PSUVParshall - Feb 17 2022 - Order

Case 4:19-cv-01299-JPW Document 133 Filed 02/17/22 Page 1 of 59
UNITED STATES DISTRICT COURT

MIDDLE DISTRICT OF PENNSYLVANIA
THE PENNSYLVANIA STATE

UNIVERSITY,
CIVIL ACTION NO. 4:19-CV-01299
Plaintiff,
(WILSON, J.)
v. (MEHALCHICK, M.J.)
PAUL L. PARSHALL,
Defendant.
REPORT AND RECOMMENDATION
Before the Court are two motions for summary judgment in this trademark
infringement, unfair competition, cybersquatting, and trademark dilution action under the
Lanham Act, 15 U.S.C. §§ 1051, et seq, and Pennsylvania law. On August 28, 2020, Defendant
Paul L. Parshall (“Parshall”) filed a motion for summary judgment, and on March 22, 2021,
Plaintiff the Pennsylvania State University (“Penn State”) filed a motion for summary
judgment. (Doc. 85; Doc. 105). For the reasons set forth herein, it is respectfully
recommended that Penn State’s motion for summary judgment be granted. (Doc. 105).
I. BACKGROUND AND PROCEDURAL HISTORY
On July 26, 2019, Penn State initiated this action by filing the initial complaint against
pro se Defendant Parshall. (Doc. 1). Parshall filed a timely motion to dismiss, which Penn
State responded to by filing an amended complaint on September 24, 2019, rendering the
motion to dismiss moot. (Doc. 13; Doc. 14; Doc. 17). On October 21, 2019, Parshall filed a
motion to dismiss the amended complaint. (Doc. 15). On March 18, 2020, during a telephone
settlement conference before U.S. Magistrate Judge Saporito, Parshall was uncooperative and
disrespectful, and a settlement was not achieved. (Doc. 26; Doc. 33). On April 21, 2020,
Parshall filed a motion to change venue from Pennsylvania to Florida and another motion to
dismiss. (Doc. 41; Doc. 42). On May 7, 2020, the Court denied Parshall’s motions to dismiss,
finding that the factual disputes in the motions were not appropriate grounds for dismissal at
that stage of litigation and that the amended complaint contains plausible allegations for
relief. (Doc. 47, at 10-11, 14; Doc. 48). Further, the Court denied Parshall’s motion to change
venue because he failed to meet his burden of persuading the Court that transfer of the matter
to the Middle District of Florida is appropriate. (Doc. 47, at 17; Doc. 48). On May 15, 2020,
Penn State filed a submission of fees and costs incurred related to its previous motion to
compel and discovery deficiencies. (Doc. 52). On May 20, 2020, the Court granted sanctions
against Parshall in the amount of $9,493.00. (Doc. 66).
On July 7, 2020, Parshall filed a notice of appeal to appeal the Court’s May 20, 2020,
order that granted sanctions against Parshall. (Doc. 66). On August 5, 2020, Parshall filed a
motion to dismiss, which the Court denied on August 17, 2020, because the motion was
untimely and raised issues that the Court has already ruled on. (Doc. 74; Doc. 76). On August
20, 2020, Parshall filed a motion to set aside judgment and a motion to dismiss. (Doc. 78;
Doc. 79). On August 27, 2020, the Court denied Parshall’s appeal because it was untimely
and improper as Parshall failed to seek leave with the Court to certify the May 20, 2020, Order
for interlocutory appeal. (Doc. 83).
On August 28, 2020, Parshall filed a motion for summary judgment, arguing that he
is entitled to summary judgment because he owns the PENN STATE NITTANY BEER
trademark. (Doc. 85). Parshall did not file a statement of material facts or brief in support of
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its motion for summary judgment as required by Local Rule 56.1.1 On September 14, 2020,
Penn State filed a brief in opposition to the motion for summary judgment. (Doc. 86).
On March 1, 2021, Penn State filed a second amended complaint. (Doc. 101). The
second amended complaint sets forth seventeen causes of action: federal trademark
infringement under the Lanham Act, 15 U.S.C. § 1114 (Counts I and II); federal unfair
competition and false designation of origin (Counts III and IV); federal trademark dilution
under 15 U.S.C. § 1125(c) (Counts V and VI); trademark counterfeiting under 15 U.S.C. §
1114 (Counts VII and VIII); trademark dilution under 54 Pa. C.S.A. § 1124 (Counts IX and
X); common law trademark infringement and unfair competition (Count XI and XII);
cancellation of certain state trademark registrations under 54 P. C.S. § 1114, 765 Ill. Comp.
Stat. 1036/45, and the Lanham Act (Count XIII, XIV, and XV); injunction against Parshall
filing of state or federal trademark registrations that infringe Penn State’s trademark rights
(Count XVI); and cybersquatting under the Lanham Act (Count XVII). (Doc. 101).
On March 22, 2021, Penn State filed the instate motion for summary judgment, along
with a brief in support, statement of facts, and list of exhibits. (Doc. 105; Doc. 106; Doc. 107).
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Local Rule 56.1 requires a party moving for summary judgment to file “a separate,
short and concise statement of the material facts, in numbered paragraphs, as to which the
moving party contends there is no genuine issue to be tried,” and requires a party opposing
summary judgment to file “a separate, short and concise statement of the material facts
responding to the numbered paragraphs” in the movant's statement of material facts. “When
a moving party fails to comply with Local Rule 56.1 ‘the court should not have to proceed
further, regardless of how readily it might be able to distill the relevant information from the
record on its own.’” Abu-Jamal v. Kerestes, No. 3:15-CV-967, 2018 WL 2166052, *14 (M.D.
Pa. May 10, 2018) (quoting Landmesser v. Hazleton Area Sch. Dist., 982 F. Supp. 2d 408, 412
(M.D. Pa. 2013)). Parshall’s failure to adequately comply with this requirement prevents
meaningful review and mandates the dismissal of his motion for summary judgment (Doc.
85).
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On April 20, 2021, Parshall filed a brief in opposition to the motion for summary judgment.
(Doc. 110). Due to Parshall’s failure to respond to Penn State’s statement of facts, on April
21, 2021, the Court ordered Parshall to show cause as to why the Court should not consider
Penn State’s statement of facts unopposed and deem the facts admitted in accordance with
Local Rule 56. (Doc. 111). Parshall filed two motions to dismiss on June 1, 2021, and June
9, 2021, respectively. (Doc. 117; Doc. 119). On July 27, 2021, the Court stayed all case
management deadlines pending solution of the multiple ripe motions in the case. (Doc. 122).
On December 14, 2021, the case was referred to the undersigned Magistrate Judge for
resolution of the pending motions for summary judgment. (Doc. 128). Parshall did not
respond to the Court’s April 21, 2021, order, so the statement of facts is deemed unopposed
and the motion for summary judgment is ripe for disposition. (Doc. 106; Doc. 107; Doc. 108;
Doc. 109; Doc. 110); see L.R. 7.6.
II. MOTION FOR SUMMARY JUDGMENT STANDARD
Under Rule 56 of the Federal Rules of Civil Procedure, summary judgment should be
granted only if “there is no genuine dispute as to any material fact and the movant is entitled
to judgment as a matter of law.” Fed. R. Civ. P. 56(a). A fact is “material” only if it might
affect the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A
dispute of material fact is “genuine” if the evidence “is such that a reasonable jury could return
a verdict for the non-moving party.” Anderson, 477 U.S. at 248. In deciding a summary
judgment motion, all inferences “should be drawn in the light most favorable to the non-
moving party, and where the non-moving party’s evidence contradicts the movant’s, then the
non-movant’s must be taken as true.” Pastore v. Bell Tel. Co. of Pa., 24 F.3d 508, 512 (3d Cir.
1994).
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A federal court should grant summary judgment “if the pleadings, depositions,
answers to interrogatories, and admissions on file, together with the affidavits, if any, show
that there is no genuine issue as to any material fact and that the moving party is entitled to a
judgment as a matter of law.” Farrell v. Planters Lifesavers Co., 206 F.3d 271, 278 (3d Cir. 2000).
In deciding a motion for summary judgment, the court’s function is not to make credibility
determinations, weigh evidence, or draw inferences from the facts. Anderson, 477 U.S. at 249.
Rather, the court must simply “determine whether there is a genuine issue for trial.” Anderson,
477 U.S. at 249.
The party seeking summary judgment “bears the initial responsibility of informing the
district court of the basis for its motion,” and demonstrating the absence of a genuine dispute
of any material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the movant makes
such a showing, the non-movant must go beyond the pleadings with affidavits or declarations,
answers to interrogatories or the like in order to demonstrate specific material facts which give
rise to a genuine issue. Fed. R. Civ. P. 56(c); Celotex, 477 U.S. at 324. The non-movant must
produce evidence to show the existence of every element essential to its case which it bears
the burden of proving at trial, because “a complete failure of proof concerning an essential
element of the nonmoving party's case necessarily renders all other facts immaterial.” Celotex,
477 U.S. at 323. Furthermore, mere conclusory allegations and self-serving testimony,
whether made in the complaint or a sworn statement, cannot be used to obtain or avoid
summary judgment when uncorroborated and contradicted by other evidence of record. See
Lujan v. Nat’l Wildlife Fed’n, 497 U.S. 871, 888 (1990); see also Thomas v. Delaware State Univ.,
626 F. App’x 384, 389 n.6 (3d Cir. 2015) (not precedential).
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III. STATEMENT OF FACTS
This factual background is taken from Penn State’s statement of material facts and
accompanying exhibits. (Doc. 107, Doc. 108; Doc. 109). Since Parshall has not filed a
statement of material facts, the Court considers Penn State’s statement of facts unopposed
and deems the facts admitted in accordance with Local Rule 56. (Doc. 111). In addition, the
facts have been taken in the light most favorable to Parshall as the non-moving party, with all
reasonable inferences drawn in his favor.
Penn State is a state-related institution of higher education and instrumentality of the
Commonwealth of Pennsylvania that educates nearly 100,000 students each year. (Doc. 107,
¶ 1; Doc. 109, at ¶ 5-6). Penn State has used “PENN STATE” as a word and design mark
continuously since 1908 throughout Pennsylvania, the United States, and internationally.
(Doc. 107, ¶ 8; Doc. 109, at ¶ 15). Penn State engages with thousands of individuals through
its social media accounts, which prominently display its trademarks. (Doc. 107, ¶ 45-49; Doc.
109, ¶ 50-54).
A. THE PENN STATE FAMILY OF MARKS
Penn State has developed a family of PENN STATE-formative work and design marks
to be used in connection with its goods and services (collectively, “the PENN STATE Family
of Marks”), which all contain the common use of the term “PENN STATE.” (Doc. 107, ¶ 9;
Doc. 109, at ¶ 16; Doc. 108-2, at 2-19). Penn State registered the PENN STATE Family of
Marks with the United States Patent and Trademark Office (the “USPTO”), including
Registration Nos. 1308610, 1732445, 1870005, 4439041, 4561709, 4811121, 5052191,
5393863, 5441650, 5766698, 6089756, and 6208399. (Doc. 107, ¶ 11; Doc. 108-2, at 2-19).
Penn State owns five incontestable U.S. registrations for goods and services covering
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the PENN STATE Family of Marks (Nos. 1308610, 1732445, 1870005, 4439041, and
4561709) that have been in continuous use for more than five years. (Doc. 107, ¶ 12; Doc.
109, at ¶ 22; Doc. 108-3, at 2, 7, 12, 15, 18); see also 15 U.S.C. § 1065.
B. THE NITTANY LIONS MARKS
As early as 1984, Penn State adopted a mascot called the “Nittany Lion” for many
purposes, including Penn State’s sports teams and sporting events and goods and services
related to those events. (Doc. 107, ¶ 15; Doc. 109, ¶ 18-20). Penn State has used and promoted
the mark NITTANY LIONS and various design marks incorporating images of the Nittany
Lion (collectively, “the NITTANY LIONS Marks”), continuously throughout Pennsylvania,
the United States, and internationally. (Doc. 107, ¶ 16-17; Doc. 109, ¶ 18-21). Penn State
registered the NITTANY LIONS Marks with the USPTO, including Registration Nos.
1258906, 1325426, 1397810, 1402093, 5480198, and 5854383. (Doc. 107, ¶ 18; Doc. 108-8,
at 2-9). Penn State owns four incontestable registrations for goods and services covering the
NITTANY LIONS Marks (Nos. 1258906, 1325426, 1397810, and 1402093). (Doc. 107, ¶ 19;
Doc. 108-9, at 2, 5, 9, 12; Doc. 109; ¶ 22); see also 15 U.S.C. § 1065.
C. USE AND VALUE OF PENN STATE’S TRADEMARKS
Penn State’s trademarks are highly valuable to the entity. (Doc. 107, at ¶ 22; Doc. 109,
¶ 25). Penn State uses the “Penn State” mark on goods and services to refer to the
Pennsylvania State University for brand recognition and promotion. (Doc. 107, ¶ 23; Doc.
