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The Intellectual Property StrategistColumns & DepartmentsIntellectual PropertyLitigationTrademarks

IP News

By Howard Shire and Christine Weller
October 01, 2019

School is Back in Session – Trademark Roundup

Penn State Files Trademark Lawsuit against Sports Beer Brewing Company

On July 26, 2019 the Pennsylvania State University (Penn State), filed a multi-count complaint for federal and state claims for trademark infringement, unfair competition and false designation of origin, dilution, counterfeiting, common law trademark infringement and unfair competition under Pennsylvania law, and is attempting to cancel defendant's conflicting marks. Comparing the Defendant, Paul L. Parshall d/b/a Sports Beer Brewing Company (Parshall), to a cybersquatter, Penn State's complaint alleges that Parshall "secretly" registers famous marks with state trademark offices that do not do substantively check other federal or state trademark records for conflicts before issuing registrations. See, The Pennsylvania State University v. Parshall, Complaint, Dkt No.1, 4:19-cv-01299 (M.D. Pa. Jul 26, 2019). In turn, Penn State alleges, Parshall attempts to license those trademarks to third parties. When Penn State confronted Parshall regarding its putatively infringing conduct, Penn State alleges that Parshall offered to sell Penn State's marks back to it. Id. at 2.

The Complaint identifies numerous registrations that Penn State has obtained in "PENN STATE" formative marks as well as the related "NITTANY LIONS" formative marks for a variety of goods and services for everything from "mustard" to "entertainment services" and "sweatshirts". It claims that since its founding in 1855, and its subsequent operation under the name "The Pennsylvania State University" in 1953, it has become incredibly famous throughout the United States and the world. Indeed, Penn State has 24 campuses, 17,000 faculty members, and over 100,000 students. Id. at 4.

In turn, Parshall, the Complaint alleges, runs a business known as Sports Beer Brewing Company. Id. at 13. On the domain , Parshall sells a variety of goods, including beer, cigars and tee shirts. Id. The domain identifies a number of marks that it claims that it has lawfully secured. It offers to sell visitors a variety of goods displaying those marks. Id at 14. The Complaint goes on to describe a common criticism of state trademark registries, in that they often (with a few exceptions) do not do a comprehensive search of other, existing records, before issuing registrations. The end result is that conflicting marks may register, and individuals and entities with no legitimate rights over marks may obtain a state registration. Id. at 18. Penn State claims that Parshall's infringing conduct in attempting to secure a Pennsylvania state trademark registration for PENN STATE formative marks was so blatant that it was contacted by the Commonwealth of Pennsylvania's Governor's Office of General Counsel regarding Parshall's actions. Id. at 19. Penn State claims that it is not alone, and that other trademark holders have sued Parshall for this conduct. Id. Penn State sent a cease and desist letter to Parshall. In response, Parshall suggested that no infringing conduct had occurred on his part, and indicated a willingness to partner with Penn State. Id. at 21. After exchanging correspondence without resolution, Penn State sued in the Middle District of Pennsylvania. Defendant sought, and was granted an extension to answer, move, or otherwise respond to Plaintiff's Complaint until Sept. 23, 2019.

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