn State requires
such labels indicates that the marks themselves may not be source indicators, and
something more is required to direct consumers to the primary or secondary source
of the goods.
Nevertheless, Penn State’s evidence is sufficient, at the summary judgment
stage, to defeat any claim that the marks are merely ornamental. Accordingly,
Vintage Brand is not entitled to summary judgment on this ground.
b.
Aesthetic Functionality
The Court turns next to the question of whether Penn State’s marks are
aesthetically functional, and therefore not protectable. Vintage Brand argues that the
291
Id. at 18.
64
marks are aesthetically functional because consumers purchase goods featuring the
marks “for reasons independent of any source-related meaning”—that is, they buy
such goods for the sole purpose of expressing affiliation with Penn State.292 Because
the marks are central to any goods’ uses, and because depriving Vintage Brand of
use of the marks would place it at a significant, non-reputational disadvantage in
sourcing Penn State-related goods, it argues that the marks are aesthetically
functional and non-trademarkable.293
It is well established that, regardless of whether a mark is protected, and
whether a competitor’s use of that mark is likely to cause confusion, “the competitor
can nevertheless prevail [on a trademark infringement claim] by showing that the
mark is functional—a traditional defense to the enforcement of a trademark.”294 A
mark is functional even if it is only aesthetically functional, rather than functional in
a utilitarian sense.295 The United States Supreme Court has
explained that, in general terms, a product feature is functional, and
cannot serve as a trademark, if it is essential to the use or purpose of the
article or if it affects the cost or quality of the article, that is, if exclusive
use of the feature would put competitors at a significant non-reputationrelated disadvantage.296
292
293
294
295
296
Doc. 127 at 38; see id. at 38-39.
Id. at 38-39.
Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 217 (2d Cir.
2012) (brackets, ellipsis, and internal quotation marks omitted).
Id.
Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 165 (1995) (brackets and internal quotation
marks omitted). See also Ezaki Glico Kabushiki Kaisha v. Lotte Int’l Am. Corp., 986 F.3d 250,
257-58 (3d Cir. 2021) (discussing doctrine).
65
Where a mark meets that definition, it is considered functional “even if there
is ‘no indication that the mark has any bearing on the use or purpose of the product
or its cost or quality.’”297 Consequently, while trademark protection is improper
where it “would significantly hinder competition by limiting the range of adequate
alternative designs,” “distinctive and arbitrary arrangements of predominantly
ornamental features that do not hinder potential competitors from entering the same
market with differently dressed versions of the product are . . . eligible for trademark
protection.”298 Stated differently, “aesthetic functionality, mean[s] a design that
communicates the use, purpose, cost, or quality of the product in a way that
competitors cannot avoid replicating without incurring costs.”299
In making a determination regarding aesthetic functionality, “courts must
carefully weigh the competitive benefits of protecting the source-identifying aspects
of a mark against the competitive costs of precluding competitors from using the
feature.”300 Furthermore, courts must “take care to ensure that the mark’s very
success in denoting (and promoting) its source does not itself defeat the
markholder’s right to protect that mark.”301 “Because aesthetic function and
297
298
299
300
301
Christian Louboutin, 696 F.3d at 220 (quoting TrafFix Devices, Inc. v. Mktg. Displays, Inc.,
532 U.S. 23, 33 (2001) (brackets omitted)).
Id. at 222 (brackets and internal quotation marks omitted).
DayCab Co., Inc. v. Prairie Tech., LLC, 67 F.4th 837, 847 (6th Cir. 2023) (internal quotation
marks omitted).
Christian Louboutin, 696 F.3d at 222 (internal quotation marks omitted).
Id.
66
branding success can sometimes be difficult to distinguish, the aesthetic
functionality analysis is highly fact-specific.”302
As the United States Court of Appeals for the Sixth Circuit has noted, “there
are few aesthetic designs that are so fundamental to an industry that competitors
cannot fairly compete without free use of them.”303 “Accordingly, a party’s initial
burden to show that a design lacks aesthetic functionality is not substantial; the
plaintiff need only show that the design is not a competitive necessity such that
exclusive use would put competitors at a significant non-reputation related
disadvantage.”304
Using these standards as a benchmark, it is clear that the available evidence
demonstrates that, at the summary judgment stage, Penn State has met its “not
substantial” burden to demonstrate that prohibiting Vintage Brand from using the
challenged marks would not place Vintage Brand at a significant non-reputational
disadvantage.305
As an initial matter, neither party has attempted to define the “relevant
market” that must be used to assess whether the Penn State Marks are aesthetically
functional. In the Court’s view, there are two likely markets that could apply to Penn
State’s Marks: the collegiate goods market in general, or the Penn State-branded
302
303
304
305
Id.
DayCab Co., Inc., 67 F.4th at 848 (brackets and internal quotation marks omitted).
Id. (ellipsis and internal quotation marks omitted).
Id.
67
goods market specifically. The Court need not assess which market is at play here306
because, even accepting the narrower definition, it cannot be said, as a matter of law,
that Penn State’s exclusive use and control of its marks would put Vintage Brand at
a significant non-reputation related disadvantage.
It is not necessary for Vintage Brand to use the specific Penn State Marks to
compete in the athletics apparel marketplace or even the Penn State apparel
marketplace. For example, Vintage Brand could use non-trademarked Penn State
historical images that omit the Penn State Marks.307 Or Vintage Brand could use its
own creative language to attempt to entice Penn State supporters to purchase its
goods.308 Vintage Brand could even seek to use non-protected color schemes to
invoke Penn State in the minds of consumers without infringing upon any trademark.
For instance, many alumni and supporters or Syracuse University or Bucknell
University would undoubtedly associate a bright orange and navy blue necktie with
their favored university—and likely purchase such goods—even if that tie lacked
any marks that explicitly associated it with those universities.
306
307
308
See Vitamins Online, Inc. v. Heartwise, Inc., 71 F.4th 1222, 1240-41 (10th Cir. 2023) (outlining
considerations for defining the scope of the relevant market). It seems likely, based on those
considerations, that the narrow definition is appropriate here although, in the absence of any
briefing on this issue, the Court declines to take any firm position on the matter.
Vintage Brand’s brief in support of its motion for summary judgment at ECF pages 17 and 27
contain several attractive images that appear to be usable if Vintage Brand were to omit
trademarks from the image such as the words “PENN STATE.”
For example, companies are prohibited from using the term “Super Bowl” without
authorization; many creative companies skirt this prohibition by using terms such as “the Big
Game”—a reference that any fan of the National Football League instantly recognizes.
68
Although prohibiting Vintage Brand from using the Penn State Marks would
undoubtedly place Vintage Brand at a disadvantage in trying to win over Penn State
supporters, the evidence is simply insufficient at this stage to describe that
disadvantage as significant. Consequently, there remains a genuine issue of material
fact as to whether the marks are aesthetically functional, and summary judgment on
that ground will be denied.
As a final note, the Court cannot ignore the practical impact of any ruling that
finds a university’s marks are aesthetically functional because consumers wear
goods bearing those marks only to express support for the institution itself. This
would essentially render those marks wholly unprotectable, even if use of the marks
would lead to confusion regarding the source or sponsorship of the product. Such a
conclusion would stray dangerously close to the polar opposite of the per se approach
rejected by this Court, and would mean that no trademark for universities would ever
be valid for tangible goods. That is a conclusion that the Court cannot adopt.
c.
Likelihood of Confusion and Balancing of the Lapp
Factors
Finally, Vintage Brand asserts that consideration of the relevant Lapp factors
demonstrates an absence of confusion.309 Specifically, Vintage Brand contends that
there is no evidence of actual confusion, no evidence that Vintage Brand intended to
confuse the public, or any evidence that the marks are strong trademarks for
309
Doc. 127 at 34-38.