109, ¶ 14). The general public recognizes Penn State’s trademarks and associates those
trademarks with Penn State, including its good, services, and athletics programs. (Doc. 107,
¶ 24; Doc. 109, ¶ 26). Penn State polices for infringing and dilutive uses of its trademarks to
protect its investments. (Doc. 107, ¶ 37; Doc. 109, ¶ 39). Penn State invests significant
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resources to promote, advertise, and protect its trademarks and has engaged an exclusive
licensing agent to assist in the licensing program. (Doc. 107, ¶ 34; Doc. 109, ¶ 36). Penn State
issues cease and desist letters, takes action against pending trademark applications to the
USPTO, brings federal lawsuits, and pursues arbitration and “UDRP” domain name actions
to have infringing domain names transferred to Penn State. (Doc. 107, ¶ 37; Doc. 109, ¶ 39-
40). To protect its reputation and ensure the high quality of goods and services bearing Penn
State’s trademarks, Penn State exercises care and employs quality control measures. (Doc.
107, ¶ 38; Doc. 109, ¶ 41).
To promote its goods and services and to protect its trademarks, Penn State employs
several hundred communications and marketing professionals. (Doc. 107, ¶ 32; Doc. 109, ¶
34). Penn State uses paid, earned, owned, and shared media channels, as well as events,
sponsorships, and other platforms, to advance its priorities to promote research and
community initiatives, recruit prospective students, sell tickets for athletic events, and
positively impact the Pennsylvania community. (Doc. 107, ¶ 33; Doc. 109, ¶ 35). Penn State’s
revenues from its sale of goods and services bearing its trademarks, as well as from licenses
with licensed partners, are in the millions of dollars. (Doc. 107, ¶ 35; Doc. 109, ¶ 37). Goods
bearing the PENN STATE Family of Marks and NITTANY LIONS Marks are widely
recognized as being exclusively associated with Penn State and consumers trust that those
goods meet high-quality standards. (Doc. 107, ¶ 36; Doc. 109, ¶ 38).
Penn State’s athletic program is a member of the Big Ten Conference. (Doc. 107, ¶ 25;
Doc. 109, ¶ 27). Penn State partners with many bands and international corporations, who
pay for the right to use the Penn State trademarks through the sponsor relationship. (Doc.
107, ¶ 26; Doc. 109, ¶ 28). Other schools in the Big Ten Conference have similar sales and
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licensing programs, showing the public which goods and services are officially approved to
bear the respective school’s marks. (Doc. 107, ¶ 29; Doc. 109, ¶ 31).
In addition to selling and licensing others to sell goods and services bearing the Penn
State trademarks, Penn State maintains various online platforms. (Doc. 107, ¶ 40; Doc. 109,
¶ 45). Penn State’s official website, publicly accessible at https://www.psu.edu, displays its
trademarks and is used for the promotion of its academic and athletic programs, among other
things. (Doc. 107, ¶ 41; Doc. 109, ¶ 46). Penn State’s collegiate athletics program website,
publicly accessible at https://www.gopsusports.com, displays Penn State trademarks and
includes an online shop for apparel products. (Doc. 107, ¶ 43; Doc. 109, ¶ 48). Penn State’s
official online bookstore, publicly accessible at https://www.psu.bncollege.com, sells many
products, including apparel, which bear the Penn State trademarks. (Doc. 107, ¶ 42; Doc.
109, ¶ 47). Additionally, Penn State’s official licensing partners sell and promote goods and
services bearing Penn State’s trademarks online. (Doc. 107, ¶ 42; Doc. 109, ¶ 47). Penn State
distributes its goods and services through many channels, including at sporting events, at the
campus bookstore, through stores of licensing partners, and online sales. (Doc. 107, ¶ 44;
Doc. 109, ¶ 49).
D. PARSHALL’S “SPORTS BEER BREWING” BUSINESS AND USE OF INFRINGING MARKS
Parshall operates a business called the Sports Beer Brewing Company. (Doc. 107, ¶
50; Doc. 108-10, at 16:20-23, 17:20-18:4). Sports Beer Brewing Company is operated through
its website, publicly accessible at https://www.sportsbeerbrewing.com, which is owned and
controlled by Parshall. (Doc. 107, ¶ 51-52; Doc. 108-10, at 20:6-25, 21:11-13). Parshall
advertises Sports Beer Brewing Company as “an intellectual property holding company
consisting of a portfolio of sports trademarks, registrations and service marks for sports teams
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through out [sic] the United States,” which does not brew beer. (Doc. 107, ¶ 53; Doc. 108-10,
at 17:24-18:4; Doc. 108-11, at 6). The website states: “We have developed and obtained
trademark, service marks and name registrations for Sports Teams all over the County
complying with Secretary of State regulations.” (Doc. 107, ¶ 54; Doc. 108-10, at 20:25-31:3;
Doc. 108-11, at 6-7).
Parshall uses trademarks referring to professional and collegiate sports programs,
registering those trademarks at the state level. (Doc. 107, ¶ 55, 82; Doc. 108-11, at 9-12). On
August 11, 2016, Parshall registered two trademarks with the Pennsylvania Department of
State, Bureau of Corporations and Charitable Organizations, for the marks PENN STATE
NITTANY BEER (Registration No. 6450052) and PENN STATE NITTANY BREWING
CO (Registration No. 6445173). (Doc. 107, ¶ 86; Doc. 108-6, at 3-5; Doc. 108-7, at 2-4; Doc.
108-10, at 31:18-21). In those trademark applications, Parshall claimed to have been using
each mark since January 20, 2016, and to have used them within the Commonwealth of
Pennsylvania since January 27, 2016. (Doc. 107, ¶ 87; Doc. 108-5, at 4; Doc. 108-6, at 3).
Parshall attested:
Applicant is the owner of the mark, the mark is in use and, to the applicant’s
knowledge, no other person has registered, either federally or in this
Commonwealth or has the right to use such mark, either in the identical form
thereof or in such near resemblance thereto as to likely, when applied to the
goods or services of such other person, to cause confusion or to cause mistake,
or to deceive.
(Doc. 107, ¶ 89; Doc. 108-5, at 4; Doc. 108-6, at 3).
On May 20, 2019, Parshall registered the PENN STATE NITTANY LION CIGARS
mark with the Illinois Office of the Secretary of State (Registration No. 113080) in Class 34,
in connection with “smoking products.” (Doc. 107, ¶ 90; Doc. 108-7, at 2-3). Parshall stated
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he has been using the mark in Illinois since January 2, 2019, and attested:
[T]he applicant is the owner of the mark, that the mark is in use, and that to the
knowledge of the person verifying the application, no other person has
registered the mark, either federally or in this State, or has the right to use the
mark either in the identical form thereof or in such near resemblance thereto as
to be likely, when applied to the goods or services of such other person, to cause
confusion, or to cause mistake, or to deceive.
(Doc. 107, ¶ 91; Doc. 108-7, at 2; Doc. 108-29).
On August 23, 2019, after being served with the complaint, Parshall filed an intent-to-
use application with the USPTO to register PENN STATE NITTANY BEER in Class 32, in
connection with “beer.” (Doc. 107, ¶ 100; Doc. 108-16, at 2-6). Parshall filed the application
“[b]ecause of the litigation. Because of Pennsylvania State University saying I couldn’t use it
and filing a complaint against me.” (Doc. 107, ¶ 101; Doc. 108-10, at 103:2-7). On December
17, 2019, the Examining Attorney issued an Office Action that preliminarily refused to
register Parshall’s application on several grounds, including a likelihood of confusion with
Penn State’s registration for PENN STATE 1855. (Doc. 107, ¶ 102-03; Doc. 108-17, at 5-6).
The Examining Attorney concluded that Parshall’s applied-for PENN STATE NITTANY
BEER mark and Penn State’s registered mark “create the same commercial impression
because of the common element, PENN STATE,” and that the use of “BEER” in Parshall’s
applied-for mark, “is merely descriptive of or generic for applicant’s goods[, which] renders
the wording PENN STATE NITTANY the more dominant element of the mark.” (Doc. 107,
¶ 103-04; Doc. 108-17, at 3). Additionally, the Examining Attorney found that Parshall’s
applied-for mark falsely suggests that Parshall is associated with Penn State and its
trademarks. (Doc. 107, ¶ 105; Doc. 108-17, at 5-6). The Examining Attorney issued a six-
month deadline for Parshall to respond to the Office Action to challenge the refusal, or else
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the application would be deemed abandoned. (Doc. 107, ¶ 106; Doc. 108-17, at 3). After
Parshall failed to timely respond and later filed a petition to revive his application, the
Examining Attorney issued a Suspension Notice on October 19, 2020, suspending Parshall’s
application until this litigation was resolved. (Doc. 107, ¶ 107; Doc. 108-18, at 2; Doc. 108-
19, at 2).
Through Sports Beer Brewing Company, Parshall promotes, advertises, offers, and
sells beer, cigars, and t-shirts. (Doc. 107, ¶ 56; Doc. 108-4, at 4; Doc. 108-10, at 22:14-25;
Doc. 108-11, at 9-12, 18-21). Parshall offers to sell his goods through “catering, grocery stores,
distributors, food service companies, arenas and stadiums, alumni organization[,] restaurant
chains, colleges/universities, retail, big box and warehouse sales.” (Doc. 107, ¶ 57; Doc. 108-
11, at 9). Parshall “picked sports teams because . . . sports teams are well known all over the
United States.” (Doc. 107, ¶ 62; Doc. 108-10, at 54:11-12). The brands used in Sports Beer
Brewing Company are intended to refer specifically to the represented sports teams. (Doc.
107, ¶ 60; Doc. 108-10, at 57:13-58:3, 90:6-11). Parshall adopts college and professional sports
teams’ brands to appeal to fans of those teams and profit off those trademarked brands. (Doc.
107, ¶ 61; Doc. 108-10, at 51:2-20, 52:2-10). Parshall has never taken steps to obtain
permission from any sports teams referenced on the Sports Beer Brewing Company website
to use the teams’ trademarks or otherwise associate with them. (Doc. 107, ¶ 64; Doc. 108-10,
at 88:10-21).
Parshall has used and continues to use trademarks in connection with its goods that
incorporate the PENN STATE Family of Marks and the NITTANY LIONS Marks,
including PENN STATE NITTANY BREWING, PENN STATE NITTANY BEER, and
PENN STATE NITTANY LION CIGARS (collectively, the “Infringing Marks”). (Doc. 107,
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¶ 65; Doc. 108-10, at 22:2-8; Doc. 108-11, at 9-10). Parshall has used and intends to use the
Infringing Marks to sell, offer, and advertise its beer, t-shirts, cigars, and food products. (Doc.
107, ¶ 66; Doc. 108, ¶ 31-33; Doc. 108-5, at 5; Doc. 108-10, at 22:14-25; Doc. 108-12, at 3).
The goods and services Parshall is selling, marketing, and offering that bear the Infringing
Marks are the same and/or highly similar to the goods and services sold and marketed by
Penn State that bear its trademarks. (Doc. 107, ¶ 67; Doc. 108, ¶ 31-33; Doc. 108-4, at 6; Doc.
109, ¶ 28-33). The goods Parshall is licensing to third-parties that bear the Infringing Marks
are the same and/or highly similar to the goods and services sold and marketed by Penn State
that bear its trademarks. (Doc. 107, ¶ 68; Doc. 108, ¶ 31-33; Doc. 108-4, at 6; Doc. 109, ¶ 28-
33).
Parshall plans to sell goods that bear the Infringing Marks to athletic venues, bars,
restaurants, and grocery stores. (Doc. 107, ¶ 69; Doc. 108-12, at 3). Parshall has licensed or
offered to license the Infringing Marks to others. (Doc. 107, ¶ 70; Doc. 108, at ¶ 31-33; Doc.
108-5, at 5; Doc. 108-10, at 29:24-30:4; Doc. 108-12, at 2-3). Parshall has contacted brewing
companies to discuss licensing the Infringing Marks for use with beer and cigars. (Doc. 107,
¶ 71-72; Doc. 38, at 1; Doc. 108-10, at 25:21-26:6, 31:25-33:15; Doc. 108-12, at 2-3). Parshall
did not use the Infringing Marks prior to 2016. (Doc. 107, ¶ 74; Doc. 108-5, at 4; Doc. 108-
6, at 3; Doc. 108-7, at 2-3; Doc. 108-10, at 23:23-24:5). Parshall has represented that, as of
Spring 2020, he did not make any sales of goods using the Infringing Marks. (Doc. 107, ¶ 73;
Doc. 38, at 1).
When he first used and applied to register the Infringing Marks, Parshall was aware
that Penn State owns USPTO registered trademarks and that Penn State licenses those
trademarks. (Doc. 107, ¶ 776; Doc. 108, ¶31-33; Doc. 108-5, at 5; Doc. 108-10, at 46:2-12).
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Parshall’s targeted consumers are fans of Penn State and its sports teams. (Doc. 107, ¶ 77;
Doc. 108, ¶ 31-33; Doc. 108-5, at 6; Doc. 108-10, at 26:16-20, 28:18-30:4). Parshall selected
the Infringing Marks to target consumers associated with Penn State and to make a profit.
(Doc. 107, ¶ 78-79; Doc. 108, ¶ 31-33; Doc. 108-5, at 6; Doc. 108-10, at 27:13-20, 36:17-37:2,
49:7-13, 51:2-20). Parshall has never obtained a license or authorization from Penn State to
use the Infringing Marks. (Doc. 107, ¶ 81; Doc. 108, ¶ 31-33; Doc. 108-5, at 6; Doc. 108-10,
at 86:12-17, 88:10-21).
