PSU Gets Win for Trademark Protection in Federal Court.
The United States Court for the Middle District of Pennsylvania recently held that not just the designer of the apparel that includes the offending trademark, but the manufacturer of the apparel can be liable for trademark infringement. Mere manufacturing or shipping of goods with an infringing mark may not constitute “use in commerce” and thus may not be considered infringement. However, the combined actions of manufacturing the goods with the marks affixed and shipping them directly to consumers in connection with their sale could be considered a “use in commerce” that causes consumer confusion, giving rise to direct infringement liability.
In Pa. State Univ. v. Vintage Brand, LLC, 2024 U.S. Dist. LEXIS 210658, (November 19, 2024), the PSU sued the company, Vintage Brand, LLC, (Vintage) that designs apparel, including apparel with PSU trademarks, and sells the apparel on its website. PSU also sued Sportswear, Inc., (Sportswear) the company that manufactures the PSU-trademarked apparel for Vintage. Sportswear argued that it could not be sued for direct trademark infringement because it is not the designer – it did not take the PSU trademark and sell it – it merely received and processed the orders, as the manufacturer, and made the apparel at the request of Vintage.
However, the Court would not let Sportswear off the hook. It noted that Sportswear, in response to orders on Vintage’s website, manufactures the goods on demand, applies the mark during manufacturing and delivers the trademarked apparel directly to consumers. Chief Judge Matthew W. Bann wrote, “Sportswear's commercial use of the mark (manufacturing) is in connection with its distribution of the goods through shipping them to customers, and upon that shipping, Sportswear's use of the mark in manufacturing may be likely to cause consumer confusion such that it can be liable for direct infringement.”
If you have questions about trademark law or trademark infringement, do not hesitate to contact Scaringi Law at 717-657-7770.