69
merchandise or similar to the composite historical images used by Vintage Brand.310
As Vintage Brand notes, “the burden of proving likelihood of confusion rests with
the plaintiff,” even where the mark is incontestable.311
A review of the available evidence, as applied to the relevant Lapp factors,312
demonstrates that there are factual conflicts that may not be reconciled by this Court
but, rather, must be left to a jury to resolve. First, there is some “degree of similarity
between [Penn State’s] mark and the alleged infringing” products sold by Vintage
Brand, as those products and the images they bear incorporate Penn State Marks.313
And although Vintage Brand uses composite images that, as a general matter, do not
appear to identically copy the Penn State Marks, as Penn State correctly notes, the
marks must be viewed with respect to the overall impression they make, such that
certain changes and additions to the marks do not necessarily mean that the marks
are not confusingly similar.314 The direct copying of portions of the Penn State Marks
into Vintage Brand’s composite images means that a jury could reasonably find that
310
311
312
313
314
Id.
KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004).
The parties do not dispute that four factors are not relevant here, those factors being: factor 4,
the length of time the defendant has used the mark without evidence of actual confusion
arising; factor 7, whether the goods, though not competing, are marketed through the same
channels of trade and advertised through the same media; factor 8, the extent to which the
targets of the parties’ sales efforts are the same; and factor 10, other facts suggesting that the
consuming public might expect the prior owner to manufacture a product in the defendant’s
market, or that he is likely to expand into that market. Compare Doc. 127 at 34-38 with Doc.
143 at 29-42.
A & H Sportswear, 237 F.3d at 211.
See Doc. 143 at 30 (citing Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 477
(3d Cir. 1994)).
70
the images used by Vintage Brand are similar to Penn State’s Marks; a jury could
likewise conclude that the marks are not similar.315 This factor is therefore neutral.
Second, as to the strength of the owner’s marks, they are somewhat strong.
Penn State has used the marks exclusively for many years, and has licensed those
marks for use on a variety of goods and apparel.316 The strength of these marks lends
in favor of finding confusion.
Third, “the price of the goods and other factors indicative of the care and
attention expected of consumers when making a purchase,” which is functionally
equivalent to asking how sophisticated the consumers are, is fairly difficult to
parse.317 Penn State has provided no evidence whatsoever that consumers seeking to
purchase Penn State products are not sophisticated. On the one hand, one could
easily imagine that many alumni of Penn State are sophisticated and discerning when
it comes to purchasing products that demonstrate their support of their alma mater.
On the other hand, one could just as easily imagine consumers being unsophisticated
in their purchases—perhaps a fair-weather fan looking for a sweatshirt to wear to
the single Penn State football game that he will attend. But one imagines that the
first scenario is more likely, and devotees of Penn State will be discerning in their
purchase of Penn State-related merchandise, similar to how “consumers will be
315
316
317
This is discussed in more detail below in addressing Penn State’s motion for summary
judgment.
Doc. 122 ¶¶ 7, 9-11, 14-17, 24-27, 30-34, 42-45.
A & H Sportswear, 237 F.3d at 225.
71
discriminating in their selection of swimwear.”318 Given the lack of evidence here,
however, this factor is neutral or weighs only slightly in Vintage Brand’s favor.319
As to the fifth factor, Vintage Brand’s intent in allegedly infringing upon Penn
State’s Marks, Penn State argues that intent may be inferred by Vintage Brand’s
decision to conduct preclearance trademark searches.320 But this tells only part of the
story. As Vintage Brand notes, the website where consumers go to purchase its
products is replete with disclaimers noting that Vintage Brand has no affiliation with
any university.321 Vintage Brand’s mark appears on many of its goods, and none of
the goods contain an official label that would mark the product as having been
endorsed by Penn State.322 This evidence is critical, since mere evidence of an intent
to copy is insufficient to satisfy this factor; the defendant must have intended “to
confuse consumers.”323
Vintage Brand’s use of disclaimers indicates a lack of intent to deceive, even
if other evidence may hint at intent. As the law professor amicus brief notes, such
“clear labeling can indicate that the goods are (or are not) authorized by the
318
319
320
321
322
323
Id.
Penn State asserts that Vintage Brand’s products are sold at relatively low prices, indicating
that customers would assume the goods were offered by the same source. Doc. 143 at 34.
However, Penn State provides no legal support for this proposition. And even if there were
support for its argument, the examples used in Franklyn’s second survey tends to undercut any
assertion that the goods are sold at low prices. See Doc. 94-2 at 27-29.
Doc. 143 at 41-42.
Doc. 128 ¶¶ 13-14, 16-17.
Id. ¶ 19.
A & H Sportswear, 237 F.3d at 225-26.
72
trademark holder.”324 Given the available evidence that Vintage Brand did not intend
to confuse consumers—balanced somewhat by some evidence of possible intent—
this factor weighs slightly in Vintage Brand’s favor.
As to one of the most critical factors, actual confusion, Penn State has offered
some evidence of confusion. First, Penn State points to some testimonial evidence
of actual confusion, although as Vintage Brand points out the testimony itself is not
definitive.325 Moreover, the second Franklyn survey—discussed previously—
demonstrates that consumers may actually be confused about the source of Vintage
Brand’s products despite the use of disclaimers.326 This tends to indicate actual
confusion.327
Of course, in contrast Vintage Brand has presented Erdem’s survey, which
indicates no likely confusion as to Vintage Brand’s products and alleged use of Penn
State’s Marks.328 While both Vintage Brand and Penn State attempt to undermine
324
325
326
327
328
Doc. 167 at 19.
Doc. 143 at 35-36. But see Doc. 127 at 35-36 (Vintage Brand explaining weaknesses in Penn
State’s testimonial evidence of actual confusion).
Doc. 94-2 at 39-45.
Professorial amicus argues that any potential for confusion is adequately addressed through
the use of clear labeling and disclaimers. Doc. 167 at 19-21. The assertion that there may be
circumstances where consumers believe, at a minimum, that university sponsored tangible
goods by creating partnership with producer or authorizing production, and that labeling can
dispel any such confusion, is cogent and well taken. But here there are issues of fact—
described previously—that preclude any conclusion that the use of disclaimers here prevented
confusion. Under the fact-intensive approach set forth by numerous other courts, and as
adopted by the Court here, there remains a genuine issue of material fact as to whether
consumers were confused by Vintage Brand’s use of Penn State’s marks, or whether its
disclaimers were sufficient to avoid liability for trademark infringement.
See Doc. 94-7 at 31-45.
73
each other’s expert surveys, these arguments “go to the weight of the survey”329 and
it must be left to the jury to ultimately conclude which survey merits greater weight.
This factor therefore, at most, weighs slightly in Penn State’s favor, although clear
issues of fact here would preclude summary judgment.
Finally, as to the ninth factor, “the relationship of the goods in the minds of
consumers because of the similarity of function,”330 this factor again compels the
denial of summary judgment, as it leads to a genuine issue of material fact that
requires resolution by a jury. As Penn State notes, its marks appear on a variety of
officially sanctioned goods similar to those offered by Vintage Brand.331 But while
Vintage Brand’s goods are similar in function and are alleged to feature Penn State’s
Marks, the images used are composites that are different in appearance than any used
by Penn State or licensed by Penn State. And more importantly, Vintage Brand’s use
of disclaimers on its website arguably distances the relationship of the goods in the
minds of consumers. Ultimately, the available evidence simply does not permit the
Court to conclude, as a matter of law, that this factor weighs either in Penn State’s
favor or Vintage Brand’s favor.
In sum, a balancing of all relevant factors demonstrates insufficient strength
to merit summary judgment in Vintage Brand’s favor. Rather, there remain
329
330
331
P & P Imports LLC v. Johnson Enterprises, LLC, 46 F.4th 953, 963 (9th Cir. 2022) (internal
quotation marks omitted).
A & H Sportswear, 237 F.3d at 211.
Doc. 143 at 34; see Doc. 122 ¶¶ 13, 19, 29, 37, 40, 41, 47.
74
significant factual issues as to the Penn State’s claim of trademark infringement that
preclude summary judgment. Accordingly, Vintage Brand’s request for summary
judgment on that claim will be denied.
2.