On March 6, 2018, Penn State received correspondence from the Commonwealth of
Pennsylvania’s Governor’s Office of General Counsel, stating that Parshall’s trademark
registration for PENN STATE NITTANY BEER “resembles trade names used by your
organization in this Commonwealth” and warning Penn State that “Mr. Parshall may be
attempting to cause confusion or mistake or to deceive in registering these marks.” (Doc. 107,
¶ 94; Doc. 108-5, at 2). On June 7, 2019, Penn State issued a cease and desist letter, demanding
that Parshall immediately “cease all use of and abandon any registrations of PENN STATE,
NITTANY LIONS, and any phrase(s) or word(s) similar to PENN STATE or NITTANY
LIONS, either alone or with other elements, in any manner, including but not limited to as a
mark, tagline, trade name, hashtag, domain name, and/or social media account.” (Doc. 107,
¶ 96-97; Doc. 108, ¶ 15, 34; Doc. 108-14, at 3). After receiving this letter, Parshall contacted
Brad Newberg, counsel for Penn State, refusing to stop infringing and asking that Penn State
pay Parshall to sell his state registrations to Penn State. (Doc. 107, ¶ 98; Doc. 108, ¶34). To
date, Parshall continues to use the Infringing Marks on the Sports Beer Brewing Company
website. (Doc. 107, ¶ 99; Doc. 108-15, at 2).
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E. INFRINGING DOMAINS
Parshall has registered three domains that incorporate the Penn State Marks, including
pennstatehappyvalleybeer.com, pennstatenittany.beer, and pennstatenittanycigars.com. (the
“Infringing Domains”). (Doc. 107, ¶ 111-12; Doc. 108-20, at 2-10).
On June 20, 2020, Parshall registered the domain <pennstatehappyvalleybeer.com>,
which incorporates the PENN STATE mark and “HAPPY VALLEY,” a mark that Penn
State owns a federal trademark for in International Class 25, “headwear, shirts, and
sweatshirts” (Registration No. 5899279), and that Penn State has used in commerce as a
source identifier. (Doc. 107, ¶ 111-12; Doc. 108-20, at 2-5; Doc. 108-21, at 2-3). At the time
he registered the domain, Parshall was aware that Penn State has trademark rights in HAPPY
VALLEY. (Doc. 107, ¶ 113; Doc. 108-10, at 177:24-178:7). Parshall has applied three times
for Pennsylvania state registration of PENN STATE HAPPY VALLEY BEER. (Doc. 107, ¶
114; Doc. 108-10, at 176:20-177:14). On June 22, 2020, Parshall registered the domain
<pennstatenittany.beer>. (Doc. 107, ¶ 116; Doc. 108-20, at 3-6).
On August 14, 2020, Penn State commended a Uniform Dispute Resolution
Procedure (“UDRP”) action concerning the domains, https://www.
pennstatehappyvalleybeer.com and <pennstatenittany.beer>. (Doc. 107, ¶ 118; Doc. 108-22,
at 2). On September 9, 2020, the UDRP Panel found that Parshall registered the domains in
bad faith for the purpose of confusing Internet users into thinking that Parshall was connected
to Penn State, and for the purpose of diverting Internet users to websites for Parshall’s
financial gain. (Doc. 107, ¶ 118; Doc. 108-22, at 5). The UDRP Panel ordered Parshall to
transfer the domains to Penn State. (Doc. 107, ¶ 118; Doc. 108-22, at 10).
On October 6, 2020, Parshall registered the domain <pennstatenittanycigars.com>.
15
(Doc. 107, ¶ 119; Doc. 108-20, at 9-10). On November 20, 2020, Penn State initiated another
UDRP action regarding this domain. (Doc. 107, ¶ 120; Doc. 108-23, at 2). On December 24,
2020, the UDRP Panel found that: “[Parshall] registered and uses the
[<pennstatenittanycigars.com>] Domain Name in bad faith to create confusion with [Penn
State]’s PENN STATE and the NITTANY LIONS marks for commercial gain by using the
Domain Name to resolve to a website containing advertisements and links third party
websites for commercial gain.” (Doc. 107, ¶ 120; Doc. 108-20, at 7). The UDRP Panel
ordered Parshall to transfer the domain to Penn State. (Doc. 107, ¶ 120; Doc. 108-23, at 7-8).
IV. DISCUSSION
Penn State asserts that it is entitled to summary judgment “regarding the blatant,
infringing, and unauthorized use of Penn State’s trademarks by [Parshall].” (Doc. 106, at 7).
Parshall avers that Judge Wilson does not have authority over these trademark issues and
does not understand the laws of intellectual property or trademarks. (Doc. 110, at 1). The
Court will outline the law regarding Penn State’s claims, before moving on to Penn State’s
arguments for why summary judgment should be granted.
A. TRADEMARK INFRINGEMENT, FALSE DESIGNATION OF ORIGIN, AND UNFAIR

COMPETITION (COUNTS I-IV, XI, XII)
Penn State argues that it is entitled to summary judgment as to Counts I-IV, XI, and
XII of the second amended complaint, which alleges that Parshall infringed Penn State’s
trademark rights. (Doc. 106, at 22). The Lanham Act protects against the use of trademarks
that are likely to cause confusion, mistake, or deception of any kind. Kos Pharm., Inc. v. Andrx
Corp., 369 F.3d 700, 711 (3d Cir. 2004). Penn State’s principal claims under the Lanham
Act—federal trademark infringement, 15 U.S.C. § 1114, and federal unfair competition, 15
16
U.S.C. § 1125(a)(1)(A)—are measured “by identical standards.” A & H Sportswear, Inc. v.
Victoria's Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir. 2000). “To prove either form of Lanham
Act violation, a plaintiff must demonstrate that (1) it has a valid and legally protectable mark;
(2) it owns the mark; and (3) the defendant's use of the mark to identify goods or services
causes a likelihood of confusion.” A & H Sportswear, 237 F.3d at 210-11; Giannone v. Giannone,
429 F.Supp.3d 34, 39 (E.D. Pa. 2019) (applying the same standard to Pennsylvania common
law trademark infringement and unfair competition claims). Unlike Pennsylvania common
law claims, federal trademark infringement and unfair competition claims contain an
interstate commerce requirement. 2 See, e.g., Pennzoil-Quacker State Co. v. Smith, No. 2:05-CV-
1505, 2008 WL 4107159, *9 n.12 (W.D. Pa. Sept. 2, 2008) (noting that the single difference
in the infringement inquiry is the interstate commerce requirement, and that the Court’s
analysis is otherwise identical). The plaintiff bears the burden of proof. A & H Sportswear, 237
F.3d at 210.
2
This is not a fact in dispute here. Parshall uses the Infringing Marks to advertise and
sell products on the Sports Beer Brewing Company website, which constitutes a “use in
commerce.” (Doc. 107, ¶ 54-56, 65-67); see Dluhos v. Strasberg, No. 00-3163, 2005 WL
1683696, *7 (D.N.J. June 24, 2005) (defendant’s use of infringing marks in operating his
website constitutes a “use in commerce,” “because it affects a plaintiffs' ability to offer
services.”) (quoting Trade Media Holdings Ltd. v. Huang & Assocs., 123 F.Supp.2d 233, 242
(D.N.J. 2000)). The fact that Parshall has not actually sold any infringing products is
immaterial, because liability under the Lanham Act can be based on advertising or promotion
alone. See VersaTop Support Sys., LLC v. Georgia Expo, Inc., 921 F.3d 1364, 1365-66 (Fed. Cir.
2019) (holding that defendant's use of plaintiff's trademarks in advertising and brochures was
sufficient to establish liability for trademark infringement); BMW of N. Am., LLC v. Barreira,
633 F. App'x 882, 884 (9th Cir. 2015) (finding irrelevant the fact that defendant “did not
actually complete any sales,” because “even an offer to sell goods with an infringing
trademark establishes liability under the Lanham Act.” (emphasis in original)).
17
“A certificate of registration of a mark upon the principal register ... shall be prima
facie evidence of the validity of the registered mark and of the registration of the mark, of the
owner's ownership of the mark, and of the owner's exclusive right to use the registered mark
in commerce or in connection with the goods or services specified in the certificate.” 15
U.S.C. § 1057(b); B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 142-43 (2015); see
Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 438 (3d Cir. 2000)
(“If the mark at issue is federally registered and has become incontestable, then validity, legal
protectability, and ownership are proved.”). Here, Penn State owns five incontestable U.S.
registrations for goods and services covering the PENN STATE Family of Marks (Nos.
1308610, 1732445, 1870005, 4439041, and 4561709) that have been in continuous use for
more than five years. (Doc. 107, ¶ 12; Doc. 109, at ¶ 22; Doc. 108-3, at 2, 7, 12, 15, 18).
Additionally, Penn State owns four incontestable registrations for goods and services covering
the NITTANY LIONS Marks (Nos. 1258906, 1325426, 1397810, and 1402093). (Doc. 107,
¶ 19; Doc. 108-9, at 2, 5, 9, 12; Doc. 109; ¶ 22). Thus, the first two elements of trademark
infringement and unfair competition are met. See New Balance Athletics, Inc. v. USA New Bunren
Int’l Co., 424 F.Supp.3d 334, 346 (D. Del. 2019) (on motion for summary judgment, finding
first two elements of trademark infringement satisfied where plaintiff showed evidence of
federal registrations that obtained incontestable status).
Lastly, Penn State must prove that Parshall's “use of the mark to identify goods or
services causes a likelihood of confusion.” A & H Sportswear, 237 F.3d at 210-11. Penn State
argues that the use of the PENN STATE and NITTANY LIONS word and design marks on
Parshall’s Sports Beer Brewing Company website presents a case of confusion. In all cases
involving likelihood of confusion under the Lanham Act, the Third Circuit applies a ten-factor
18
analysis to determine whether such likelihood exists, set forth in Interpace Corp. v. Lapp, Inc.,
721 F.2d 460, 463 (3d Cir.1983), and commonly known as the Lapp factors:
(1) the degree of similarity between the owner's mark and the allegedly
infringing mark; (2) the strength of the owner's mark; (3) the price of the goods
and other factors indicating the care and attention one expects would be given
when making a purchase; (4) the length of time the alleged infringer has used
the mark without evidence of actual confusion arising; (5) the intent of the
alleged infringer in adopting the mark; (6) the evidence of actual confusion; (7)
whether the goods are marketed through the same channels; (8) the extent to
which the target markets are the same; (9) the perceived relationship of the
goods, whether because of their near-identity, similarity of function, or other
factors; and (10) other facts suggesting that the prior owner might be expected
to expand into the alleged infringer's market.
Arrowpoint Capital Corp. v. Arrowpoint Asset Mgmt., 793 F.3d 313, 319 (3d Cir. 2015)
(citing A & H Sportswear, 237 F.3d at 215).
None of them in itself is determinative and each must be “weighed and balanced”
based on the particular facts of the case. Checkpoint Sys., Inc. v. Check Point Software Techs., Inc.,
269 F.3d 270, 280 (3d Cir. 2001). Nevertheless, one of the factors, the sixth in the Lapp list,
is of particular significance because it focuses on evidence of actual confusion, and all of the
Lapp factors are only proxies for the fundamental question of whether there is a likelihood of
confusion from the use of similar marks. Cf. Top Tobacco, L.P. v. N. Atl. Operating Co., 509 F.3d
380, 383 (7th Cir. 2007) (“A list of factors designed as proxies for the likelihood of confusion
can't supersede the statutory inquiry.”). The Court will address these concerns in its discussion
of the Lapp factors. Looking at all relevant factors, the Court must determine whether, in the
totality of the circumstances, marketplace confusion is likely. Checkpoint, 269 F.3d at 297. As
the analysis is highly fact-intensive, “summary judgment for either party is unlikely, absent a
particularly one-sided factual record on the issue.” BabyAge.com., Inc. v. Leachco, Inc., No. 3:07-
19
CV-1600, 2009 WL 82552, *8 (M.D. Pa. Jan. 12, 2009) (citing 800–JR Cigar, Inc. v. GoTo.com,
Inc., 437 F.Supp.2d 273, 285 (D.N.J. 2006)).
1. Similarity of Mark: Lapp Factor (1)
This factor, often the most critical where the alleged confusion arises between two
similar trademarks, weighs heavily in favor of a likelihood of confusion, where the alleged
confusion arises from Parshall's use of Penn State's mark. Checkpoint, 269 F.3d at 281. “[I]f
the overall impression created by marks is essentially the same, ‘it is very probable that the
marks are confusingly similar.’” Opticians Ass'n of Am. v. Indep. Opticians of Am., 920 F.2d 187,
195 (3d Cir.1990) (quoting J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair
Competition, § 23:7 (2d ed.1984)). In applying this test, courts attempt to “move into the mind
of the roving consumer,” and determine “whether the labels create the same overall
impression when viewed separately.” Checkpoint, 269 F.3d at 281 (citations omitted). Courts
must “compare the appearance, sound and meaning of the marks,” to determine whether the
“average consumer, on encountering one mark in isolated circumstances of marketplace and
having only a general recollection of the other, would likely confuse or associate the two.”
Checkpoint, 269 F.3d at 281 (citations omitted).
Here, there is no dispute that there is exact identity between Penn State’s registered
marks, including PENN STATE and NITTANY LIONS, and the marks used on Parshall's
Sports Beer Brewing Company website, including PENN STATE NITTANY BREWING,
PENN STATE NITTANY BEER, and PENN STATE NITTANY LION CIGARS. (Doc.
