Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

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.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Major Differences In UK, U.S. Copyright Laws Image

This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.

Strategy vs. Tactics: Two Sides of a Difficult Coin Image

With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.

The Article 8 Opt In Image

The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.

Removing Restrictive Covenants In New York Image

In Rockwell v. Despart, the New York Supreme Court, Third Department, recently revisited a recurring question: When may a landowner seek judicial removal of a covenant restricting use of her land?

Fresh Filings Image

Notable recent court filings in entertainment law.