Counterfeiting Claim
The Court next turns to Vintage Brand’s assertion that it is entitled to
summary judgment as to Penn State’s counterfeiting claim. Vintage Brand argues
that Penn State’s claim is not colorable because: (1) Penn State’s claim is overbroad
as many of the marks apply only to goods that Vintage Brand has never sold; (2)
Vintage Brand’s composite images are not substantially indistinguishable from Penn
State’s marks, particularly since Vintage Brand’s own trademark is displayed on its
ordering website and packaging; (3) there is no likelihood of confusion; and (4)
Vintage Brand’s designs do not indicate who made the underlying product, meaning
no reasonable person could believe that Penn State produced the products.332
The Court agrees that Vintage Brand is entitled to summary judgment as to
Penn State’s counterfeiting claim. Under the Lanham Act, a counterfeit mark is
defined as, inter alia, “a counterfeit of a mark that is registered on the principal
register in the [USPTO] for such goods or services sold, offered for sale, or
distributed and that is in use.”333 The Lanham Act further defines a counterfeit as a
332
333
Doc. 127 at 40-45. With respect to Vintage Brand’s last argument, as discussed above the Court
rejects the assertion that confusion may relate only to the producer of the goods.
15 U.S.C. § 1116(d)(1)(B)(i).
75
“spurious mark which is identical with, or substantially indistinguishable from, a
registered mark.”334
“Although ‘spurious’ is not a statutorily defined term under the Lanham Act,
courts . . . have defined it as ‘deceptively suggesting an erroneous origin; fake.’”335
Therefore, courts have explained that “counterfeiting occurs only where the
substantially identical mark is used ‘to pass off the infringer’s product as the original,
rather than merely presented in a manner likely to confuse some consumers as to the
origin or sponsorship of the infringer’s product.’”336
Here, the evidence simply does not demonstrate that Vintage Brand’s alleged
use of the Penn State Marks is likely to cause confusion as to the origin of the goods
sold by Vintage Brand. First, it is nearly impossible to believe that any rational
consumer would expect that an institution of higher education produces its own
merchandise and, therefore, equally difficult to believe that any consumer would be
confused as to the origin of Vintage Brand’s goods that carry the Penn State Marks.
Second, it is undisputed that Vintage Brand’s mark appears at the top of its webpage,
is placed prominently on all packaging containing Vintage Brand’s goods, and many
334
335
336
Id. § 1127.
Antetokounmpo v. Paleo Prods. LLC, No. 20-CV-6224 (JGK), 2021 WL 4864537, at *2
(S.D.N.Y. Oct. 18, 2021). See also Lontex Corp. v. Nike, Inc., 384 F. Supp. 3d 546, 555 (E.D.
Pa. 2019) (adopting same definition of spurious).
Ill. Tool Works Inc. v. J-B Weld Co., LLC, 469 F. Supp. 3d 4, 10 (D. Conn. 2020) (quoting
Fujifilm N. Am. Corp. v. PLR IP Holdings, LLC, No. 17 CIV. 8796 (NRB), 2019 WL 274967,
at *3 (S.D.N.Y. Jan. 7, 2019)).
76
of Vintage Brand’s products are labeled with that mark.337 Given that Vintage Brand
placed its own mark “prominently on the packaging,” “it is implausible that a
consumer would be deceived.”338
Penn State nevertheless argues that there need not be confusion solely as to
the producer of the goods, and confusion as to sponsorship or affiliation is
sufficient.339 But nothing in the Lanham Act compels such a reading. While the
Lanham Act directly states that trademark infringement may occur where there is
likely confusion as to, inter alia, sponsorship or approval of the goods,340 it provides
no such definition for counterfeiting claims.341 Rather, as explained above, the
Lanham Act defines counterfeit as the spurious use of a mark,342 and spurious is best
understood to mean something that is fake or deceptively suggesting an erroneous
origin.343
This definition precludes Penn State’s desired interpretation of the statute. An
improper use of a mark that only suggests an erroneous affiliation or sponsorship
cannot be said to suggest an erroneous origin; those are distinct concepts.
Counterfeiting is an attempt to make consumers believe that certain goods are the
genuine article, not that the goods are made by a different company that has been
337
338
339
340
341
342
343
Doc. 153 ¶¶ 12, 19.
Arcona, Inc. v. Farmacy Beauty, LLC, 976 F.3d 1074, 1081 (9th Cir. 2020).
Doc. 143 at 47-48.
15 U.S.C. § 1125(a)(1)(A).
Id. § 1116(d)(1)(B)(i).
Id. § 1127.
Lontex Corp., 384 F. Supp. 3d at 555.
77
endorsed by the mark holder. Therefore, this Court agrees with other courts that have
concluded counterfeiting does not occur when a product is “merely presented in a
manner likely to confuse some consumers as to the origin or sponsorship of the
infringer’s product.”344
There is simply no evidence from which a jury could conclude that Vintage
Brand used Penn State’s Marks in a manner deceptively suggesting an erroneous
origin or that the goods were fake Penn State goods. Consequently, Vintage Brand
is entitled to judgment in its favor as to Penn State’s counterfeiting claim.
3.
Dilution Claim
Turning to Penn State’s dilution claim, Vintage Brand first argues that the
PENN STATE text mark is not famous, as: the term is geographically descriptive
and therefore not distinctive; evidence of sales and advertising is insufficient to
permit and inference of fame; and there is insufficient evidence of actual recognition
of the PENN STATE text mark.345 Second, Vintage Brand contends that the historic
designs its uses are not sufficiently similar to the PENN STATE text mark to support
a dilution claim.346 Third, Vintage Brand asserts that it is not using the historic
images as trademarks, and therefore its use does not fall within the anti-dilution
statutes.347 Fourth, Vintage Brand submits that Penn State cannot establish any likely
344
345
346
347
Ill. Tool Works Inc., 469 F. Supp. 3d at 10.
Doc. 127 at 45-51.
Id. at 51.
Id. at 51-52.
78
or actual dilution, as there is no evidence of actual dilution and no likely dilution
since “Penn” refers to both a state and another university, there was uncontrolled use
of the words “PENN STATE” prior to 1982, and dilution by tarnishment cannot
apply to Vintage Brand’s use of the mark, as it celebrates the positive history of Penn
State’s athletic programs.348
“The federal cause of action for trademark dilution grants extra protection to
strong, well-recognized marks even in the absence of a likelihood of consumer
confusion—the classical test for trademark infringement—if the defendant’s use
diminishes or dilutes the strong identification value associated with the plaintiff’s
famous mark.”349 “The dilution doctrine is founded upon the premise that a gradual
attenuation of the value of a famous trademark, resulting from another’s
unauthorized use, constitutes an invasion of the senior user’s property rights in its
mark and gives rise to an independent commercial tort for trademark dilution.”350 To
establish a federal claim of dilution, a plaintiff must demonstrate:
1. The plaintiff is the owner of a mark that qualifies as a “famous” mark
in light of the totality of the eight factors listed in § 1125(c)(1),
2. The defendant is making commercial use in interstate commerce of
a mark or trade name,
3. Defendant’s use began after the plaintiff’s mark became famous, and
348
349
350
Id. at 52-53.
Times Mirror Mags., Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157, 163 (3d Cir. 2000).
Id.
79
4. Defendant’s use causes dilution by lessening the capacity of the
plaintiff’s mark to identify and distinguish goods or services.351
The standard for a dilution claim under Pennsylvania law is substantially similar, but
is limited to acts within Pennsylvania, and requires actual dilution, rather than likely
dilution as is required under federal law.352
Regardless of whether the PENN STATE Mark qualifies as famous under the
statute,353 Penn State’s dilution claims fail for two reasons: the mark as used by
Vintage Brand is not substantially similar to Penn State’s Mark, and there is no
evidence that Vintage Brand’s use of the mark lessens the capacity of Penn State’s
Mark to identify and distinguish goods or services.
First, as other courts have noted, “a dilution plaintiff must be threatened by a
very similar, if not identical, mark.”354 “Courts have repeatedly rejected dilution
claims unless the marks are essentially the same” and “differences such as the use
351
352
353
354
Id.
Dille Fam. Tr. v. Nowlan Fam. Tr., 207 F. Supp. 3d 535, 548 (E.D. Pa. 2016); Pa. State Univ.
v. Parshall, No. 4:19-CV-01299, 2022 WL 2712051, at *15 (M.D. Pa. Feb. 17, 2022), report
and recommendation adopted, No. 4:19-CV-01299, 2022 WL 2714998 (M.D. Pa. Mar. 31,
2022).