107, ¶ 65; Doc. 108-10, at 22:2-8; Doc. 108-11, at 9-10); see Pappan Enters., Inc. v. Hardee’s Food
Syss., Inc., 143 F.3d 800, 804 (3d Cir. 1998) (“where the identical mark is used concurrently
by unrelated entities, a likelihood of confusion is inevitable.”). The dominant portion of each

20
parties’ trademark are the words “PENN STATE” and “NITTANY LION.” The terms
“BREWING,” “BEER,” and “CIGARS” are generic or descriptive terms, so their addition
to the dominant terms “PENN STATE” and “NITTANY LIONS” would not lead the
average consumer to disassociate the products. J. Thomas McCarthy, 3 McCarthy on
Trademarks and Unfair Competition, § 23:50 (4th ed. 2000) (“The Trademark Board has said
that the general rule is that a subsequent user may not avoid likely confusion by appropriating
another's entire mark and adding descriptive or non-descriptive matter to it.”); Checkpoint, 269
F.3d at 281-82 (affirming District Court’s finding of likelihood of confusion where dominant
portions of marks overlapped and only generic or descriptive terms were added).
Thus, the overall commercial impression of the parties’ marks is confusingly similar
and the first Lapp factor weighs in favor of summary judgment.
2. Strength of Mark: Lapp Factor (2)
The second Lapp factor weighs heavily in favor of a likelihood of confusion. The
strength of a mark is determined by (1) the distinctiveness or conceptual strength of the mark
and (2) its commercial strength or marketplace recognition. Checkpoint, 269 F.3d at 282.
Under distinctiveness, the Court looks at the inherent features of the mark. Checkpoint, 269
F.3d at 282. Trademarks protected under the Lanham Act are divided into four categories:
[1] arbitrary or fanciful marks [that] use terms that neither describe nor suggest
anything about the product; they “bear no logical or suggestive relation to the
actual characteristics of the goods.” [2] Suggestive marks [that] require
consumer “imagination, thought or perception” to determine what the product
is.[3] Descriptive terms [that] “forthwith convey[ ] an immediate idea of the
ingredients, qualities or characteristics of the goods” [and][4] generic marks ...
that “function as the common descriptive name of a product class.”
A & H Sportswear, 237 F.3d at 221-22 (quoting A.J. Canfield Co. v. Honickman,
808 F.2d 291, 296-97 (3d Cir.1986)).
21
To qualify for protection under the Act, a mark must be either arbitrary, suggestive, or must
be descriptive with a demonstrated secondary meaning. A & H Sportswear, 237 F.3d at 222.
“A mark is descriptive with a secondary meaning when the mark is interpreted by the
consuming public to be not only an identification of the product or services, but also a
representation of the origin of those products of services.” Checkpoint, 269 F.3d at 283 n. 10.
Generic marks do not receive trademark protection. A & H Sportswear, 237 F.3d at 222. These
categories are also a useful proxy in most circumstances for the first prong of determining
mark strength—which in turn determines the level of protection given—because “the
classification system's primary purpose is . . . to determine whether consumers are likely to
perceive the mark as a signifier of origin, rather than as a mere identification of the type of
product.” A & H Sportswear, 237 F.3d at 222. “These two inquiries—whether a mark is, in
fact, a trademark, versus how much protection the mark should receive—are often
identical . . . .” A & H Sportswear, 237 F.3d at 222.
Here, Parshall has been served with discovery in this case and has failed to respond
to Requests for Admission (“RFA”). (Doc. 108, ¶ 31-33; Doc. 108-4, at 2, 9). Penn State’s
RFAs are all deemed admitted and are properly considered on summary judgment. See Fed.
R. Civ. P. 36(a)(3) (failure to respond or object to RFAs has the effect that the “matter is
admitted”); Sec’y U.S. Dep’t of Labor v. Kwasny, 853 F.3d 87, 91 (3d Cir. 2017) (“Matters
deemed admitted due to a party’s failure to respond to requests for admission are ‘conclusively
established’ under Federal Rule of Civil Procedure 36(b), and may support a summary
judgment motion.”). Therefore, Parshall has admitted that, among other things: (1) the
Infringing Marks are composed of Penn State trademarks (Doc. 108-4, ¶ 22); (2) Penn State
trademarks are famous and Parshall knew of them when Parshall first used and applied to
22
register the Infringing Marks (Doc. 108-4, ¶ 1, 2, 7); (3) Parshall specifically markets his goods
and services to fans of Penn State (Doc. 108-4, ¶ 8); (4) Parshall selected the Infringing Marks
with the intention of making consumers believe he and his business were affiliated with Penn
State (Doc. 108-4, ¶ 10, 23); (5) Parshall has never had authorization from Penn State for his
actions (Doc. 108-4, ¶ 11); (6) Parshall uses the Infringing Marks to sell or license goods and
services that are the same or highly similar to ones sold and licensed by Penn State (Doc. 108-
4, ¶ 12, 13); and, (7) Parshall registered the Infringing Marks at the state level to circumvent
the trademark process in hopes Penn State would not find out about his actions (Doc. 108-4,
¶ 14).
Additionally, Parshall was deposed in this case on August 25, 2020. (Doc. 108-10, at
2). In the deposition, Parshall admitted, among other things, that: (1) Parshall purposefully
registers marks in the states where the teams are based because fans of those teams will be
most likely to drink his beer (Doc. 108-10, at 18:10-19:13; 39:17-40:20); (2) Parshall decided
to use “famous professional and college sports teams for the marketing and selling of beer,
cigars, food and t-shirts” about “four years ago” (Doc. 108-10, at 23:23-24:5); (3) Parshall’s
products are directed to the fans of the teams who he thinks will go to tailgate parties, drink
his beer, smoke his cigars, and wear his apparel (Doc. 108-10, at 24:22-25-9, 26:16-20; 29:16-
30-4); (4) Parshall 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 (Doc. 108-10, at 30:13-31:3; 35:16-37:10; 164:6-166:8; (5) Parshall
registered one of the Infringing Marks in Illinois because he spoke to a vendor to license it the
Penn State trademark for cigars (Doc. 108-10, at 31:22-32:13); (6) Parshall does not use his
own name for the association with athletic teams because goods with those names will sell
23
better (Doc. 108-10, at 51:14-53:19); and (7) the statement on <sportsbeerbrewing.com>’s
website that Parshall licenses trademarks “for” sports teams is intended to convey that
Parshall is licensing them “on behalf of” the teams. (Doc. 108-10, at 85:19-23, 90:6-90:11).
It is clear that Penn State’s marks are distinctive and commercially strong. Again, Penn
State owns five incontestable U.S. registrations for goods and services covering the PENN
STATE Family of Marks, and four incontestable registrations for goods and services covering
the NITTANY LIONS Marks. (Doc. 107, ¶ 12, 19; Doc. 108-3, at 2, 7, 12, 15, 18; Doc. 108-
9, at 2, 5, 9, 12; Doc. 109; ¶ 22). Further, Parshall admitted that the Penn State Marks are
famous and were famous when he started using the Infringing Marks. (Doc. 107, ¶ 13-14, 20-
21; Doc. 108-4). Additionally, Penn State has used “PENN STATE” as a word and design
mark continuously since 1908 throughout Pennsylvania, the United States, and
internationally. (Doc. 107, ¶ 8; Doc. 109, at ¶ 15). As early as 1984, Penn State has used and
promoted the mark NITTANY LIONS and various design marks incorporating images of the
Nittany Lion. (Doc. 107, ¶ 15; Doc. 109, ¶ 18-20). Considering this evidence in conjunction
with the inherent distinctiveness of the PENN STATE and NITTANY LION marks, the
balance weighs in favor of considering these marks strong, warranting strong protection.
BabyAge.com, 2009 WL 82552, at *10 (strength of mark weighed in favor of protection because
mark is inherently distinctive and plaintiff indicates a sustained and widespread dissemination
of its name and brand).
3. Price of the Goods and Other Factors Indicative of the Care and Attention
Expected of Consumers when Making a Purchase: Lapp Factor (3)
“When consumers exercise heightened care in evaluating the relevant products before
making purchasing decisions, courts have found there is not a strong likelihood of confusion.”
24
Checkpoint, 269 F.3d at 284. “The reasonably prudent buyer is assumed to take more care in
purchasing ‘expensive’ items which he buys infrequently, than in buying everyday, relatively
inexpensive items.” McCarthy on Trademarks, § 23:96. When a product is expensive or
complex, or the buyer class is composed of professional purchasers, the likelihood of
confusion decreases. Checkpoint, 269 F.3d at 284. (quoting Versa Prods. Co., Inc. v. Bifold Co.
(Mfg.) Ltd., 50 F.3d 189, 204 (3d Cir. 1995)). Likewise, the more important a product is
perceived to be, the more care a consumer is presumed to exercise. Checkpoint, 269 F.3d at
284. Per contra, lesser degrees of care attend inexpensive products and services. Checkpoint,
269 F.3d at 284. When a purchasing class is “mixed”—composed of both average consumers
and professional consumers—courts apply the standard of care of “the least sophisticated
consumer.” Versa Prods. Co., 50 F.3d at 205 (quoting Ford Motor Co. v. Summit Motor Prods.,
Inc., 930 F.2d 277, 293 (3d Cir. 1991)).
Here, consumers are not likely to exercise a high degree of care when purchasing the
goods at issue. The record establishes that the customer bases compels application of the least
sophisticated consumer standard care. Versa Prods. Co., 50 F.3d at 205. Beer products are an
ordinary consumer purchase that is relatively inexpensive, and consumers are not likely to
exercise a high degree of care and discrimination when purchasing beer products. The nature
of the products, namely beer, t-shirts, and cigars, are of the type that does not require
significant consumer care or attention as they are relatively inexpensive. See Brockum Co., A
Div. of Krimson Corp. v. Blaylock, 729 F. Supp. 438 (E.D. Pa. Jan. 31, 1990) (“T-shirts are
relatively inexpensive items of apparel and, as such, are unlikely to be the object of careful
and intensive scrutiny by a prospective purchaser”). Parshall has not proffered evidence
regarding the price he intends to charge for the products that bear the Infringing Marks. (Doc.
25
108-10, at 22:14-23:4). “The more widely accessible and inexpensive the products and
services, the more likely that consumers will exercise a lesser degree of care and
discrimination in their purchases.” CAE, Inc. v. Clean Air Engineering, Inc., 267 F.3d at 683 (7th
Cir. 2001). There is no evidence in the record that customers of Parshall’s businesses “are
particularly sophisticated or deliberative.” AutoZone, Inc. v. Strick, 543 F.3d923, 933 (7th Cir.
2008). Keeping in mind, therefore, the physical similarity of the marks and the danger of
affiliation confusion, a reasonable trier of fact could also conclude from the evidence in the
record that the third Lapp factor favors Penn State.
4. The Length of Time Defendant has Used the Mark without Evidence of Actual
Confusion & Evidence of Actual Confusion: Lapp Factors (4) & (6)
The fourth and sixth factors task the court to consider whether a “pattern of confusion”
has emerged in the relevant product or service market. UHS of Delaware, Inc. v. United Health
Serv., Inc., 227 F.Supp.3d 381, 395 (M.D. Pa. 2016). This inquiry is not concerned with
“isolated and idiosyncratic” examples of confusion between products or services. A & H
Sportswear, 237 F.3d at 227. Instances of confusion of limited scope may be “dismissed as
inconsequential or de minimis.” 4 McCarthy, supra, at § 23:14. The fourth factor
acknowledges that marks which have coexisted without confusion for years are less likely to
cause consumer confusion in the future. Harp v. Rahme, 984 F.Supp.2d 398, 416 (E.D. Pa.
2013) (quoting Versa Prods. Co., 50 F.3d at 204-05). This inference strengthens the longer the
challenged marks have been in use. Versa Prods. Co., 50 F.3d at 205. Evidence of actual
confusion is not required to prove a likelihood of confusion, but it is highly probative when
offered. Checkpoint, 269 F.3d at 291. On the other hand, the passage of an appreciable amount
of time without evidence of actual confusion can give rise to the inference that such confusion
26
will not likely occur in the future. Checkpoint, 269 F.3d at 291 (quoting Versa Prods. Co., 50
F.3d at 205).
Parshall intends to create an association between Parshall’s registrations and Penn
State. At the top of Parshall’s website is the slogan: “Your Brand of Beer for Sporting and
Entertaining Events.” (Doc. 108-11, at 6). Parshall provides a list of “Sports Beer Brewing
Company Trademarks” for “catering, grocery stores, distributors, food service companies,
arenas & stadiums, alumni organizations, restaurant chains, colleges/universities, retail, big
box and warehouse stores.” (Doc. 108-11, at 9). The website lists over 50 well-known college
and professional athletic teams, including Penn State. (Doc. 108-11, at 9-12). Parshall
describes his business as an “intellectual property holding company consisting of a portfolio
of sports trademarks, registration and service marks for sports teams throughout the United
States.” (Doc. 108-11, at 3).
