Written By: Hara Choudry
Are sports teams’ wordmarks and logos on branded merchandise merely ornamental or should they be afforded the highest protection under trademark law? This question is something that the courts have been grappling with for a long time now. Boston Pro. Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., was one of the very first cases in which the Fifth Circuit had to decide how trademark protection would apply to sports merchandise. Dallas Cap was a manufacturing company that made emblems with substantial duplications of teams’ marks.[1] The Boston Hockey Association (BHPA), along with several hockey teams, sued Dallas Cap, alleging that the selling of the emblems infringed on the registered trademarks that the teams held.[2] The court decided that when Dallas Cap made and sold the emblems, this constituted a trademark infringement.[3] When making its decision, the court noted that this would “tilt the purpose of trademark law,” from protecting consumers from source confusion to safeguarding business interests.[4]
Fast forward to 2024, and a new case has emerged in the United States District Court for the Middle District of Pennsylvania that addresses the same issues and arguments raised and in Boston Pro. Hockey. Penn State is suing Vintage Brand, a company that sells vintage sports clothing, alleging that Vintage Brand infringed on its trademark by using several of its marks to sell their vintage clothing.[5] Vintage Brand argues that the marks were merely ornamental.[6] Vintage Brand contends that Penn State’s marks do not serve as a source identifier, but instead a decorative feature for which fans use to support the team.[7]
This case has yet to go to trial, but it will be interesting to see how the court rules on this decision. This ruling will force us to reconsider how trademarks apply to sports merchandise. If consumers are clear as to the source of the goods, then how does the Lanham Act apply? If there is little to no confusion as to the source of goods, it could mean that Penn State and Vintage Brand can coexist in the same market. The court must grapple with a tough decision: does the court prioritize the main purpose of trademark law of protecting consumers, or does it prioritize registered trademark holders like the Fifth Circuit in Boston Pro. Hockey. Whatever the outcome, the court is faced with a difficult decision.
[1] Bos. Pro. Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004, 1009 (5th Cir. 1975).
[2] Id.
[3] Id. at 1012.
[4] Id. at 1011.
[5] Pennsylvania State Univ. v. Vintage Brand, LLC, 614 F. Supp. 3d 101, 103 (M.D. Pa. 2022).
[6] Id.
[7] Id.