See Times Mirror Mags, 212 F.3d at 163 (listing eight non-exclusive factors for courts to
consider in determining whether a mark is famous). This Court has stricken as least some of
Penn State’s evidence in favor of its asserted fame.
Pharmacia Corp. v. Alcon Lab’ys, Inc., 201 F. Supp. 2d 335, 379 (D.N.J. 2002) (collecting
cases).
80
of house marks ‘alone’ can defeat dilution claims.”355 Even the use of “a different
font renders the marks at issue different” and weakens any claim of dilution.356
Here, the images used by Vintage Brand are different than the PENN STATE
Mark, even if only subtly. A number of Vintage Brand’s products that use the mark
contain additional elements, such as, for example, a lion holding a football, a circular
image containing an alligator and words stating “GATOR BOWL” and
“JACKSONVILLE FLORIDA,” a circular image of a man running through cotton
accompanied by the words “Cotton Bowl” and “DALLAS TEXAS,” a highly
stylized lion cub with a snarling face, a circular image of a masted ship, and a frontal
image of a lion’s face accompanied by the words “I LIKE PENN STATE.”357 The
aforementioned images are depicted below:
355
356
357
Id. (quoting Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1209-10
(1st Cir. 1983)).
Healthbox Glob. Partners, LLC v. Under Armour, Inc., No. CV 16-146-SLR, 2016 WL
3919452, at *9 (D. Del. July 19, 2016).
Doc. 128 ¶¶ 15, 18, 19, 22.
81
Additionally, many of Vintage Brand’s finished products include its own
house mark on the product,358 as depicted below:
These additional words and/or images, along with Vintage Brand’s inclusion
of its own trademarks on the finished products and multiple disclaimers of any
affiliation with any university undercut the assertion that Vintage Brand’s use of the
PENN STATE Mark is sufficiently similar to the mark itself so as to amount to
actionable dilution.
For example, in Healthbox Glob. Partners, LLC v. Under Armour, Inc., the
court found that the marks at issue were sufficiently distinguishable so as to defeat
358
Id. ¶ 19.
82
a claim of dilution where the defendant had used a different font and included its
own trademark, despite using the identical term “Healthbox.”359 And in Astra
Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., the United States Court
of Appeals for the First Circuit found no actionable dilution despite defendant’s use
of the identical “ASTRA” mark because the defendant also printed its own name in
full view on the products it produced, and made clear during sales negotiations that
it, and not the plaintiff, produced the product.360
Similarly, here Vintage Brand uses additional symbols and words in its
products to accompany the PENN STATE Mark, which distinguishes Vintage
Brand’s products.361 Vintage Brand also uses its own trademark on many of its
products, and its website not only prominently features its name, but disclaims any
affiliation with any university. These acts distinguish Vintage Brand’s use of the
relevant mark and, because its mark and the PENN STATE Mark are not “essentially
the same,”362 the available evidence compels the conclusion that no dilution has
occurred here.
Second, Penn State’s dilution claims fail because there is no evidence that
Vintage Brand’s use of the PENN STATE Mark “causes dilution by lessening the
359
360
361
362
2016 WL 3919452 at *9.
718 F.2d 1201, 1209 (1st Cir. 1983).
See also Pharmacia Corp., 201 F. Supp. 2d at 379 (collecting cases).
Id.
83
capacity of the plaintiff’s mark to identify and distinguish goods or services.”363 As
Penn State notes, “the central issue” is “whether Vintage Brand’s use of the PENN
STATE Mark lessens the degree to which consumers associate that mark with Penn
State.”364
Penn State points to no evidence that this has occurred. To the contrary, the
parties seem to agree in their briefs that consumers are likely buying Vintage Brand’s
Penn State-related goods because they wish to express some form of affiliation with
Penn State—they only disagree on whether they are purchasing goods from Vintage
Brand because of confusion of whether Vintage Brand is officially linked to Penn
State.365 This would not seem to lead to any dilution of the PENN STATE mark;
rather, it would appear that Penn State implicitly agrees that Vintage Brand’s use of
the PENN STATE Mark strengthens the degree to which consumers associate that
mark with Penn State by continuously linking the PENN STATE Mark with Penn
State.366
These two factors compel the conclusion that no genuine issues of material
fact remain as to Penn State’s state and federal dilution claims. Penn State has failed
363
364
365
366
Times Mirror Mags., Inc., 212 F.3d at 163.
Doc. 143 at 51.
Compare Doc. 127, with Doc. 143.
Although perhaps not legally relevant, it is interesting to note that Penn State’s infringement
claim is premised on the exact opposite notion—that consumers are confusing the goods and
believe Penn State is involved in some way with Vintage Brand. If that is the case, it is difficult
to conclude that any dilution would likewise be occurring.
84
to produce sufficient evidence in support of those claims, and Vintage Brand is
entitled to summary judgment in its favor.
4.
False Advertising and False Endorsement Claims367
As to Penn State’s false advertising claim, Vintage Brand asserts that the
Court should grant summary judgment in its favor because, as a matter of law, any
alleged false association between two businesses is insufficient to support such a
claim.368 With respect to Penn State’s false endorsement claim, Vintage Brand
argues that summary judgment is appropriate because any confusion relates only to
the images that Vintage Brand uses, not the physical goods themselves.369
As an initial matter, Penn State offers no response to Vintage Brand’s
assertion that Penn State’s false advertisement claim is deficient as a matter of law,
and appears to have abandoned this claim.370 Even assuming that it has not, Vintage
Brand is correct that Penn State’s false advertisement claim cannot survive summary
judgement.
367
368
369
370
Penn State also raises a claim for unfair competition and false designation of origin, alleging
that Vintage Brand’s use of the Penn State Marks is “likely to cause confusion, mistake, or
deception as to the source of origin of the goods and services provided by Defendants.” Doc.
67 ¶ 114. However, the Third Circuit has unambiguously held that confusion as to origin, as
referenced in 15 U.S.C. § 1125(a), “refers solely to the place of origin and not to the creator,
manufacturer, or any broader conception of the term ‘origin.’” Parks LLC v. Tyson Foods, Inc,
863 F.3d 220, 229 (3d Cir. 2017). Penn State’s claim is premised solely on the contention that
Vintage Brand’s use will cause confusion as to affiliations or associations with Penn State—
not that consumers will be confused as to the geographic origin of the goods. Doc. 67 ¶ 114.
Accordingly, Penn State’s claim fails as a matter of law.
Doc. 127 at 54.
Id.
See Doc. 143.
85
As the Third Circuit has observed, “the statement at issue in a false advertising
claim must ‘misrepresent the nature, characteristics, qualities, or geographic origin’
of a product.”371 Consequently, “a misrepresentation is actionable under
§ 1125(a)(1)(B) only if it misrepresents the characteristics of the good itself—such
as its properties or capabilities. The statute does not encompass misrepresentations
about the source of the ideas embodied in the object (such as a false designation of
authorship).”372
Based upon that law, the Third Circuit in Parks LLC v. Tyson Foods, Inc.
rejected false advertisement claims that “depend[ed] upon the purported false
association between” two similar marks.373 That court explained: “PARK’S FINEST
is only misleading in the way that Parks suggests if a consumer makes the connection
between PARK’S FINEST and PARKS and has in mind a pre-existing association
between PARKS and high quality products. This is a [trademark infringement] claim
and nothing more.”374 Because the false advertisement claim was merely a
repackaged trademark infringement claim, that claim was legally infirm.375
Here too, Penn State’s claim rests on its allegation that Vintage Brand’s use
of the marks is likely to deceive consumers “regarding the affiliation, connection, or
371
372
373
374
375
Parks LLC, 863 F.3d at 226 (quoting 15 U.S.C. § 1125(a)(1)(B) (brackets omitted)).
Id. at 227 (quoting Kehoe Component Sales Inc. v. Best Lighting Prods., Inc., 796 F.3d 576,
590 (6th Cir. 2015)).
Id.
Id.
Id. at 226-28.
86
association of Defendants with Penn State, or as to the sponsorship or approval by
Penn State of Defendants’ Goods.”376 As there is no allegation that Vintage Brand
has misrepresented the characteristics of the goods themselves, and this claim
instead appears to be a repackaged trademark infringement claim, it fails as a matter
of law, and summary judgment will be granted in Vintage Brand’s favor.