Additionally, Parshall admitted that the Infringing Marks are composed of Penn State
trademarks and that he selected the Infringing Marks with the intention of making consumers
believe he and his business were affiliated with Penn State. (Doc. 108-4, ¶ 10, 22, 23). Further,
Parshall admitted that he registered the Infringing Marks at the state level to circumvent the
trademark process in hopes Penn State would not find out about his actions. (Doc. 108-4, ¶
12-14). In his deposition, Parshall stated that he plans to sell goods that bear the Infringing
Marks to athletic venues, bars, restaurants, and grocery stores. (Doc. 107, ¶ 69; Doc. 108-12,
at 3). Additionally, Parshall admitted that he has licensed or offered to license the Infringing
Marks to others and contacted brewing companies to discuss licensing the Infringing Marks
27
for use with beer and cigars. 3 (Doc. 107, ¶ 70-72; Doc. 38, at 1; Doc. 108, at ¶ 31-33; Doc.
108-5, at 5; Doc. 108-10, at 25:21-26:6, 29:24-30:4, 31:25-33:15; Doc. 108-12, at 2-3).
However, Parshall has represented that, as of Spring 2020, he has not made any sales of goods
using the Infringing Marks. (Doc. 107, ¶ 73; Doc. 38, at 1).
This is prima facie evidence that Parshall is acting with specific intent to create an
association in the minds of consumers and Penn State. Therefore, the fourth and sixth Lapp
factors weigh in favor of Penn State.
5. Intent of Defendant in Adopting the Mark: Lapp Factor (5)
The fifth Lapp factor weighs heavily in favor of a likelihood of confusion. Evidence of
a party's intentional use of another's mark is not required to prove a Lanham Act violation,
but evidence of intentional or willful conduct weighs strongly in favor of finding a likelihood
of confusion. Checkpoint, 269 F.3d at 286.
Despite receiving a cease and desist letter from Penn State, demanding that Parshall
immediately “cease all use of and abandon any registrations of PENN STATE, NITTANY
LIONS, and any phrase(s) or word(s) similar to PENN STATE or NITTANY LIONS, either
alone or with other elements, in any manner, including but not limited to as a mark, tagline,
trade name, hashtag, domain name, and/or social media account,” Parshall continues to use
3
On February 10, 2022, Penn State filed timely objections to the undersigned’s initial
report and recommendation, first requesting that the Court “clarify whether text was
inadvertently omitted in the paragraph beginning at the bottom of page 27.” (Doc. 130, ¶ 1;
Doc. 131, at 1-2). On February 14, 2022, the District Judge declined to adopt the
undersigned’s recommendation and remanded the case back to the undersigned to address
the concerns raised in Penn State’s objections. (Doc. 132, at 2). Upon review of the text in
question, the undersigned determined that the relevant language “Intent to” was an
inadvertent typographical error. Therefore, the statement has been removed.
28
the Infringing Marks on the Sports Beer Brewing Company website. (Doc. 107, ¶ 96-97, 99;
Doc. 108, ¶ 15, 34; Doc. 108-14, at 3; Doc. 108-15, at 2); see, e.g., Nat’l Football League Props.,
Inc. v. New Jersey Giants, Inc., 637 F. Supp. 507, 518 (D.N.J. 1986) (continued use of marks
after receiving cease and desist letters signified bad faith). Moreover, in failing to respond to
Penn State’s RFAs, Parshall admitted that the Infringing Marks are composed of Penn State
trademarks (Doc. 108-4, ¶ 22), that Penn State trademarks are famous (Doc. 108-4, ¶ 1), and
that he selected the Infringing Marks with the intention of making consumers believe he and
his business were affiliated with Penn State. (Doc. 108-4, ¶ 10, 23). Additionally, in his
deposition, Parshall admitted that the statement on <sportsbeerbrewing.com>’s website that
Parshall licenses trademarks “for” sports teams is intended to convey that Parshall is licensing
them “on behalf of” the teams. (Doc. 108-10, at 85:19-23, 90:6-90:11).
Thus, there is evidence that Parshall chose to use the Infringing Marks with Penn
State’s marks in mind and intentionally sought to make use of Penn State’s marks.
6. Whether the Goods are Marketed through the Same Channels of Trade & Extent
to which the Targets of the Parties' Sales Efforts are the Same: Lapp Factors (7) &
(8)
The seventh and eighth Lapp factors assess the existence and degree of overlap among
the parties' trade channels and target markets. When parties target their sales efforts to the
same consumer base, the likelihood of confusion increases. Checkpoint, 269 F.3d at 289.
Similarly, although “perfect parallelism will rarely be found,” significant overlap between
marketing and advertising channels correlates to greater likelihood of confusion. A & H
Sportswear, 237 F.3d at 225; Checkpoint, 269 F.3d at 288-89 (quoting Acxiom Corp. v. Axiom,
Inc., 27 F.Supp.2d 478, 502 (D. Del. 1998)). To this end, the Court must consider the class of
29
customers to whom goods and services are marketed, the manner in which those products are
advertised, and the channels through which they are sold. See Checkpoint, 269 F.3d at 288-89.
Penn State and Parshall target the same group of consumers, using overlapping forms
of advertising and channels of trade. Specifically, both parties target members of the general
public that recognize Penn State’s trademarks and associates those trademarks with Penn
State, including its good, services, and athletics programs. (Doc. 107, ¶ 24; Doc. 108-4, ¶ 10,
22, 23; Doc. 109, ¶ 26). Parshall admitted that his targeted consumers are fans of Penn State
and its sports teams. (Doc. 107, ¶ 77; Doc. 108, ¶ 31-33; Doc. 108-5, at 6; Doc. 108-10, at
26:16-20, 28:18-30:4).
Additionally, both parties advertise and distribute their products through licensing
partners and the internet. Penn State distributes its goods and services through many
channels, including at sporting events, at the campus bookstore, through stores of licensing
partners, and through online sales. (Doc. 107, ¶ 44; Doc. 109, ¶ 49). Displayed on the Sports
Beer Brewing Company website, Parshall offers to sell his goods through “catering, grocery
stores, distributors, food service companies, arenas and stadiums, alumni organization[,]
restaurant chains, colleges/universities, retail, big box and warehouse sales.” (Doc. 107, ¶ 57;
Doc. 108-11, at 9). Thus, there is significant overlap in the channels of trade used by the
parties; indeed, Penn State seems to simply have a larger breadth of advertising and
distribution in the same market and channels used by Parshall. BabyAge.com, 2009 WL 82552,
at *11).
Given these facts, the seventh and eighth Lapp factors weigh towards a greater
likelihood of confusion.
30
7. Relationship of Goods in the Minds of Consumers Because of Similarity of

Function: Lapp Factor (9)
Under this factor, “[t]he question is whether the consumer might ... reasonably
conclude that one company would offer both of these related products.” Fisons Horticulture v.
Vigoro Indus., 30 F.3d 466, 481 (3d Cir. 1994). “The test is whether the goods are similar
enough that a customer would assume they were offered by the same source.” Checkpoint, 269
F.3d at 286. As mentioned above, product relatedness is particularly important to the initial
interest analysis because “[w]hen products are similar, a firm is more likely to benefit from
the goodwill of a firm with an established mark.” Checkpoint, 269 F.3d at 298. Taking
advantage of another mark's goodwill can allow a competitor to get its foot in the door via
initial confusion. BabyAge.com, 2009 WL 82552, at *12. Thus, closely related products
strongly indicate a greater likelihood of confusion.
Here, the parties’ competing products display identical and/or substantially similar
marks and designs, differentiated only by generic terms. Penn State uses and licenses its
trademarks in relation to apparel and alcohol-related beverage products, such as cups, glasses,
tumblers, and koozies, but chooses not to license its marks for alcohol itself for the time being.
(Doc. 107, ¶ 30; Doc. 109, ¶ 32). Penn State does not sell beer that is branded with the Penn
State trademark at this time, but does sell beer at its restaurants, hotels, and some
entertainment events. (Doc. 107, ¶ 31; Doc. 109; ¶ 33). Notably, Parshall admitted that the
goods and services he sells, markets, and offers that bear the Infringing Marks are the same
and/or highly similar to the goods and services sold and marketed by Penn State that bear its
trademarks. (Doc. 107, ¶ 67; Doc. 108, ¶ 31-33; Doc. 108-4, at 6; Doc. 109, ¶ 28-33).
Moreover, Parshall admitted that he has never taken steps to obtain permission from any
31
sports teams referenced on the Sports Beer Brewing Company website to use the teams’
trademarks or otherwise associate with them. (Doc. 107, ¶ 64; Doc. 108-10, at 88:10-21).
It is unlikely a consumer could identify the particular source of the competing
products. Thus, this factor weighs heavily towards a greater likelihood of confusion as a
consumer could easily assume the parties’ products were offered by the same source.
8. Evidence of Converging Markets: Lapp Factor (10)
This factor considers whether there is evidence a trademark plaintiff is moving or has
moved into the same market as the defendant and is primarily relevant in non-competing
product cases. Checkpoint, 269 F.3d at 290. Parshall has used and intends to continue using
Infringing Marks that are identical and/or substantially similar to Penn State’s registered
marks. Parshall admitted that he uses the Infringing Marks to sell or license goods and services
that are the same or highly similar to ones sold and licensed by Penn State. (Doc. 108-4, ¶ 12,
13). Therefore, this factor weighs in favor of a likelihood of confusion.
9. Summary of the Lapp factors
Evaluating the Lapp factors on the record as currently developed, the undersigned
concludes that Penn State’s motion for summary judgment must be granted. (Doc. 105). By
virtue of their inherent distinctiveness, the Penn State marks are, in isolation, conceptually
strong. The Lapp factors weigh strongly in favor of finding a likelihood of confusion and no
factors weigh against finding a likelihood of confusion. Accordingly, the undersigned finds
that Penn State has demonstrated a likelihood of confusion. It is respectfully recommended
that Penn State’s motion for summary judgment (Doc. 105) be granted as to Counts I-IV, XI,
and XII of the second amended complaint.
32
B. TRADEMARK COUNTERFEIT (COUNTS VII & VIII)
Penn State also moves for summary judgment on its claim of trademark counterfeiting
under the Lanham Act. (Doc. 105, at 1). Section 1114(1) of the Lanham Act prohibits the use
in commerce of any counterfeit of a registered mark or the actual counterfeiting of any
registered mark in connection with the sale, distribution or advertising of goods or services
which is likely to cause confusion or mistake, or to deceive. 15 U.S.C. § 1114(1)(a) & (b). For
purposes of a federal counterfeiting claim under the Lanham Act, the term “counterfeit mark”
is defined as “a counterfeit of a mark that is registered on the principal register in the United
States Patent and Trademark Office for such goods or services sold, offered for sale, or
distributed and that is in use, whether or not the person against whom relief is sought knew
such mark was so registered; or a spurious designation that is identical with, or substantially
indistinguishable from, a [registered mark].” 15 U.S.C. §§ 1116(d) (1)(B)(i) & (ii), 1127.
However, a counterfeit mark does not include any mark or designation for which the
manufacturer or producer had authorization to use at the time of manufacture or production.
15 U.S.C. §§ 1116(d)(1)(B). Thus, to establish a claim of trademark counterfeiting, a plaintiff
must prove that: (1) the defendant “infringed a registered trademark in violation of the
Lanham Act, 15 U.S.C. § 1114(1)(a), and (2) intentionally used the trademark knowing that
i[t] was counterfeit or was willfully blind to such use.” Louis Vuitton Malletier & Oakley, Inc. v.
Veit, 211 F.Supp.2d 567, 580-81 (E.D.Pa.2002) (citing Playboy Enter., Inc. v. Universal Tel–A–
Talk, Inc., No. 96-6961, 1998 WL 767440, *7 (E.D. Pa. Nov.3, 1998)). The only material
difference between the standard for federal trademark infringement and trademark
counterfeiting is the requirement of proving defendant intentionally used the plaintiff's
trademark, knowing it was a counterfeit, which, if proven, entitles the plaintiff to an award of
33
treble and/or statutory damages. Pennzoil-Quaker State Co., 2008 WL 4107159, at *20 (citing
15 U.S.C. § 1117(b) & (c)).
In support of its motion on the federal trademark counterfeiting claim, Penn State
argues that it is entitled to summary judgment as to its trademark infringement claims for
Parshall’s “use of a nearly identical, spurious mark with just the addition of the generic mark
of the goods being sold.” (Doc. 106, at 38). Further, Penn State asserts that there is no dispute
of material fact “regarding Parshall’s willful and intentional use of the [Penn State] Marks
knowing that his Infringing Marks were counterfeit.” (Doc. 106, at 38). Penn State submits
that Parshall admitted that he knew the Penn State Marks were famous when he registered
the Infringing Marks and that Parshall intended to convince consumers that he was affiliated
with or sponsored by Penn State and its athletic teams so that they would purchase his goods
and services or license the Penn State Marks from him instead of from Penn State. (Doc. 106,
at 38-39; Doc. 107, ¶ 13-14, 20-21, 53-55, 58-63).
