IP Law Daily, TRADEMARK—M.D. Pa.: Penn State granted a permanent injunction to bar clothing maker from use of marks, (Jun 27, 2025)

By Carolin Dennis, B.Sc., LL.B., LL.M.

Permanent injunction granted as all four injunction factors favored issuing the injunction.

A Pennsylvania federal district court granted The Pennsylvania State University’s post-trial motion for a permanent injunction to prevent clothing manufacturer Vintage Brand LLC from using Penn State’s trademarks after a jury found that Vintage wilfully infringed Penn State’s marks and logos. However, the post-trial motion for attorney fees was denied as Vintage Brand’s conduct in litigating this matter was reasonable. The district court also denied the defendants’ motion to vacate the costs taxed (The Pennsylvania State University v. Vintage Brand, LLC, No. 4:21-cv-01091-MWB (M.D. Pa. June 25, 2025)).

Background. The Pennsylvania State University (Penn State) sued Vintage Brand, LLC (Vintage Brand), Sportswear, Inc. (Sportswear), and Chad Hartvigson’s (collectively, defendants) for unauthorized use of certain of Penn State trademark and logos. The matter proceeded to trial and, the jury determined that the defendants had wilfully violated Penn State’s trademark and awarded Penn State $28,000 in compensatory damages. The Clerk of Court entered judgment accordingly, followed by an Order taxing certain costs against the defendants.

Penn State then filed a motion to amend the judgment, arguing that it is entitled to a permanent injunction enjoining the defendants from using any Penn State trademarks at issue in this case, as it has suffered irreparable injury, other remedies are inadequate, the balance of hardships favors and injunction, and the public interest would be served by a permanent injunction. It also filed a motion for attorney fees related to this case, asserting that this case is an exceptional one that warrants the imposition of such fees. The defendants filed their own motion to vacate the costs taxed, contending that Penn State did not qualify as a prevailing party, and the district court must exercise its discretionary power to deny such an award, or the award should be reduced as some costs are not taxable.

Permanent injunction. Penn State sought an injunction permanently barring the defendants from using any Penn State trademarks. The defendants argued that an injunction is not warranted because monetary damages are sufficient to compensate Penn State, and therefore there is no irreparable injury. The district court noted that when a plaintiff in a Lanham Act case has proven trademark infringement, it will be entitled to a rebuttable presumption of irreparable harm. Here, because the jury found that the defendants infringed upon Penn State’s marks, there is a rebuttable presumption of irreparable injury. Further, the defendants’ infringement presumptively resulted in the coopting of Penn State’s reputation and goodwill, which sufficiently demonstrated irreparable injury when coupled with the evidence received at trial. Relatedly, because a loss of control of Penn State’s reputation and the loss of goodwill constitute irreparable injury, monetary remedies are insufficient, and no remedy other than an injunction is likely to remedy those injuries. Thus, Penn State demonstrated both irreparable injury and that no other remedy available at law could adequately remedy those injuries.

The district court noted that the defendants’ conduct has been found by a jury to be infringing, and a permanent injunction would require only that they stop violating the Lanham Act, which weighed in Penn State’s favor. Even though the defendants will suffer some financial losses from a permanent injunction, they openly, intentionally, and illegally appropriated Penn State’s marks, despite being warned not to. Thus, the balance of hardships also weighed in favor of the imposition of a permanent injunction.

Lastly, the district court noted that based on the evidence presented at trial and the jury’s verdict, the defendants have created a likelihood of confusion through their use of Penn State’s trademarks. Where there is a likelihood of confusion, it follows that if such use continues, the public interest would be damaged. Conversely, a prohibition upon the defendant’s use of its mark would eliminate that confusion. Thus, all four factors weighed in favor of the imposition of a permanent injunction.

Attorney fees. Penn State also moved for an award of attorney fees under the Lanham Act’s fee shifting provision, arguing that this case is an exceptional one that warrants the imposition of attorney fees as the defendants acted in bad faith. The district court noted that Penn State stringed together a series of harmless events and occurrences in an effort to paint this case as extraordinary in nature. However, Vintage Brand litigated this matter reasonably, while making occasional mistakes that often occurs during years-long litigation. The deletion of images or portions of images was careless but, ultimately, harmless, and the only other major issue—continued infringement—appeared to be unintentional and isolated. The district court found that these actions, when considered over the long arc of years-long litigation, simply did not render this case extraordinary in nature. Accordingly, Penn State’s motion for attorney fees was denied.

Motion to vacate costs taxed. The defendants argued that Penn State did not qualify as the prevailing party for purposes of taxation of costs because this was a mixed judgment where Penn State lost four of its claims and only obtained a judgment of $28,000. The defendants requested the district court to exercise its discretion and decline to award costs, as Penn State acted in bad faith during this case and litigated it in an unreasonable manner. The district court determined that Penn State clearly qualified as the prevailing party because not only did Penn State obtain a jury verdict in its favor as to the most consequential trademark infringement claims in this matter, but also obtained a permanent injunction against the defendants. Moreover, the costs requested by Penn State were unrelated to that bad faith act. Therefore, the district court determined that the taxation of costs was appropriate, and the defendants’ motion to vacate the costs taxed was denied.

The Case is No. 4:21-cv-01091-MWB.

Judge: Brann, M.

Attorneys: Claire H. Eller (McGuireWoods LLP) for The Pennsylvania State University. Christopher Jon Sprigman (Lex Lumina, PLLC) for Vintage Brand, LLC.

Companies: The Pennsylvania State University; Vintage Brand, LLC; Sportswear, Inc.

Cases: Trademark PennsylvaniaNews