The Court next turns to Vintage Brand’s assertion that summary judgment in
its favor is appropriate as to Penn State’s claim for false endorsement. These claims
arise under § 43(a)(1)(A) of the Lanham Act. Such claims “are rare,” as claims under
§ 43(a)(1)(A) ordinarily proceed as general trademark claims.377 Nevertheless:
To prove a violation of § 43(a)(1)(A) in a false endorsement case, a
plaintiff must show that: (1) its mark is legally protectable; (2) it owns
the mark; and (3) the defendant’s use of the mark to identify its goods
or services is likely to create confusion concerning the plaintiff’s
sponsorship or approval of those goods or services.378
Here, the Court need not analyze whether Penn State has produced sufficient
evidence in support of its false endorsement claim, because this claim is duplicative
of its trademark infringement claim and cannot stand independently. The two claims
are functionally identical: in its trademark infringement claim, Penn State alleges
that Vintage Brand’s use of the Penn State Marks is likely to cause confusion by
deceiving consumers into believing “that those goods offered by Defendants in
376
377
378
Doc. 67 ¶ 119.
Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1018 (3d Cir. 2008).
Id. at 1014.
87
connection with the Infringing Marks are provided by, sponsored by, approved by,
licensed by, affiliated or associated with, or in some other way legitimately
connected to Penn State, when there is no such relationship,”379 while the false
endorsement claim likewise alleges that “Defendants’ use of the Infringing Marks is
likely to deceive a substantial portion of the target consumer audience, or actually
deceives the target consumers, regarding the affiliation, connection, or association
of Defendants with Penn State, or as to the sponsorship or approval by Penn State of
Defendants’ Goods.”380
Essentially, both claims assert that Vintage Brand’s use of the Penn State
Marks is likely to, and is, causing confusion as to Penn State’s association,
sponsorship, approval, or affiliation with Vintage Brand and its products. Although
Penn State tries to avoid this conclusion by arguing that the “false endorsement claim
hinges on Vintage Brand’s use of misleading content (including non-trademarked
content) on its website to falsely suggest an endorsement by Penn State,” the
paragraphs of the second amended complaint to which Penn State cites do not
support that argument.381 Rather, Penn State’s claim appears to be based solely upon
Vintage Brand’s use of the Penn State Marks on Vintage Brand products.382 Penn
State’s allegations contain only the most perfunctory references to advertising or
379
380
381
382
Doc. 67 ¶ 102.
Id. ¶ 119.
Doc. 143 at 52 (citing Doc. 67 ¶¶ 23-27, 36-37).
See Doc. 67 ¶¶ 117-25.
88
misleading representations—and no references to, or examples of, misleading
content.383
Penn State has not provided any images or other evidence of representations
or advertisements by Vintage Brand, leaving only the images of Vintage Brand’s
products themselves as potential advertisements—accompanied by disclaimers on
Vintage Brand’s website that state it has no affiliation with any university.384 But
these images merely circle back to the core of Penn State’s complaint: that Vintage
Brand used Penn State’s Marks on its products.385 The images of products are not
383
384
385
Id. Substantially similar references to advertising in Count One emphasize the identical nature
of these claims. Compare id. ¶ 101-02 (alleging in Count One that “Defendants are using the
Infringing Marks in advertisements for goods and services that do not originate with, and are
not sponsored by or affiliated with, Penn State,” which is “likely to cause confusion, mistake,
or deception as to . . . [whether] the Infringing Marks are provided by, sponsored by, approved
by, licensed by, affiliated or associated with, or in some other way legitimately connected to
Penn State”), with id. ¶ 118 (alleging in Count Two that “Defendants’ use in commercial
advertising and promotions of the Infringing Marks in connection with Defendants’ Goods
constitutes a false or misleading representation of fact regarding the affiliation, connection, or
association of Defendants with Penn State, or as to the sponsorship or approval by Penn State
of Defendants’ Goods”).
In its motion for summary judgment, Penn State highlights the goods themselves, descriptions
that consumers may use to search for Penn State designs, and language describing the historical
images. Doc. 114 at 37-38. But it does not describe, let alone produce any evidence to
demonstrate, how this language creates the false impression that that Penn State has endorsed
Vintage Brand’s products.
Interestingly, this Court has been unable to locate a single case within this circuit where the
plaintiff successfully brought both a trademark infringement claim and false endorsement
claim—let alone a case where both claims were based upon the same conduct. See Acosta v.
Faraones Nightclub, No. CV 18-17710 (MAH), 2023 WL 4946960 (D.N.J. Aug. 3, 2023);
Geiger v. SA & G Corp., No. 2:22-CV-01797, 2023 WL 5515975 (D.N.J. Aug. 25, 2023);
Pellegrino v. Epic Games, Inc., 451 F. Supp. 3d 373 (E.D. Pa. 2020); Cozzens v. DaveJoe RE,
LLC, No. CV 17-11535 (NLH/JS), 2019 WL 522071 (D.N.J. Feb. 11, 2019); Johnson v. Park
Ave. Rest. Corp., No. CV 17-7452 (WHW-CLW), 2018 WL 1535267 (D.N.J. Mar. 28, 2018);
Dille Fam. Tr. v. Nowlan Fam. Tr., 207 F. Supp. 3d 535 (E.D. Pa. 2016); Facenda v. N.F.L.
Films, Inc., 542 F.3d 1007 (3d Cir. 2008). Perhaps this is due to the fact that, when a defendant
has infringed upon a trademark, there will rarely be separate conduct that would constitute
false endorsement. Cf. Emondson v. 2001Live, Inc., No. 8:16-CV-3243-T-17AEP, 2017 WL
89
advertisements or misleading, any more than the goods themselves could rightly be
considered advertisements or misleading statements.
Because Penn State’s claim of false endorsement is just another way of saying
that Vintage Brand’s trademark infringement creates confusion as to association,
sponsorship, approval, affiliation, that claim is derivative of its trademark
infringement claim and constitutes an improperly pled trademark claim. As such, the
false endorsement claim cannot proceed, and Vintage Brand is entitled to summary
judgment in its favor on that claim.386
Moreover, even if the claim were not duplicative, summary judgment would
still be appropriate. As noted above, to prove a claim of false endorsement, the
plaintiff must demonstrate, inter alia, that the defendant used the plaintiff’s marks
386
10085028, at *3 (M.D. Fla. Mar. 30, 2017) (holding that the statement “that the Eleventh
Circuit has never recognized a separate claim of false endorsement distinct from trademark
infringement under § 43(a) appears to stand for the . . . proposition that a plaintiff cannot assert
[both] claims for false endorsement and trademark infringement under 15 U.S.C. §
1125(a)(1)(A)”). Had Vintage Brand taken some separate action that constitutes false
endorsement by, for example, mailing free goods to newly-admitted Penn State students
congratulating them on their acceptance, Penn State could bring an actionable false
endorsement claim. Cf. Nations Fund I, LLC v. Westward Mgmt. Co., LLC, No. 6:20-CV00498-AA, 2021 WL 4491712, at *3 (D. Or. Sept. 30, 2021) (permitting similar claims of
fraud and fraudulent inducement to proceed where they were “based on distinct theories of
defendants’ intent and plaintiff’s reliance”).
Cf. Telescope Media Grp. v. Lucero, 936 F.3d 740, 760 (8th Cir. 2019) (holding that, although
the plaintiffs brought an associational-freedom claim, the claim was “really a disguised freespeech claim” because they did not object to forced association, rather, their “real objection is
to the message of the videos themselves, which is just another way of saying that the MHRA
violates their free-speech rights” and allowing only the free speech claim to proceed);
Franzone v. Lask, No. 14CIV3043GHWGWG, 2016 WL 4154276, at *11 (S.D.N.Y. Aug. 5,
2016) (dismissing fraud claim as duplicative where “the claim of fraud is premised on the same
facts as [the] malpractice claim”).
90
“to identify its goods or services.”387 There is no evidence of such use here. To the
contrary, the evidence establishes that Vintage Brand uses its own trademark on its
goods to identify itself as the producers of its goods.388 This provides an additional
basis to enter judgment in Vintage Brand’s favor as to Penn State’s false
endorsement claim.