As discussed supra, Penn State established that Parshall infringed its federally protected
registered trademarks in violation of the Lanham Act, 15 U.S.C. § 1114(1)(a). Second, the
undersigned finds that Parshall did so willfully. Willful conduct can be established through
“deliberate and unnecessary duplicating of a plaintiff's mark ... in a way that was calculated
to appropriate or otherwise benefit from the good will the plaintiff had nurtured.” Securacomm
Consulting, Inc. v. Securacom Inc., 166 F.3d 182, 187 (3d Cir. 1999), superseded by statute on
other grounds as recognized in Banjo Buddies, Inc. v. Renosky, 399 F.3d 168, 175 (3d Cir. 1999)
(citations omitted); accord Coach, Inc. v. Fashion Paradise, LLC, No. 10-4888, 2012 WL 194092,
*3 (D.N.J. Jan. 20, 2012). The sale of “goods using such strong and established marks
conclusively demonstrates [a defendant's] desire and purpose to trade on” the good will of the
34
owner the mark. Chanel v. Gordashevsky, 558 F.Supp.2d 532, 538 (D.N.J. 2008) (citing Microsoft
Corp. v. CMOS Tech., Inc., 872 F. Supp. 1329, 1335 (D.N.J. 1994). Here, the fact that the
Infringing Marks contain multiple Penn State Marks demonstrates that such was calculated
to appropriate the good will nurtured by Penn State. See Coach, Inc. v. Bag Place, Co., No. 10-
6226, 2012 WL 13028160, *5 (D.N.J. May 7, 2012) (granting summary judgment where
plaintiff proved defendant infringed plaintiff’s trademark and did so willfully). Therefore, the
Court grants summary judgment in favor of Penn State as to Counts VII and VIII.
C. TRADEMARK DILUTION (COUNTS V & VI, IX & X)
Penn State submits that summary judgment should be granted as to its trademark
dilution claims because Penn State’s marks were famous prior to Parshall’s first use of the
Infringing Marks, Parshall uses the Infringing Marks in interstate commerce, and Parshall’s
use of the Infringing Marks dilutes Penn State’s marks. (Doc. 106, at 40-43). Counts V and
VI of the second amended complaint include two federal trademark dilution claims under
Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), regarding the PENN STATE Family
of Marks and the NITTANY LIONS Marks. (Doc. 101, at ¶ 124-141). Counts IX and X of
the second amended complaint alleged trademark dilution under Pennsylvania common law,
54 Pa. C.S.A. § 1124, regarding the PENN STATE Family of Marks and the NITTANY
LIONS Marks. (Doc. 101, at ¶ 162-173).
Federal Trademark Dilution Revision Act (“FTDA”) claims and Pennsylvania state
law trade dilution claims are established similarly. See Just Enterprises, Inc. v. O'Malley &
Langan, P.C., 560 F.Supp.2d 345 (M.D. Pa. 2008) (quoting Scott Fetzer Co. v. Gehring, 288
F.Supp.2d 696, 701 n.7 (E.D. Pa. 2003)) (“Courts have noted that in terms of federal law and
Pennsylvania law on trademark dilution and infringement, ‘the federal statute and the state
35
laws are identical except that the Pennsylvania law narrows the focus to acts within the
Commonwealth.’”). A prima facie federal trademark dilution claim thus requires proof that:
(1) that the plaintiff is the owner of a mark that qualifies as a “famous” mark in light of the
totality of the four factors listed in 15 U.S.C. § 1125(c)(2); (2) the defendant is making
commercial use in interstate commerce of a mark or trade name; (3) the defendant's use began
after the plaintiff's mark became famous; and (4) the defendant's use is likely to cause dilution
by lessening the capacity of the plaintiff's mark to identify and distinguish goods or services.
See 15 U.S.C. § 1125(c)(2); Times Mirror Magazines, Inc. v. Las Vegas Sports News, LLC, 212 F.3d
157, 163 (3d Cir. 2000). Section 43(c) of the Lanham Act provides that “the owner of a famous
mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an
injunction against another person who, at any time after the owner's mark has become
famous, commences use of a mark ... in commerce that is likely to cause dilution by
blurring....” 15 U.S.C. § 1125(c).
A mark may be considered “famous,” for purposes of the federal dilution statute,
where “[the mark] is widely recognized by the general consuming public of the United States
as a designation of the source of the goods or services of the mark's owner.” Xtreme Caged
Combat v. ECC Fitness, No. 12-CV-3855, 2012 WL 5893970, *6 (E.D. Pa., Nov. 21, 2012)
(citing 15 U.S.C. § 1125(c)(2)(A)). Notably, federal courts have interpreted the inclusion of
this language in the revised form of the federal dilution statute to indicate “a rejection of
dilution claims based on niche fame, i.e. fame limited to a particular channel of trade, segment
of industry or service, or geographic region.” Harp, 984 F.Supp.2d at 421 (citations omitted).
The TDRA points to four nonexclusive factors for a court to consider in determining
whether a mark may be deemed famous. See 15 U.S.C. § 1125(c)(2)(A). These factors include:
36
(i) The duration, extent, and geographic reach of advertising and publicity of
the mark, whether advertised or publicized by the owner or third parties;
(ii) The amount, volume, and geographic extent of sales of goods or services
offered under the mark;
(iii) The extent of actual recognition of the mark; [and]
(iv) Whether the mark is registered under the Act of March 3, 1881, or the Act
of February 20, 1905, or on the principal register.
15 U.S.C. § 1125(c)(2)(A).
As discussed above, elements one and three are satisfied because Penn State Marks are
indisputably famous and incontestable. See New Balance Athletics, 424 F.Supp.3d at 350-51
(finding New Balance’s “N” marks famous where New Balance showed extensive marketing
expenditures and sales figures). Penn State also establishes that Parshall is making
commercial use of the marks in interstate, international, and intrastate commerce. (Doc. 107,
¶ 69; Doc. 108-12, at 3); see supra 2. Penn State owns several incontestable federal registrations
for the PENN STATE Family of Marks and NITTANY LIONS Marks. (Doc. 107, ¶ 11-12,
18-19). Penn State distributes its goods and services through many channels, including at
sporting events, at the campus bookstore, through stores of licensing partners, and online
sales, and engages with thousands of individuals through its social media accounts, which
prominently display its trademarks. (Doc. 107, ¶ 44-49; Doc. 109, ¶ 49-54). For many years,
Penn State has used and promoted the PENN STATE Family of Marks, NITTANY LIONS
Mark, and various design marks incorporating images of the Nittany Lion mascot
continuously throughout Pennsylvania, the United States, and internationally. (Doc. 107, ¶
9, 16-17; Doc. 108-2, at 2-19; Doc. 109, ¶ 16, 18-21).
Penn State also established that Parshall admitted to these facts. (Doc. 107, ¶ 13-14,
20-21; Doc. 108-4, ¶ 1, 2 7). By Parshall’s own admission, he knew the Penn State Marks
were famous when he first used and applied to register the Infringing Marks. (Doc. 108-4, ¶
37
1, 2, 7). Parshall admitted that he selected the Infringing Marks with the intention of making
consumers believe he and his business were affiliated with Penn State. (Doc. 108-4, ¶ 10, 23).
This is a use of Penn State Marks many years after the PENN STATE Family of Marks
became famous and some 50 years after the NITTANY LIONS Mark became famous. As a
result, the undersigned concludes that Parshall’s use began after the Penn State Marks became
famous. Thus, the first three factors are established.
To satisfy the fourth element plaintiff must establish actual dilution. 4 “The term
‘dilution’ means the lessening of the capacity of a famous mark to identify and distinguish
goods or services, regardless of the presence or absence of: (1) competition between the owner
of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.”
15 U.S.C. § 1127. “[T]hat does not mean that the consequences of dilution, such as an actual
loss of sales or profits, must also be proved.” Moseley v. v. Secret Catalogue, Inc., 537 U.S. 418,
432 (2003) (quoting). In fact, where the competing entities are using marks that are identical,
dilution may be reliably found using the circumstantial evidence of the identical marks.
Moseley, 537 U.S. at 434.
In this case, Parshall is selling products with Penn State Marks without authorization.
Parshall admitted that he has never obtained a license or authorization from Penn State to
use the Infringing Marks. (Doc. 107, ¶ 81; Doc. 108, ¶ 31-33; Doc. 108-4, at 11; Doc. 108-5,
at 6; Doc. 108-10, at 86:12-17, 88:10-21). Moreover, Parshall admitted that he is using the
4
While the Pennsylvania Supreme Court has not ruled whether actual dilution must
occur, we note that the definitions of dilution in 54 Pa. C.S.A. § 1102 and 15 U.S.C. § 1127
are identical. As a result, we interpret the requirements for establishing a dilution claim under
Pennsylvania and federal law to be identical.
38
marks to sell, market, and offer goods and services that are the same and/or highly similar to
the goods and services sold and marketed by Penn State. (Doc. 107, ¶ 67; Doc. 108, ¶ 31-33;
Doc. 108-4, at 6; Doc. 109, ¶ 28-33). Under these circumstances, the parties are in direct
competition, the likelihood for confusion by the general consuming public is great, and Penn
State has established actual harm and dilution. As such, it is respectfully recommended that
the Court grant summary judgment as to Counts V, VI, IX, and X of Penn State’s second
amended complaint. 5
D. CANCELLATION OF STATE REGISTRATIONS (COUNTS XIII-XV)
Penn State asserts that it is entitled to summary judgment as to Counts XIII, XIV, and
XV under 54 Pa. C.S. § 1116, 765 Ill. Comp. Stat. 1036/45, and the Lanham Act because
Parshall’s state trademark registrations were obtained through false declaration. (Doc. 106, at
49-50).
The Lanham Act permits a federal court to cancel a federal trademark: “In any action
involving a registered mark the court may determine the right to registration, order the
cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise
rectify the register with respect to the registrations of any party to the action.” 15 U.S.C. §
1119; Blanchard Imp. & Distrib. Co. v. Charles Gilman & Son, Inc., 353 F.2d 400, 402 (1st Cir.
On February 10, 2022, Penn State filed timely objections to the undersigned’s initial
5
report and recommendation, requesting that the Court “correct the sentence on page 38 to
state ‘As such, it is respectfully recommended that the Court grant summary judgment as to
Counts V, VI, IX, and X of Penn State’s second amended complaint.” (Doc. 130, ¶ 2; Doc.
131, at 2-3). On February 14, 2022, the District Judge declined to adopt the undersigned’s
recommendation and remanded the case back to the undersigned to address the concerns
raised in Penn State’s objections. (Doc. 132, at 2). Upon review of the text in question, the
relevant language has been changed to reflect that undersigned’s recommendation is that
summary judgment be granted to Penn State on these claims.
39
1965). Courts have held that a federal court may order the cancellation of a state trademark
registration when it infringes upon a registered federal trademark.
Under Pennsylvania law, the Department of State of the Commonwealth of
Pennsylvania “shall” cancel a registration where “a court of competent jurisdiction” 6 finds:
(iii) That the registration was granted improperly.

(iv) That the registration was obtained fraudulently.
(v) That the registered mark is so similar, as to be likely to cause confusion or
mistake or to deceive, to a mark registered by another person in the [USPTO],
prior to the date of the filing of the application for registration by the registrant
under this chapter or former provisions of law and not abandoned, except that
if the registrant proves that the registrant is the owner of a concurrent
registration of the mark in the [USPTO], covering an area including this
Commonwealth, the registration under this chapter shall not be cancelled.
54 Pa. C.S. § 1116(a)(3)(iii), (iv), (v).
Similarly, under Illinois law, the Secretary of State “shall” cancel “any registration concerning
which the circuit court” found “that the registration was granted improperly[, ] that the
registration was obtained fraudulently[, or] that the registered mark is so similar, as to be
likely to cause confusion or mistake or to deceive, to a mark registered by another person in
the [USPTO] . . . .” 765 Ill. Comp. Stat. 1036/45.
On August 23, 2016, Parshall filed Pennsylvania registrations for PENN STATE
NITTANY BEER and PENN STATE NITTANY BREWING CO, each in connection with
“beer.” (Doc. 107, ¶ 86; Doc. 108-6, at 3-5; Doc. 108-7, at 2-4; Doc. 108-10, at 31:18-21). In
6
Although “court of competent jurisdiction” is not defined under the Pennsylvania
Trademark Act, federal courts fit comfortably into the statutory phrase “court of competent
jurisdiction” and are “courts of the state.” Meth v. Commonwealth State Real Estate Com., 321
A.2d 221 (Pa. Cmwlth. 1974) (concluding that the United States District Court for the Eastern
District of Pennsylvania is a court of competent jurisdiction for the purposes of the Real Estate
Brokers License Act of 1929).
40
the Pennsylvania state trademark applications, Parshall claimed to have been using each mark
since January 20, 2016, and to have used them within the Commonwealth of Pennsylvania
since January 27, 2016. (Doc. 107, ¶ 87; Doc. 108-5, at 4; Doc. 108-6, at 3). Parshall attested:
Applicant is the owner of the mark, the mark is in use and, to the applicant’s
knowledge, no other person has registered, either federally or in this
Commonwealth or has the right to use such mark, either in the identical form
thereof or in such near resemblance thereto as to likely, when applied to the
goods or services of such other person, to cause confusion or to cause mistake,
or to deceive.
(Doc. 107, ¶ 89; Doc. 108-5, at 4; Doc. 108-6, at 3).
On May 20, 2019, Parshall failed an Illinois registration for PENN STATE NITTANY LION
CIGARS in connection with “smoking products.” (Doc. 107, ¶ 90; Doc. 108-7, at 2-3). In the
Illinois state trademark application, Parshall stated he has been using the mark in Illinois since
January 2, 2019, and attested:
[T]he applicant is the owner of the mark, that the mark is in use, and that to the
knowledge of the person verifying the application, no other person has
registered the mark, either federally or in this State, or has the right to use the
mark either in the identical form thereof or in such near resemblance thereto as
to be likely, when applied to the goods or services of such other person, to cause
confusion, or to cause mistake, or to deceive.
