The adage that “it is better to ask for forgiveness than permission” does not apply to trademark law. This is especially true where receiving forgiveness may be conditioned by paying substantial sums of money to brand owners whose trademark rights are violated.

To that end, a recent verdict by a Pennsylvania jury in a case styled Pennsylvania State University v. Vintage Brand, LLC underscores the importance of first obtaining permission from brand owners. In that case, a jury found both Vintage Brand, a company that produced goods featuring designs similar to trademarks owned by Penn State, and its manufacturer, liable for trademark infringement.

In short, the jury rejected the defendants’ argument that their designs did not infringe because the designs were merely used for aesthetic purposes, not to identify the source of the goods. Instead, the jury determined that consumers were likely to be confused as to the source of the goods produced and sold by the defendants and awarded monetary damages to Penn State.

High Stakes

This case should serve as a cautionary tale to those who manufacture or sell merchandise featuring names, words, slogans, logos or designs for which others have secured trademark rights.

At the outset, there is no “trademark police.” This means that brand owners are required to police their own trademark rights as the failure to do so may limit a brand owner’s ability to later enforce those rights. Accordingly, businesses can and should expect brand owners to vigilantly investigate and prosecute unauthorized uses of their trademarks.

Businesses can and should expect brand owners to vigilantly investigate and prosecute unauthorized uses of their trademarks.”

Michael C. Cannata

Partner, Rivkin Radler

And the stakes are high. As was the case in the lawsuit filed by Penn State, brand owners often rely upon the Lanham Act, a federal statute which provides a basis to sue for trademark infringement in federal court, to recover the following types of monetary damages against infringers:

  • actual damages suffered by the brand owner;
  • a disgorgement of the infringer’s profits;
  • and in exceptional cases, attorneys’ fees.


Of course, these monetary damages are separate from the costs associated with complying with any injunction issued by a court with respect to a trademark violation.

Due Diligence

So, what to do? Well, as succinctly stated by Benjamin Franklin, “an ounce of prevention is worth a pound of cure.” To that end, before businesses even begin to manufacture and sell such goods, best practices require that a comprehensive trademark search be performed to determine whether any names, words, slogans, logos or designs featured in connection with such goods are protected by trademarks.

Often this search will include an analysis of the U.S. Patent and Trademark Office’s database (which includes, among other things, an identification of pending U.S. trademark applications and U.S. trademark registrations) and state trademark registries.

However, because trademark rights are not necessarily dependent on actually filing anything with the U.S. Patent and Trademark Office or state trademark office (as trademark rights can exist under the common law simply through usage of a particular mark), any trademark search should also include a review of other sources, including, for example, websites, social media, domain registries, business directories and other relevant sources.

While many businesses carry commercial general liability insurance, it typically does not provide coverage for claims of trademark infringement.”

Frank Misiti

Partner, Rivkin Radler

If the trademark search discloses the existence of third-party trademarks, the owners of such trademarks should be identified so that permission may be obtained through an appropriate trademark license.

  • A trademark license is an agreement with a trademark owner that grants another party permission to use the owner’s trademark.
  • The license sets forth the relevant parameters of the parties’ agreement, including, which trademarks are subject to the license, how the licensed trademarks may be used, the duration of the license, the cost of the license, whether the license is exclusive and what quality control standards must be followed.


For example, if Vintage Brands identified the Penn State trademarks through a search, it could have approached Penn State, or its licensing agent, to secure a trademark license to cover its intended use. In that connection, Penn State, like many other colleges and universities in the U.S., has retained Collegiate Licensing Company to serve as its exclusive licensing agent.

  • CLC is a company that licenses and protects logos and trademarks of approximately 700 colleges and universities (as well as major athletic conferences) throughout the country.


Critically, outside the context of colleges and universities, licensing agents are also used in many other industries. For example, licensing agents such as Authentic Brands Group and Bluestar Alliance exist to manage intellectual property for various lifestyle, sports, entertainment, and retail brands.  

Best Practices

Going forward, additional proactive tactics which may limit potential exposure for trademark infringement claims include utilizing strong contractual language and purchasing the appropriate insurance coverage. For example, in contracting to manufacture apparel designed by others that features third-party trademarks, a manufacturer should consider including language in its manufacturing agreement by which the designer represents and warrants that the designer is properly licensed to use such marks in its designs and that the designs embodying such marks do not infringe any third-party intellectual property rights.

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Moreover, the manufacturing agreement should also include a provision by which the designer agrees to defend, indemnify, and hold the manufacturer harmless from any claims of infringement asserted against the manufacturer by third parties which arise out of the designs provided to the manufacturer.

Relatedly, business owners should also consider communicating with their insurance brokers to ensure that they have the appropriate insurance coverages in place that would respond to any claim of trademark infringement.

In that connection, while many businesses carry commercial general liability insurance, it typically does not provide coverage for claims of trademark infringement (and oftentimes, it is expressly excluded from coverage). Rather, there are specialty insurance products that can be purchased to provide insurance for claims of trademark infringement.

Finally, and perhaps most importantly, business owners should consult with experienced legal counsel to help assess and minimize any potential risks associated with the use of third-party trademarks.

Cannata and Misiti are partners in Rivkin Radler’s Insurance Coverage and Intellectual Property Practice Groups. They can be contacted, respectively, at michael.cannata@rivkin.com and frank.misiti@rivkin.com.