5.
Whether Seal Designs Must be Cancelled
Finally, the Court turns to Vintage Brand’s assertion that summary judgment
should be entered as to its counterclaim seeking cancellation of Penn State’s seal
design marks.389 Vintage Brand argues that the Lanham Act precludes the
registration of a design that consists of or includes the insignia of a state and, since
Penn State’s registration numbers 1,276,712 and 5,877,080 include the
Commonwealth of Pennsylvania’s Coat of Arms, they must be cancelled.390 Penn
State responds that marks are unregistrable only if consumers would perceive the
mark as a governmental designation, and Vintage Brand points to no evidence
regarding consumer perception of the challenged marks, and visual differences in
challenged marks preclude summary judgment.391
387
388
389
390
391
Facenda, 542 F.3d at 1014.
Doc. 153 ¶ 19.
Doc. 127 at 55-56.
Id.
Doc. 143 at 22-23.
91
The Lanham Act precludes the registration of any mark that “[c]onsists of or
comprises the flag or coat of arms or other insignia of the United States, or of any
State or municipality, or of any foreign nation, or any simulation thereof.”392
“Comprises” is interpreted to mean “includes” and, therefore, the Lanham Act
“prohibits registration of a mark that includes a flag of a foreign nation or any
simulation thereof.”393 However, the ultimate question is not simply whether a mark
contains a government’s insignia, but whether relevant consumers would “perceive
matter in the mark as a” government insignia.394 Registration should therefore not
be refused if the insignia used within the mark “is sufficiently altered, stylized, or
merged with other elements in the mark, so as to create a distinct commercial
impression.”395
It is true, as Vintage Brand notes, that the challenged marks contain the
entirety of Pennsylvania’s Coat of Arms,396 as demonstrated below:
392
393
394
395
396
15 U.S.C. § 1052(b).
In Re Fam. Emergency Room LLC, 121 U.S.P.Q.2d 1886, 1889 n.2 (T.T.A.B. 2017). See also
In re Fox, 702 F.3d 633, 638 (Fed. Cir. 2012) (same), abrogated on other grounds by In re
Tam, 808 F.3d 1321 (Fed. Cir. 2015).
In Re Fam. Emergency Room LLC, 121 U.S.P.Q.2d at 1890.
Id.
See Doc. 127 at 56.
92
Penn State Marks
Pennsylvania Coat of Arms
However, Vintage Brand presents no evidence as to whether Penn State’s
Marks, which merge Pennsylvania’s Coat of Arms into a circle featuring the words
“The Pennsylvania State University 1855” with a scalloped design on the outside is
insufficient to create a distinct commercial impression. Certainly, the wholesale
incorporation of Pennsylvania’s Coat of Arms implies some governmental
affiliation, and may indicate to consumers that the mark is itself a government
insignia or simulation thereof. But given the visual differences between the marks
and Pennsylvania’s Coat of Arms, the Court cannot conclude as a matter of law—
based on the available evidence—that Penn State’s Marks do not create a distinct
commercial impression. Summary Judgment will therefore be denied as to Vintage
Brand’s second counterclaim.
G.
Penn State’s Motion for Summary Judgment
Penn State has also moved for partial summary judgment on its claims and
Vintage Brand’s counterclaims.397 As to Penn State’s claims, it seeks summary
397
Doc. 113.
93
judgment with regard to its trademark infringement, unfair competition,
counterfeiting, and false endorsement claims.398 With respect to Vintage Brand’s
counterclaims, Penn State seeks judgment in its favor as to any ornamentality
affirmative defense and counterclaim, and as to Vintage Brand’s efforts to cancel
Penn State’s Seal Marks.399
1.
Penn State’s Claims
As an initial matter, as explained above, summary judgment is appropriate in
Vintage Brand’s favor with respect to Penn State’s claims for counterfeiting, false
advertising, and false endorsement. Accordingly, Penn State’s motion for summary
judgment as to those claims will be denied, and the Court will only consider whether
judgment should be entered in favor of Penn State with regard to its trademark
infringement claims.
Penn State argues that it is entitled to summary judgment in its favor on its
trademark infringement claims for two reasons. First, Penn State contends that it has
produced clear evidence of confusion, as it owns valid (and often incontestable)
marks.400 And, Penn State asserts, Vintage Brand is using nearly identical marks on
directly competing goods, which it argues conclusively establishes its claims as a
matter of law.401 Second, Penn State insists that, even under the relevant Lapp
398
399
400
401
Doc. 114 at 19-42.
Id. at 42-53.
Id. at 21-23.
Id. at 23-28.
94
factors, its evidence establishes a likelihood of confusion such that it is entitled to
summary judgment.402
Vintage Brand responds that Penn State cannot establish as a matter of law a
likelihood of confusion.403 First, Vintage Brand argues that, when viewed as a whole,
Vintage Brand’s images are easily distinguishable from Penn State’s marks and,
therefore, Penn State’s claims are not established as a matter of law.404 Vintage
Brand further asserts that its goods only compete with Penn State goods to the extent
that consumers want their products to contain Penn State images in order to express
their affiliation with Penn State.405 Lastly, Vintage Brand contends that there is no
evidence of actual confusion, or that Vintage Brand intended to cause confusion.406
The Court’s determination in denying Vintage Brand’s motion for summary
judgment on this claim largely guides the analysis—and outcome—of Penn State’s
competing motion. To succeed on its trademark infringement claim, Penn State
“must demonstrate that (1) it has a valid and legally protectable mark; (2) it owns
the mark; and (3) the defendant’s use of the mark to identify goods or services causes
a likelihood of confusion.”407 As discussed previously with regard to Vintage
Brand’s motion for summary judgment, the only element of the claim genuinely at
402
403
404
405
406
407
Id. at 28-33.
Doc. 137 at 14-32.
Id. at 17-23.
Id. at 23-25.
Id. at 25-32.
A & H Sportswear, 237 F.3d at 210.
95
issue here is whether there is a likelihood of confusion. The evidence is insufficient
to conclude that, as a matter of law, likelihood of confusion has been established;
rather, such a determination must be left to a jury.
As to Penn State’s more novel argument that a likelihood of confusion is
established because Vintage Brand is using nearly identical marks on directly
competing goods, that contention fails on summary judgment. It is true that the Third
Circuit has often noted that where plaintiff and defendant are in direct competition,
and “the identical mark is used concurrently by unrelated entities, the likelihood of
confusion is inevitable.”408 Regardless of whether Penn State and Vintage Brand are
in direct competition, there is a significant question as to whether the images used
by Vintage Brand are sufficiently identical to Penn State’s Marks so as to trigger a
finding of confusion as a matter of law.
While there is no dispute that many of Vintage Brand’s offered products
contain Penn State Marks within the images, these images are often composite
images based upon historical memorabilia or other images. In support of its
argument, Penn State points to the near identical nature of its marks and many of the
pieces of the composite images used by Vintage Brand in its goods.409 For example,
from the following two images, Penn State emphasizes the Penn State Seals:410
408
409
410
Pappan Enterprises, Inc. v. Hardee’s Food Sys., Inc., 143 F.3d 800, 804 (3d Cir. 1998).
See Doc. 114 at 25.
Id.
96
But Penn State’s efforts violate the anti-dissection rule. It is well established
that, when analyzing trademarks, the marks “must be examined as a whole” and,
therefore, a “composite mark should not be fragmented into its various pieces.”411
Because marks “must be considered as a whole in determining likelihood of
confusion,”412 “dissecting marks often leads to error.”413 The anti-dissection rule
stems from the commonsense proposition that, because court must analyze “whether
the labels create the same overall impression when viewed separately,”414 “the
message of a whole phrase may well not be adequately captured by a dissection and
recombination.”415
When viewing Vintage Brand’s images in their entirety, a reasonable jury
could well conclude that those images and the Penn State Marks are not sufficiently
similar. For example, Penn State cites to numerous goods that utilize different Penn
411
412
413
414
415
Berner Int’l Corp. v. Mars Sales Co., 987 F.2d 975, 981 (3d Cir. 1993) (quoting MCCARTHY
§ 11:10 at 458). See also A & H Sportswear, 237 F.3d at 216 (noting “the general rule that
marks should be viewed in their entirety”).