(Doc. 107, ¶ 91; Doc. 108-7, at 2; Doc. 108-29).
In Parshall’s deposition and by his own admission, Parshall admitted that the Penn
State Marks were famous before he first used the Infringing Marks and filed his state
trademark applications. (Doc. 107, ¶ 13-14, 20-21; Doc. 108-4). Further, Parshall admitted
that he selected the Infringing Marks to target consumers associated with Penn State and to
make a profit. (Doc. 107, ¶ 78-79; Doc. 108, ¶ 31-33; Doc. 108-5, at 6; Doc. 108-10, at 27:13-
20, 36:17-37:2, 49:7-13, 51:2-20). Thus, it clear that when Parshall registered the state
trademark applications, he knew that the Penn State Marks were in use prior to his
41
registration, and that his registration would likely cause confusion. Thus, Parshall’s state
registrations of the Infringing Marks were obtained fraudulently and registered improperly
through false declaration. 54 Pa. C.S. § 1116(a)(3)(iii) & (iv); 765 Ill. Comp. Stat. 1036/45.
Further, as discussed supra, the Infringing Marks are likely to cause confusion with the Penn
State Marks that were registered with the USPTO prior to Parshall filing his state trademark
registrations.
Accordingly, under Pennsylvania law, as a “court of competent jurisdiction,” the
undersigned finds that the Department of State of the Commonwealth of Pennsylvania shall
cancel Parshall’s Pennsylvania state trademark registrations for PENN STATE NITTANY
BEER and PENN STATE NITTANY BREWING CO, each in connection with “beer.” 54
Pa. C.S. § 1116(a)(3)(iii) & (iv). Additionally, under Illinois law, the Secretary of State shall
cancel Parshall’s state trademark registration for PENN STATE NITTANY LION CIGARS.
765 Ill. Comp. Stat. 1036/45; see Aegis Food Testing Lab., Inc. v. Aegis Sci. Corp., 913 F. Supp.
2d 742, 747 (D.S.D. 2012) (district court had power to declare that trademarks registered in
other states, including Illinois, shall be canceled because infringing marks were confusingly
similar or improperly registered); Santana-Cuesta v. Maldonado-Vargas, No. 14-1456, 2016 WL
9459759, *6-7 (D.P.R. Jan. 29, 2016) (district court canceled Florida state trademark).
In sum, it is respectfully recommended that the motion for summary judgment be
granted as to Counts XIII, XIV, and XV of the second amended complaint. 7 (Doc. 105).
7
Additionally, Penn State argues that Parshall should be precluded from raising the
argument that state trademark registrations are a defense to Penn State’s trademark
infringement claims. (Doc. 106, at 55). Because the undersigned finds that Parshall’s state
trademark registrations shall be canceled as they were obtained fraudulently and through
42
E. CYBERSQUATTING (COUNT XVII)
Penn State argues that summary judgment should be granted because even after this
action was filed and Parshall was made aware of Penn State’s claims, he registered the
Infringing Domains, including pennstatehappyvalleybeer.com, pennstatenittany.beer, and
pennstatenittanycigars.com, which incorporate the Penn State Marks (Doc. 106, at 46).
Claims for cybersquatting are anchored in the Anti-Cybersquatting Consumer Protection Act
(“ACPA”), 15 U.S.C. § 1125(d). The ACPA makes it “illegal for a person to register or use
with the bad faith intent to profit from an internet domain that is identical to or confusingly
similar to the distinctive or famous trademark or Internet domain name of another person or
company.” Shields v. Zuccarini, 254 F.3d 476, 482 (3d Cir. 2001). The ACPA provides in
pertinent part that:
(1) (A) A person shall be liable in a civil action by the owner of a mark ... if,
without regard to the goods or services of the parties, that person
(I) has a bad faith intent to profit from that mark ...; and
(ii) registers, traffics in, or uses a domain name that—
(I) in the case of a mark that is distinctive at the time of registration of
the domain name, is identical or confusingly similar to that mark; [or]
(II) in the case of a famous mark that is famous at the time of registration
of the domain name, is identical or confusingly similar to or dilutive of
that mark . . .
15 U.S.C. § 1125(d) (emphasis added).
To successfully assert a cybersquatting claim, Penn State must prove: (1) that the PENN
STATE Family of Marks and NITTANY LIONS Marks are “distinctive or famous mark[s]
entitled to protection,” (2) the Infringing Domains are “identical or confusingly similar to”
improper registration, the undersigned will not address Penn State’s argument for issue
preclusion. (Doc. 106, at 54).
43
Penn State Marks, and (3) Parshall “registered the domain name with the bad faith intent to
profit from [it].” Shields, 254 F.3d at 482 (citing § 1125(d)(1)(A)).
1. Penn State Marks are distinctive marks entitled to protection.
The following factors under Section 1125(d)(1)(A)(ii)(I) may be considered in
determining whether a mark is distinctive: (A) the degree of inherent or acquired
distinctiveness of the mark; (B) the duration and extent of use of the mark in connection with
the goods or services with which the mark is used; (C) the duration and extent of advertising
and publicity of the mark; (D) the geographical extent of the trading area in which the mark
is used; (E) the channels of trade for the goods and services with which the mark is used; (F)
the degree of recognition of the mark in the trading areas and channels of trade used by the
marks' owner and the person against whom the injunction is sought; and (G) the nature and
extent of use of the same or similar mark by third parties. Shields, 254 F.3d at 482.
It is undisputed that Penn State is a Pennsylvania state-related institution of higher
education that educates nearly 100,000 students each year and is known throughout
Pennsylvania, the United States, and the world for its educational and athletic programs.
(Doc. 107, ¶ 1, 5). The duration of Penn State’s use of the PENN STATE Family of Marks
and design continuously since 1908 and use of the NITTANY LIONS Mark and design since
1984, suggests the acquired distinctiveness of the Penn State Marks in the service of higher
education and athletic programs. (Doc. 107, ¶ 8, 16). The degree of recognition of the Penn
State Marks also suggests the inherent and acquired distinctiveness of its mark. Penn State
has submitted an affidavit from Tracy Powell, Associate Vice President for Strategic
Communications for Penn State, and the deposition of Parshall, which state that the Penn
44
State Marks are famous and were famous before Parshall registered the Infringing Domains.
(Doc. 108-4, ¶ 1, 2, 7; Doc. 109, ¶ 26).
In light of the above, the undersigned finds that the Penn State Marks are distinctive
marks entitled to protection.
2. Registration of Parshall’s domains is confusingly similar to Penn State Marks.
Penn State has the burden to demonstrate that its “mark and defendant[’s] domain are
so similar in sight, sound or meaning that they could be confused.” 2 McCarthy on
Trademarks and Unfair Competition, § 25:78. In Shields, the Third Circuit found the domain
names joescartoon.com, joecarton.com, joescartons.com, joescartoons.com, and
cartoonjoe.com confusingly similar to the plaintiff's mark JOE CARTOON. 254 F.3d at 483.
Penn State's burden is not to produce evidence of actual confusion, but rather that there is the
potential for confusion. The Infringing Domains are similar in sight and meaning to the Penn
State Marks, and could be confused by potential customers attempting to access Penn State’s
official website, psu.edu. Further, under the ACPA, the analysis is made “without regard to
the goods or services of the parties,” it legally irrelevant whether Penn State sells the goods
and services that Parshall offers, including beer. 15 U.S.C. § 1125(d). The undersigned finds
no colorable argument that the Infringing Domains are not identical or confusingly similar to
the Penn State Marks. A reasonable fact finder is compelled to find for Penn State on this
element.
3. Parshall’s registered the domains with bad faith intent to profit.
The final element plaintiff must prove is that defendants acted with a bad faith intent
to profit from plaintiff's mark. 15 U.S.C. § 1125(d)(1). Section 43(d)(1)(B)(i) of the Lanham
45
Act, 15 U.S.C. § 1125(d)(1)(B)(I), provides a non-exhaustive list of nine factors for
determining if a plaintiff has shown the requisite bad faith. The factors are:
(I) the trademark or other intellectual property rights of the person, if any, in
the domain name;
(II) the extent to which the domain name consists of the legal name of the
person or a name that is otherwise commonly used to identify that person;
(III) the person's prior use, if any, of the domain name in connection with the
bona fide offering of any goods or services;
(IV) the person's bona fide noncommercial or fair use of the mark in a site
accessible under the domain name;
(V) the person's intent to divert consumers from the mark owner's online
location to a site accessible under the domain name that could harm the
goodwill represented by the mark, either for commercial gain or with the intent
to tarnish or disparage the mark, by creating a likelihood of confusion as to the
source, sponsorship, affiliation, or endorsement of the site;
(VI) the person's offer to transfer, sell, or otherwise assign the domain name to
the mark owner or any third party for financial gain without having used, or
having an intent to use, the domain name in the bona fide offering of any goods
or services, or the person's prior conduct indicating a pattern of such conduct;
(VII) the person's provision of material and misleading false contact
information when applying for the registration of the domain name, the
person's intentional failure to maintain accurate contact information, or the
person's prior conduct indicating a pattern of such conduct;
(VIII) the person's registration or acquisition of multiple domain names which

the person knows are identical or confusingly similar to marks of others that
are distinctive at the time of registration of such domain names, or dilutive of
famous marks of others that are famous at the time of registration of such
domain names, without regard to the goods or services of the parties; and
(IX) the extent to which the mark incorporated in the person's domain name
registration is or is not distinctive and famous within the meaning of subsection
(c) of this section.
15 U.S.C.A. § 1125(d)(1)(B)(I).
46
The Third Circuit has stated that applying these factors “is a holistic, not mechanical,
exercise.” Green v. Fornario, 486 F.3d 100, 106 (3d Cir.2007) (upholding a denial of attorney
fees for the plaintiff because, among other things, defendant had a colorable defense of no bad
faith against the plaintiff's ACPA claim). This directive indicates that summary judgment is
inappropriate on this issue, since the statutory factors must be weighed as a whole and a
factual determination of bad faith must be made. See Shields, 254 F.3d at 486 (upholding a
district court finding of bad faith because of “sufficient evidence”).
First, as discussed supra, the federally-registered Penn State Marks are incontestable
and distinctive, commercially strong, and famous. (Doc. 107, ¶ 12, 19; Doc. 108-3, at 2, 7,
12, 15, 18; Doc. 108-9, at 2, 5, 9, 12; Doc. 109; ¶ 22). Further, Parshall has no right to use the
Penn State Marks and has never been authorized by Penn State to use the Marks. (Doc. 108-
4, ¶ 11). Next, the Infringing Domains use derivatives that are identical to the Penn State
Marks and do not consist of Parshall’s name or the name of his business, Sports Beer Brewing
Company. See Dluhos, 2005 WL 1683696, at *9 (finding that first two elements of
cybersquatting are met where court previously determined plaintiff should be granted
summary judgment on trademark infringement and dilution claims). Notably, Parshall stated
in his deposition that he does not use his own name for the association with athletic teams
because goods with those names will sell better. (Doc. 108-10, at 51:14-53:19). In addition, to
date, there is no evidence to suggest that Parshall has used the Infringing Domains in
connection with a bona fide offer of goods or services. Lastly, on September 9 and December
24, 2020, two UDRP Panels found that Parshall registered the Infringing Domains in bad
faith for the purpose of confusing Internet users into thinking that Parshall was connected to
Penn State, and for the purpose of diverting Internet users to websites for Parshall’s financial
47
gain. (Doc. 107, ¶ 118, 120; Doc. 108-20, at 7; Doc. 108-22, at 5). The two UDRP Panels
ordered Parshall to transfer the Infringing Domains to Penn State. (Doc. 107, ¶ 118, 120; Doc.
108-22, at 10; Doc. 108-23, at 7-8). Parshall’s registration of the Infringing Domains
establishes a pattern of behavior that may have kept potential customers from accessing the
legitimate Penn State website or website of licensors of the Penn State Marks.
As such, the undisputed material facts demonstrate Parshall’s bad faith intent to profit
from Penn State’s goodwill, wither for his own commercial gain or to deprive Penn State of
potential customers. The record establishes that the Penn State Marks are distinctive marks
entitled to protection, Parshall’s registration of the Infringing Domains is confusingly similar
to the Penn State Marks, and Parshall's bad faith intent in registering the domain name.
Accordingly, it is respectfully recommended that Penn State’s motion for summary judgment
be granted as to Count XVII.
F. REMEDIES
Penn State seeks summary judgment on its request for injunctive relief, statutory
damages, recovery of attorneys’ fees, an order canceling Parshall’s infringing state trademark
registrations, and an order for seizure of all and any counterfeit goods. (Doc. 106, at 56).
1. Injunctive Relief
Penn State seeks entry of a permanent injunction, pursuant to 15 U.S.C. § 1116(a), to
enjoin Parshall “from any use of or trademark application or registration of any portion, form,
or derivative of any of Penn State’s marks, including but not limited to PENN STATE,
NITTANY LIONS, and HAPPY VALLEY, in any business or trademark manner
whatsoever as well as within any domain name.” (Doc. 106, at 58). “When deciding whether
to grant a permanent injunction, the district court must consider whether; (1) the moving
48
party has shown actual success on the merits; (2) the moving party will be irreparably harmed
by the denial of injunctive relief; (3) the granting of the permanent injunction will result in
even greater harm to the non-moving party; and (4) the injunction would be in the public
interest.” SMJ & J, Inc. v. NRG Heat & Power, LLC, 912 F.Supp.2d 189, 200 (M.D. Pa. 2012)
(citing Shields, 254 F.3d at 482). Accordingly, in deciding whether a permanent injunction
should be issued, the undersigned must first determine if Penn State has actually succeeded
on the merits and, if so, it must then consider the appropriate remedy. ACLU of New Jersey v.
