The case captioned Purdue University v. Vintage Brand, LLC is an example of one of the most recent battles in the trademark war between institutions of higher learning and online retailers. In the case at issue, Purdue University alleged that Vintage Brand violated trademark law by selling and manufacturing certain goods (e.g., T-shirts) containing Purdue University’s trademarks (i.e., PURDUE UNIVERSITY, BOILERMAKERS, and various logos). In addition to the Purdue University lawsuit, Penn State University and Washington State University (joined by nine other west coast universities) are suing Vintage Brand for trademark infringement (“Vintage Brand Lawsuits”).
In recent legal proceedings, courts have found in favor of universities, holding online retailers and e-commerce companies liable for trademark infringement where they did not secure requisite licensing rights before offering goods for sale that featured school trademarks. Online retailers found liable for trademark infringement may have to pay fines, profits and attorney fees, as well as compensate plaintiffs for lost revenues. In light of this risk, online retailers that plan to sell goods that feature university names and/or logos should seek legal counsel, especially those who assist in the manufacture of such goods.
Trademark Law and Infringement
Pursuant to federal trademark law (the “Lanham Act”), trademarks can be anything, including words, phrases, symbols, or designs, that identify and distinguish the source of goods and/or services. Trademark infringement is “the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.” Key factors that courts consider in a trademark infringement proceeding are “the degree of similarity between the marks at issue and whether the parties’ goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source.”
The most straightforward example of trademark infringement occurs when a defendant sells goods containing third-party trademarks (“Branded Goods”) without permission from the trademark owners and consumers purchase such goods under the mistaken belief that the actual trademark owners produced them (i.e., counterfeit goods). Additional complications arise where customers know that they are buying branded goods that do not originate from (or are licensed by) the trademark owners.
School-Branded Merchandise and Trademark Law
Students generally want to represent their universities and wear school-branded apparel, such as t-shirts, sweatshirts, and hats, but often have limited funds. Universities usually sell their branded merchandise at a relatively high price. As a result, students knowingly buy less expensive school-branded goods from third-party websites that are not licensed to sell them.
In the Vintage Brand Lawsuits and similar cases, online retailers have argued that school-branded goods offered on their websites do not infringe upon university trademark rights because students who purchase school-brand merchandise from such sites such are not confused about the source of the goods. Courts have previously rejected this argument because: (1) such sites are not licensed to sell such merchandise; and (2) non-purchasing consumers who view branded goods may be confused about the source of the goods.
An update will be posted on this blog when the Vintage Brand Lawsuits decisions are released.
If you are interested in learning more about this topic or require assistance in connection with registering a trademark or selling goods that contain third-party trademarks, please e-mail us at: info@kleinmoynihan.com, or call us at (212) 246-0900.
The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.
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