Koninklijke Philips Elecs. N.V. v. Hunt Control Sys., Inc., No. CV113684SRCCLW, 2017 WL
3719468, at *22 (D.N.J. Aug. 29, 2017) (quoting Juice Generation, Inc. v. GS Enterprises
LLC, 794 F.3d 1334, 1340-41 (Fed. Cir. 2015)).
Berner Int’l Corp., 987 F.2d at 981 (brackets and internal quotation marks omitted).
A & H Sportswear, 237 F.3d at 216 (internal quotation marks omitted).
Koninklijke Philips Elecs. N.V., 2017 WL 3719468 at *22 (quoting Juice Generation, Inc., 794
F.3d at 1340-41).
97
State Marks but, as depicted below, those marks are often only a small portion of the
historical images that include larger depictions that may well not be affiliated, in the
mind of a consumer, with Penn State, and sometimes even list other universities—
as the images were pulled from old game materials.416 Examples of images cited by
Penn State that contain Penn State Marks are displayed below:
417
421
416
417
418
419
420
421
422
423
424
418
422
419
423
420
424
See, e.g., Doc. 138 ¶ 162.
Id. Alleged to have copied PENN STATE, THE PENNSYLVANIA STATE UNIVERSITY,
and the Penn State Seal marks.
Id. Alleged to have copied THE PENNSYLVANIA STATE UNIVERSITY, Penn State Seal,
and Lion Shrine Logo marks.
Id. Alleged to have copied PENN STATE Mark.
Id. Alleged to have copied PENN STATE Mark.
Id. Alleged to have copied PENN STATE and Lion Shrine Logo marks.
Id. Alleged to have copied PENN STATE Mark.
Id. Alleged to have copied PENN STATE Mark.
Id. Alleged to have copied PENN STATE Mark.
98
425
426
427
Viewing these images as a whole, a jury could reasonably conclude that
many—if not most or all—appear easily distinguishable from the Penn State Marks.
Again, “[t]he test for . . . similarity is whether the labels create the same overall
impression when viewed separately.”428 Only “if ordinary consumers would likely
conclude that the two products share a common source, affiliation, connection or
sponsorship” should a court determine that the marks are confusingly similar.429
Many of these composite images do not necessarily evoke affiliation with, or
sponsorship from, Penn State.
In just the examples provided above, many images are old admissions tickets
from prior football games and, in several of those tickets, Penn State is not even the
featured team but is, instead, relegated to a lesser position on the ticket. Not only
could a jury reasonably conclude that these images connote no connection
425
426
427
428
429
Id. Alleged to have copied PENN STATE Mark.
Id. Alleged to have copied PENN STATE Mark.
Id. Alleged to have copied PENN STATE Mark.
A & H Sportswear, 237 F.3d at 216 (internal quotation marks omitted).
Id. (internal quotation marks omitted).
99
whatsoever to a university but, if they did, the jury could reasonably conclude that
they implied affiliation with a university other than Penn State. Given these
differences in the images and Penn State’s Marks, the Court cannot conclude as a
matter of law that a likelihood of confusion has been established, and summary
judgment is not appropriate on that ground.
That leaves a possibility of a likelihood of confusion based only upon the
relevant Lapp factors. As discussed in addressing Vintage Brand’s motion for
summary judgment, the Third Circuit has created a nonexhaustive list of ten factors
that may be considered in determining whether there is a likelihood of confusion.430
And, as discussed previously, consideration of these factors leads to the
inevitable conclusion that genuine issues of material fact remain as to the balancing
of these factors, and this is an issue that must be left for resolution by a jury. First,
although there is some degree of similarity between the images used by Vintage
Brand and the Penn State Marks, significant differences between the marks and
Vintage Brand’s composite images mean that a jury could easily reach differing
conclusion regarding this factor. Although Penn State’s Marks are somewhat strong,
any analysis as to “the price of the goods and other factors indicative of the care and
attention expected of consumers when making a purchase,”431 is hampered by the
fact that Penn State—similar to Vintage Brand in its motion for summary
430
431
A & H Sportswear, 237 F.3d at 211.
Id.
100
judgment—points to no evidence that consumers seeking to purchase Penn State
products are not sophisticated.432
As noted previously, with respect to Vintage Brand’s intent in allegedly
infringing upon Penn State’s marks, given Vintage Brand’s use of disclaimers, this
factor weighs slightly against a finding of a likelihood of confusion. As to evidence
of actual confusion, competing surveys and ambiguity in the available evidence
create genuine issues of material fact that must be resolved by a jury. Finally, as to
the ninth factor, “the relationship of the goods in the minds of consumers because of
the similarity of function,”433 there again remains a genuine issue of material fact
that requires resolution from a jury, given Vintage Brand’s use of composite images
and disclaimers on its website.
Consequently, similar to Vintage Brand’s motion for summary judgment, a
balancing of all relevant factors demonstrates insufficient strength to merit summary
judgment in Penn State’s favor. Rather, there remain significant genuine issues of
material fact that preclude summary judgment. Accordingly, Penn State’s request
for summary judgment on its trademark infringement claim will also be denied.
432
433
Penn State again asserts that Vintage Brand’s products are sold at relatively low prices,
meaning that consumers are not overly attentive when purchasing those goods. Doc. 114 at 3031. However, Penn State provides no evidence to support its assertion that customers are
inattentive when purchasing such goods. The Court cannot rely upon the cases cited by Penn
State to conclude that t-shirts as a general matter are not purchased with a high degree of care—
cases that were based upon the unique evidence presented therein.
A & H Sportswear, 237 F.3d at 211.
101
2.
Vintage Brand’s Counterclaims
Penn State further seeks judgment as to some of Vintage Brand’s
counterclaims and affirmative defenses.434 First, Vintage Brand seeks judgment on
Vintage Brand’s Affirmative Defenses Seven and Eight—arguing that Penn State’s
marks are merely ornamental—and Counterclaim Two, which seeks cancellation of
the PENN STATE Mark and Penn State Seal Mark as merely ornamental.435 Second,
Penn State seeks judgment as to Vintage Brand’s attempt to cancel the Penn State
Seal Marks, as differences between those marks and the Pennsylvania Coat of Arms
mean they do not fall within the prohibition on marks containing governmental
insignia.436
a.
Ornamentality Counterclaim and Affirmative
Defenses
Before addressing the substance of Penn State’s motion, as discussed with
regard to Vintage Brand’s motion for summary judgment, the marks that Penn State
seeks to enforce—save for the Pozniak Lion Design—are incontestable, and Vintage
Brand cannot challenge Penn State’s trademark infringement claims “on the ground
that [the marks] are merely” ornamental.437 Summary judgment is therefore
appropriate as to Vintage Brand’s Affirmative Defenses Seven and Eight, with the
434
435
436
437
Doc. 114 at 42-53.
Id. at 42-49.
Id. at 49-53.
Marketquest Grp., 316 F. Supp. 3d at 1264 (citing Park ’N Fly, 469 U.S. at 194; 15 U.S.C.
§ 1115(b)).
102
exception of the defense as it relates to Penn State’s Pozniak Lion Design and any
contestable registrations.438
The Court must therefore determine whether there is sufficient evidence for
the defense to proceed as to any contestable registrations, and whether there is
sufficient evidence for Vintage Brand’s Second Counterclaim to proceed to trial,
which seek cancellation as merely ornamental of two contestable marks—the PENN
STATE Mark and Penn State Seal Mark.
Penn State argues that the affirmative defenses and counterclaim must fail
because: (1) Vintage Brand has presented no evidence that the marks are perceived
only as ornamentation; (2) the use of trademarks on merchandise to indicate a
secondary source is not mere ornamentation; and (3) this Court does not have
jurisdiction to cancel trademark registration based on an as-applied ornamentality
challenge.439
Addressing the third argument first—as it relates to the Court’s authority to
even consider the first two arguments—Penn State contends that considerations of
whether mark specimens are acceptable is reserved solely to the examining attorney,
438
439
The Court rejects the argument that contestable registrations may not be challenged on
ornamentality grounds when the marks’ most salient features are contained in incontestable
marks, Doc. 114 at 43-44, as incontestability requires proof of use as a mark, and such proof
will naturally vary from mark to mark.
