Pennsylvania State University has secured wins on the field and in court this football season with a 10-1 football record (and likely a College Football Playoff berth), and a jury verdict in its favor in a lawsuit against Vintage Brand for trademark infringement. The case centered on the question of whether Vintage Brand’s use of Penn State’s historic logos and school images on apparel and other merchandise constituted trademark infringement, or if such use was “ornamental.”

Penn State filed suit against Vintage Brand for its sale of clothing and merchandise that depicted historic Penn State logos and images, arguing that consumers were likely to be confused into thinking that Penn State authorized Vintage Brand to use its materials in this manner, or that the items were somehow associated or affiliated with Penn State. Vintage Brand argued that it was using the logos and images in a merely ornamental fashion and that it did not represent that the merchandise was associated with Penn State. Thus, the critical question for the jury was whether the logos and images, as depicted on Vintage Brand’s merchandise, were entitled to trademark protection, and whether Vintage Brand’s use was infringing.

Whether a brand owner’s use of a particular logo or design is merely ornamental (and therefore not subject to trademark protection) or serves as an indicator of source (and therefore a protectable trademark) depends on a number of factors, including the commercial impression of the mark as displayed on the product, the practices of the trade, whether the mark serves as a secondary source, and evidence of distinctiveness. Brand owners typically run up against the “merely ornamental” challenge in registering and enforcing marks when the brand consists of a common phrase or design displayed on goods such as t-shirts and mugs – where consumers would expect to find ornamental materials.  However, courts do not typically find that third-party use of a brand or logo in an ornamental fashion is fair use.  Thus, a finding to the contrary in this case would have been a significant departure from traditional trademark law.

In this instance, which factors the jury relied upon in finding that Penn State owned trademark rights in its logos is unclear, but companies should consider the following to ensure their trademarks are not viewed as merely ornamental:

  • Consider whether your mark as used in connection with the covered goods and services could be considered a decorative feature. In most cases, it probably will not, but if you sell consumer goods like apparel, it is possible that the application of your logo to the front of a t-shirt (for example) could be seen as mere ornamentation.
  • In addition to displaying your mark or logo on the front of products, consider adding it in a location where consumers would expect to find the brand name, such as on the bottom of a mug, or on a hangtag or neck tag on apparel.
  • A mark that is otherwise displayed in an ornamental sense on the front of merchandise, such as on concert or show apparel, may serve a trademark function if the mark is registered with goods or services other than those to which it is affixed. For example, if you are a musician and you have registered your band name for concert services, you may also be able to protect the use of your band name on concert t-shirts.

In conclusion, companies should think critically about whether their marks could be considered merely ornamental in the way they are displayed, and if yes, what changes it can make to ensure the mark also serves as an indicator of source.

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