IP Law Daily, TRADEMARK—M.D. Pa.: The caravan rolls on for Penn State clash with RV rental company, (Sep 20, 2024)

By Matthew Hersh, J.D.

Does ‘goPSUrv’ infringe on the venerable university’s mark? A jury will now decide.

A federal jury will have to decide whether a company that rents recreational vehicles using the name goPSUrv infringed on the trademarks of Penn State University, the federal court for Scranton, Pennsylvania has held. The court, in a pair of rulings that amassed over 200 pages (Doc. No. 220 and Doc. No. 222), rejected both parties’ motions for summary judgment on the likelihood of confusion between the marks—and also sent cybersquatting and trademark dilution to the jury as well (Pennsylvania State University v. Keystone Alternatives, LLC d/b/a GoPSUrv.com, No. 1:19-cv-02039-YK (M.D. Pa. Sept. 19, 2024)).

The company at the center of the lawsuit, goPSUrv, rents recreational vehicles and motorhomes using through its goPSUrv.com website. The company targets fans of the Penn State University football team, the Nittany Lions. Eager tailgaters can rent RVs straight out of a parking lot, which it calls the Lion’s Den, nearby the football stadium. Those looking for motor homes as opposed to RVs can pick them up in a lot five miles away. The company offers options such as satellite TV, gas grills, picnic tables, coolers, ad even linens and pillows (all at an extra cost, of course).

Penn State University sued the company for trademark infringement, cybersquatting, trademark dilution, and reverse domain name hijacking. Both parties moved for summary judgment—Penn State and the RV company on the trademark infringement claims, and each party separately on other claims and defenses. The motions led to two different opinions, one addressing Penn State’s motion, and the other addressing the RV company’s motion.

Trademark infringement. The court denied each party’s summary judgment motion, finding this issue more suitable for the jury. The only question here was whether there was a reasonable likelihood of confusion. Under Interpace Corp. v. Lapp, 721 F.2d 460 (3d Cir. 1983), the court noted, the Third Circuit has set forth a non-exhaustive list of factors to be considered by courts when determining whether a likelihood of confusion exists. Some of these factors cut strongly in favor of Penn State. Others cut in favor of the RV company. Ultimately, the court found, the jury would have to balance the factors.

Some of the most important factors pointed squarely in favor of a likelihood of confusion. The could be little question, for example, about the strength of Penn State’s mark, the court observed. The PSU mark and the goPSUrv marks were also highly similar, the court observed. After all, the dominant portion of the RV company’s marks—“depicted in larger font and blue coloring,” the court noted—was the portion reading PSU. Moreover, the average renter of the RVs, the court noted, were “unlikely to exercise a high degree of care” when choosing RVs for tailgating purchases. And in light of the fact that Penn State also offers a wide array of services to its fans, including transportation services, the two entities shared marketing and advertising channels.

On the other hand, the court noted, some factors tilted in favor of the RV company. Most importantly, the court noted, even though the RV company had been in business since 2010, the University came forward with no evidence, other than a single stray email, of actual consumer confusion. Moreover, the court noted, the evidence as to the RV company’s bad faith was ambiguous. While the RV company certain sought to create an association with university, the court noted, there was evidence showing that they did so only because PSU “refers to the name of the University and location where [their] services were being offered.” On balance, the court concluded, the evidence was too split to allow determination for either side on summary judgment.

Cybersquatting. The court denied Penn State’s motion for summary judgment on this claim. To succeed on a claim under the Anti Cybersquatting Protection Act, the court noted, a plaintiff must prove that the plaintiff’s mark is distinctive or famous, the defendant’s domain name is “identical or confusingly similar to” plaintiff’s mark, and the defendant registered the domain name with the bad faith intent to profit from it. But the ruling on trademark infringement already showed that there was a reasonable factual dispute over the second and third factors, the court noted. This too would go to the jury.

Trademark dilution. Here again the court denied Penn State’s motion. In order to obtain relief, whether under federal or Pennsylvania law, a plaintiff must prove that it is the owner of a mark that qualifies as “famous,” defendant is making commercial use in interstate commerce of a mark or trade name, defendant’s use began after the plaintiff’s mark became famous, and defendant’s use causes dilution by lessening the capacity of the plaintiff’s mark to identify and distinguish goods or services. Here again, though, the court observed, the open questions of fact on the infringement claim made this a jury issue.

Reverse domain name hijacking. The court granted summary judgment Penn State on this count. The RV company brought a counterclaim that Penn State had hijacked its own domain. To prove a claim of reverse domain name hijacking, a domain name registrant must show that its domain name was improperly “suspended, disabled or transferred” at the behest of the owner of the mark. But here, the court noted, the evidence showed only that the domain owner, GoDaddy put the RV company on what is called a “registrar lock”—an action that merely prevents the domain from being renewed or transferred. Despite the lock, the court noted, the website remained active and controlled by the RV company. The website was therefore not “suspended, disabled or transferred,” the court noted.

RV company defenses. Finally, the court also refused to grant summary judgment to the RV company on its defenses. The company argued that the trademark claims were barred by laches, acquiescence, and/or fair use. But the record reflected “disputed facts” relevant to the issue of when Penn State knew of the alleged infringement. As to the RV company’s fair use defense, the court noted, the company had not tendered enough facts to establish its defense under the law. The case would go to the jury.

The Case is No. 1:19-cv-02039-YK Doc. No. 220 and Doc. No. 222.

Judge: Kane, Y.

Attorneys: Claire H. Eller (McGuireWoods LLP) for The Pennsylvania State University. Steven Rinehart (Vested Law LLP) for Keystone Alternatives LLC.

Companies: The Pennsylvania State University; Keystone Alternatives LLC

Cases: Trademark PennsylvaniaNews TechnologyInternet