Id. at 44-49. As discussed previously, the Court agrees that the Penn State Marks cannot be
considered merely ornamental simply because they indicate a secondary source—i.e., that they
do not indicate the manufacturer of the goods but, rather, indicate Penn State’s approval,
affiliation, association, or sponsorship of the goods/manufacturer of the goods.
103
and is not reviewable by the USPTO or district courts.440 Penn State’s argument,
although novel, is ultimately without merit.
Penn State does not, and cannot, cite to a single case that has reached the
conclusion it suggests, and nothing in any statute appears to divest courts of the
power to consider as-applied challenges. To the contrary, courts routinely consider
as-applied challenges to trademarks.441 More importantly, Vintage Brand does not
appear to be challenging the adequacy of the specimens that Penn State provided in
support of its trademark applications, but is challenging whether those marks were
in fact used as marks in service, or were merely ornamental.442
This issue is broadly within the authority of the USPTO and district courts to
consider, as even Penn State’s own cited case demonstrates. In Century 21 Real
Estate Corporation v. Century Life of America,443 the TTAB determined that it
should not consider a challenge to the “sufficiency of the specimens submitted with
an application.”444 However, the TTAB emphasized that “the underlying question of
service mark usage . . . would constitute a proper ground for opposition” and, in any
440
441
442
443
444
Doc. 114 at 48-49.
See, e.g., Int’l Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912, 918-20 (9th Cir.
1980) (considering an as-applied functionality defense to a trademark-infringement claim);
Pilates, Inc. v. Current Concepts, Inc., 120 F. Supp. 2d 286, 304-05 (S.D.N.Y. 2000)
(considering whether word “PILATES” is generic with respect to equipment and services
offered in connection with the Pilates exercise method); Brandwynne v. Combe Int’l, Ltd., 74
F. Supp. 2d 364, 381 (S.D.N.Y. 1999) (examining genericness of challenged term “as applied
to products involving the vaginal area”).
See Doc. 72.
10 U.S.P.Q.2d 2034, 1989 WL 281901 (T.T.A.B. 1989).
Id. at *1.
104
event, the appellant there took aim at the wrong target, as “[o]bjections to the
specimens made by the Examining Attorney during examination are not actually to
the acceptability of the specimens themselves, but are that the specimens do not
show trademark use of the matter for which registration is sought.”445
Because the case law supports the notion this Court maintains jurisdiction to
consider Vintage Brand’s ornamentality counterclaim, the Court will not grant
summary judgment in Penn State’s favor on that ground. Consequently, this Court
must consider Penn State’s remaining arguments in favor of summary judgment.
As to Penn State’s assertion that Vintage Brand has presented no evidence
that the marks are perceived only as ornamentation, that argument likewise fails.
Vintage Brand’s evidence is sufficient, at the summary judgment stage, to permit
this counterclaim and affirmative defenses to process to trial as to any contestable
marks.
First, the survey produced by Dr. Erdem provides significant evidence that
consumers are not confused with regard to the origins of Vintage Brand’s
merchandise, or as to whether Vintage Brand and Penn State maintain a business
relationship.446 And although that survey was primarily geared toward a confusion
analysis, the survey is helpful in understanding whether Penn State’s marks are
perceived as ornamentation by consumers. The fact that consumers viewed products
445
446
Id. at *1-2.
See Doc. 94-7 at 9-45.
105
bearing the Penn State Marks and perceive no connection between the manufacturer
(here, Vintage Brand) and Penn State is strong evidence that they view the marks
only as ornamental, not as indicative of a primary or secondary source.
Second, Vintage Brand has produced some circumstantial evidence that
consumers view the marks as only ornamental. For example, Penn State’s designated
representative testified at a deposition that consumers are able to “express affinity
or affiliation with Penn State . . . by wearing clothing decorated with Penn State’s
logos.”447 Moreover, at least some retailers who sell officially licensed Penn State
merchandise market those goods as a method to express their allegiance to, or
affiliation with, Penn State.448 Additionally, under its licensing agreements, Penn
State requires that licensees attach a label to all goods that states they are officially
licensed by Penn State.449 The very fact that Penn State requires such labels indicates
that the marks themselves may not be source indicators.
Although these pieces individually do not constitute overwhelming evidence
of ornamentality, taken together this evidence is sufficient to satisfy Vintage Brand’s
burden. Accordingly, Penn State is not entitled to summary judgment on Vintage
Brand’s counterclaim of ornamentality, or affirmative defense, as they pertain to any
contestable marks.
447
448
449
Doc. 153 ¶ 29.
Id. ¶ 101.
Doc. 153 ¶ 94.
106
b.
Registration of Penn State Seal Mark
Finally, the Court addresses Penn State’s assertion that it is entitled to
judgment in its favor as to Vintage Brand’s Counterclaim One, seeking cancellation
of the Penn State Seal Marks (registration numbers 1,276,712 and 5,877,080).450
Penn State argues that summary judgment is appropriate because numerous visual
differences between Pennsylvania’s Coat of Arms and the Penn State Seal Marks
means that the marks do not fall within the prohibition against use of government
insignia in trademarks.451 Vintage Brand responds that the Penn State Seal Marks
indisputably incorporate Pennsylvania’s Coat of Arms and therefore must, as a
matter of law, be cancelled.452
Neither party is correct. As discussed earlier, the Lanham Act precludes the
registration of any mark that “[c]onsists of or comprises the flag or coat of arms or
other insignia of the United States, or of any State or municipality, or of any foreign
nation, or any simulation thereof.”453 In determining whether a mark comprises such
insignia, the factfinder must assess whether relevant consumers would “perceive
matter in the mark as a” government insignia.454 Registration should therefore not
be refused if the insignia used within the mark “is sufficiently altered, stylized, or
450
451
452
453
454
Doc. 114 at 49-53.
Id.
Doc. 150 at 54-55.
15 U.S.C. § 1052(b).
In Re Fam. Emergency Room LLC, 121 U.S.P.Q.2d at 1890.
107
merged with other elements in the mark, so as to create a distinct commercial
impression.”455
Again, the challenged marks contain the entirety of Pennsylvania’s Coat of
Arms.456 Penn State has made alterations to the Coat of Arms in its marks, which
strip the Coat of Arms of its colors and merge Pennsylvania’s coat of arms into a
circle featuring the words “The Pennsylvania State University 1855” with scalloped
design on the outside. As noted previously, there is insufficient evidence to
determine, as a matter of law, that these alterations are insufficient to create distinct
commercial impression. But neither are these additional elements sufficient to
conclude as a matter of law that the marks do create a distinct commercial
impression. It would be reasonable, based upon the similarity of the Seal Marks and
Pennsylvania’s Coat of Arms, for a jury to conclude that the marks appear to be
governmental insignia without distinct commercial impression. Penn State’s motion
for summary judgment must therefore be denied as to Vintage Brand’s Counterclaim
One.457
455
456
457
Id.
See Doc. 127 at 56.
This case is unlike the case to which Penn State cites, City of New York v. Blue Rage, Inc., 435
F. Supp. 3d 472 (E.D.N.Y. 2020). There, the court determined at summary judgment that the
challenged marks were not governmental insignia. Id. at 488-89. But that decision rested upon
the obvious visual evidence “that the NYPD Shield does not reproduce the City Seal in its
entirety, but rather incorporates only a few of its elements in a peripheral manner.” Id. at 488.
That is not the case here, where Pennsylvania’s Coat of Arms was copied in its entirety, with
only minor alterations made to the Coat of Arms when incorporated into Penn State’s Marks.
108
IV.
CONCLUSION
For the foregoing reasons, Vintage Brand’s motion to exclude is granted, its
motion to strike is granted in part and deferred in part, and its motion for summary
judgment is granted in part and denied in part. Penn State’s motion to exclude is
denied, its motion to strike is granted in part and denied in part, and its motion for
summary judgment is granted in part and denied in part.
An appropriate Order follows.
BY THE COURT:
s/ Matthew W. Brann
Matthew W. Brann
Chief United States District Judge
109
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