Judge Rules in Favor of Penn State in Trademark Infringement Case

WILLIAMSPORT – A federal judge has found a Florida man created an Internet-based counterfeiting scheme in which he is profiting from the deliberate misappropriation of Penn State’s trademark rights.

U.S. Middle District Magistrate Judge Karoline Mehalchick reached that conclusion in recommending the university be granted summary judgment in its trademark infringement suit against Paul L. Parshall, 81, of Naples, Florida.

She also recommended:

• Cancellation of Parshall’s trademark registrations in Pennsylvania and Illinois and infringing internet domains.

• Granting the university’s requests for an injunction and damages because it has suffered irreparable injury.

Penn State in 2019 sued Parshall, who does business as Sports Beer Brewing Co. that is operated through a website.

Since then he has failed to respond to discovery requests and has been sanctioned several times by Judge Jennifer P. Wilson for defying her orders.

Parshall advertises his business as “an intellectual property holding company consisting of a portfolio of sports trademarks, registrations and service marks for sports teams throughout the United States” that do not brew beer.

Among the teams he claims to have trademarks for beer besides Penn State are Ohio State, Indiana, Chicago Bulls, New York Yankees and New York Giants.

Penn State contends Parshall has never taken steps to obtain permission from any sports teams referenced on the Sports Beer Brewing website to use their trademarks or otherwise associate with them.

Parshall in 2016 registered with the Pennsylvania Department of State trademarks for Penn State Nittany Beer and Penn State Nittany Brewing Co.

In 2019, he registered Penn State Nittany Lion Cigars with the Illinois secretary of state.

He also has registered Internet domains pennstatehappyvalleybeer.com, pennstatenittany.beer and pennstatenittanycigars.com.

In light of Parshall’s refusal to comply with previous injunctions, the judge recommends the sportsbeerbrewing.com domain be transferred to Penn State to cease operation.

Mehalchick cited Parshall’s 2020 deposition in which he said he plans to continue selling or licensing goods and services with the marks of every famous college sports team and to register trademarks at the state level of college and professional athletic teams.

She found Parshall admitted he:

• Selected Penn State marks with the intention of making consumers believe he and his business were affiliated with Penn State.

• Never obtained a license or authorization from Penn State to use the trademarks.

• Knew they were famous before he first used them or filed his trademark applications.

Mehalchick found the Penn State marks are distinctive and therefore entitled to protection. She also found Parshall registered the internet domains in bad faith with intent to profit.

His pattern of behavior might have kept potential customers from accessing the legitimate university website or the website of licensors of the Penn State marks, she concluded.

There is evidence Parshall chose to use the infringing Penn State marks intentionally, she wrote.

The judge made no recommendation on Penn State seeking maximum damages of more than $2 million but suggested the university be given time to provide addition evidence in support of its demand.

Parshall will have the opportunity to object to Mehalchick’s report before Wilson acts on it.

Source: pennlive.com

Editor: IPRdaily-Rene