Black Horse Pike Regional Bd. of Educ., 84 F.3d 1471, 1477 n.3 (3d Cir.1996) (en banc) (internal
quotation marks and citation omitted). The decision to grant or deny permanent injunctive
relief is an act of equitable discretion by the district court, reviewable on appeal for abuse of
discretion. Ebay, Inc. v. MercExchange, LLC, 547 U.S. 388, 391 (2006).
An analysis of the aforementioned factors clearly demonstrates that Penn State is
entitled to a permanent injunction enjoining Parshall from using, applying for, or registering
of any portion, form, or derivative of any of Penn State’s marks in any business, trademark,
or domain name whatsoever. By virtue of the undersigned’s recommendation that Penn
State’s motion for summary judgment be granted, it is indeed clear that Penn State has
succeeded on the merits of its case. That is, the undersigned has already found that Parshall
violated federal and state trademark laws against trademark infringement, unfair competition,
false designation of origin, trademark dilution, trademark counterfeiting, and cybersquatting
under the Lanham Act and the state laws of Pennsylvania and Illinois. (Doc. 101). Penn State
has suffered irreparable injury based in part on Parshall’s active participation in the
advertisement and marketing of counterfeit goods and services. (Doc. 108-4, ¶ 1-14).
Furthermore, damages are likely to prevent or impede future trademark infringement. The
49
balance of the hardships between the parties weighs in favor of Penn State, as such relief only
requires that Parshall abide by the law and cease from actively participating in the
infringement, dilution, and counterfeiting of goods and services that bear the Penn State
Marks. Finally, the public interest will be served as the injunctive relief requested will reduce
or eliminate the likelihood of confusion as it pertains to Penn State’s marks. Accordingly, the
undersigned finds that Penn State’s request for a permanent injunction is reasonable and
necessary to prevent further violations of Penn State’s trademark rights. Thus, the
undersigned recommends that Penn State’s request for injunctive relief be granted.
The Court's broad equity powers allow the Court to fashion injunctive relief necessary
to stop Parshall's infringing activities. See, e.g., Swann v. Charlotte–Mecklenburg Bd. of Educ., 402
U.S. 1, 15 (1971) (“Once a right and a violation have been shown, the scope of a district
court's equitable powers to remedy past wrongs is broad, for ... [t]he essence of equity
jurisdiction has been the power of the Chancellor to do equity and to mould each decree to
the necessities of the particular case.” (citation and internal quotation marks omitted)); United
States v. Bausch & Lomb Optical Co., 321 U.S. 707, 724 (1944) (“Equity has power to eradicate
the evils of a condemned scheme by prohibition of the use of admittedly valid parts of an
invalid whole.” (citations omitted)). District courts are expressly authorized to order the
transfer or surrender of domain names in an in rem action against a domain name. See 15
U.S.C. §§ 1125(d)(1)(C), (d)(2). However, courts have not limited the remedy to that context.
See, e.g., Philip Morris USA, Inc. v. Otamedia Ltd., 331 F.Supp.2d 228, 230 n.2 (S.D.N.Y. 2004)
(transferring Yesmoke.com domain name to plaintiff despite the fact that plaintiff did not own
a trademark in the term “Yesmoke” and noting that 15 U.S.C. section 1125 “neither states
nor implies that an in rem action against the domain name constitutes the exclusive remedy
50
for a plaintiff aggrieved by trademark violations in cyberspace”); Ford Motor Co. v. Cross, 441
F.Supp.2d 837, 853 (E.D. Mich. 2006) (ordering the defendants to disclose all other domain
registrations held by them and to transfer registration of a particular domain name to plaintiff
in part under authority of 15 U.S.C. § 1116(a)).
Parshall has created an Internet-based counterfeiting scheme in which he is profiting
from the deliberate misappropriation of Penn State’s trademark rights. Accordingly, the Court
may fashion injunctive relief to eliminate the means by which Parshall is conducting his
unlawful activities. Regarding Parshall’s state trademark registrations in Pennsylvania and
Illinois, the undersigned further recommends that such registrations be canceled. The
Pennsylvania Department of State is ordered to cancel Parshall’s trademark registrations for
PENN STATE NITTANY BEER and PENN STATE NITTANY BREWIN CO. (Nos.
6450052 and 6445173), as well as any other trademarks that Parshall registered that include
any portion, form, or derivate of Penn State’s marks, including, but not limited to, PENN
STATE, NITTANY LIONS, and HAPPY VALLEY. Additionally, the Illinois Secretary of
State is ordered to cancel Parshall’s trademark registration for PENN STATE NITTANY
LION CIGARS (No. 113080), as well as any other trademarks that Parshall registered that
include any portion, form, or derivate of Penn State’s marks, including, but not limited to,
PENN STATE, NITTANY LIONS, and HAPPY VALLEY.
Lastly, ordering cancelation or transfer of the Infringing Domains, which include any
portion, form, or derivate of Penn State’s marks, including, but not limited to, PENN STATE,
NITTANY LIONS, and HAPPY VALLEY, to Penn State, where it may be disabled from
further use as platforms for the sale of counterfeit goods and services, is appropriate to
eliminate Parshall’s harmful activities. Chanel, Inc. v. besumart.com, 240 F.Supp.3d 1283, 1291
51
(S.D. Fla. 2016) (district court ordered transfer or cancellation of infringing domain names to
plaintiff). Furthermore, in light of Parshall’s refusal to comply with previous court-ordered
injunctions related to his business, Sports Beer Brewing Company, the undersigned
recommends that the domain, sportsbeerbrewing.com, be transferred to Penn State to cease
operation. (Doc. 108-24, at 2-15); see The Tr. of Purdue Univ. v. Parshall, No. 79D01-1702-PL-
000011, at *13 (Ind. Jan. 30, 2020). Finally, any and all counterfeiting goods shall be seized
that bear the Infringing Marks or other marks that are identical or in such near resemblance
to the Penn State Marks that they are likely to cause confusion.
2. Statutory Damages
Under 15 U.S.C. § 1117(c), Penn State seeks statutory damages of up to $200,000 for
each of the two infringed marks (i.e., the PENN STATE Family of Marks and the NITTANY
LIONS Marks), or $2,000,000 per infringed mark if the Court determines Parshall’s
infringement was willful. (Doc. 106, at 57). Additionally, under 15 U.S.C. § 1117(d), Penn
State seeks additional statutory damages of up to $100,000 for each of Parshall’s three
Infringing Domains. (Doc. 106, at 57).
As a threshold matter, a plaintiff cannot recover statutory damages under 15 U.S.C. §
1117(c) unless the marks qualify as “counterfeits.” 15 U.S.C. § 1117(c). The amount of
statutory damages available depends on whether the plaintiff also shows that “use of the
counterfeit mark was willful.” 15 U.S.C. § 1117(c). Without a showing of willfulness,
subsection (c)(1) provides statutory damages of “not less than $1,000 or more than $200,000
per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the
court considers just.” 15 U.S.C. § 1117(c)(1). With a showing a willfulness, the amount of
statutory damages may be higher. Specifically, subsection (c)(2) grants statutory damages of
52
“not more than $2,000,000 per counterfeit mark per type of goods or services sold, offered for
sale, or distributed, as the court considers just.” 15 U.S.C. § 1117(c)(2).
The term “counterfeit” is defined as “a spurious mark which is identical with, or
substantially indistinguishable from, a registered mark.” 15 U.S.C. § 1127. Counterfeit marks
“do not need to be identical and may have minor differences that would not be apparent to
the *354 typical consumer and, thus, legally insignificant.” Astrazeneca AB v. Dr. Reddy's
Laboratories, Inc., 209 F.Supp.3d 744, 755 (D. Del. 2016) (finding that a mark covering the
color purple includes a counterfeit with two shades of purple); Coach, Inc. v. Horizon Trading
USA Inc., 908 F.Supp.2d 426, 434 (S.D.N.Y. 2012) (holding that a GC mark on sunglasses
was a counterfeit of plaintiff's CC mark). For the reasons stated above, the undersigned has
already concluded that Parshall’s Infringing Marks are identical or in such near resemblance
to the Penn State Marks that they are likely to cause confusion. Therefore, Parshall’s
Infringing Marks qualify as counterfeits.
Willful trademark infringement requires “an intent to infringe or a deliberate disregard
of a mark holder's rights.” SecuraComm Consulting Inc. v. Securacom Inc., 166 F.3d 182, 187 (3d
Cir.1999), superseded by statute on other grounds as stated in Banjo Buddies, Inc. v. Renosky, 399
F.3d 168, 173-76 (3d Cir.2005). “Willfulness can be inferred by the fact that defendant
continued infringing behavior after being given notice.” Louis Vuitton, 211 F. Supp. 2d at 583.
Here, Penn State contends that Parshall’s infringement was willful, because Parshall was
given notice of its infringing behavior in June 2019 when Penn State issued a cease and desist
letter, demanding that Parshall immediately “cease all use of and abandon any registrations
of PENN STATE, NITTANY LIONS, and any phrase(s) or word(s) similar to PENN
STATE or NITTANY LIONS, either alone or with other elements, in any manner, including
53
but not limited to as a mark, tagline, trade name, hashtag, domain name, and/or social media
account.” (Doc. 107, ¶ 96-97; Doc. 108, ¶ 15, 34; Doc. 108-14, at 3). After receiving this letter,
Parshall refused to stop infringing and instead asked that Penn State pay Parshall to sell his
state registrations to Penn State. (Doc. 107, ¶ 98; Doc. 108, ¶34). To date, Parshall continues
to use the Infringing Marks on the Sports Beer Brewing Company website. (Doc. 107, ¶ 99;
Doc. 108-15, at 2). Given the foregoing facts or lack thereof, the undersigned finds that
Parshall willfully continued its infringing behavior after being given notice.
“Courts have substantial discretion in awarding statutory damages.” Lifted Research
Grp, Inc. v. Behdad, Inc., No. 08-90, 2010 WL 2662277, *4 (D.D.C. June 30, 2010) (citing
Microsoft Corp v. Compusource Distribs, Inc., 115 F.Supp.2d 800, 811 (E.D. Mich. 2000)). The
Lanham Act “does not provide guidelines for courts to use in determining an appropriate
award,” but instead leaves it to each court's discretion to award an amount it “considers just.”
Louis Vuitton, 211 F.Supp.2d at 583; 15 U.S.C. § 1117(c)(2). But “[b]ecause statutory damages
are meant to serve as a substitute for actual damages the Court should discern whether the
requested damages ‘bear some relation to the actual damages suffered.’” Coach, Inc. v. Bags &
Accessories, No. 10-2555, 2011 WL 1882403, *6 (D.N.J. May 17, 2011) (quoting Bly v. Banbury
Books, Inc., 638 F. Supp. 983, 987 (E.D. Pa. 1986)). In the absence of clear guidelines, the
Court has often mirrored the approach used in the copyright context, considering the
following factors:
(1) the expenses saved and the profits reaped; (2) the revenues lost by the
plaintiff; (3) the value of the copyright; (4) the deterrent effect on others besides
the defendant; (5) whether the defendant's conduct was innocent or willful; (6)
whether a defendant has cooperated in providing particular records from which
to assess the value of the infringing material produced; and (7) the potential for
discouraging the defendant.
54
Platypus Wear v. Bad Boy Club, Inc., No. 08-2662, 2009 WL 2147843, *7 (D.N.J.
July 15, 2009).
In this case, Penn State provides little support for an award of the maximum damages
in 1117(c) and (d) other than its evidence of Parshall’s willfulness and the strength of the Penn
State Marks. The affidavits, declarations, and documentary evidence accompanying Penn
State’s motion for summary judgment do not contain evidence from which the Court can
estimate either the scope of Parshall’s profits or the harm to Penn State’s profits. While the
undersigned recognizes that Penn State may be unable to obtain some of this information due
to Parshall’s failure to respond to interrogatories and requests for admission, additional
evidence is necessary to determine an appropriate level of statutory damages.
In other cases where district courts have awarded the maximum penalty permitted
under the statute, “there was reason to believe that the defendant's sales were substantial.”
Tiffany (NJ) LLC v. Dong, No. 11-2183, 2013 WL 4046380, *6 (S.D.N.Y. Aug. 9, 2013) (citing
Gucci Am. Inc. v. Curveal Fashion, No. 09-8458, 2010 WL 308303, *5 (S.D.N.Y. Jan 20, 2010);
Nike, Inc. v. Top Brand Co., No. 00-8179, 2006 WL 2946472, *3 (S.D.N.Y. Feb. 27, 2006);
Gucci Am., Inc. v. Duty Free Apparel Ltd., 315 F.Supp.2d 511, 521-22 (S.D.N.Y. 2004)). In Nike,
for example, the court focused on evidence of “the size of the defendant's infringing
operations, which led to the production of millions of infringing goods.” 2006 WL 2946472,
at *2. Similarly, in Philip Morris USA, Inc. v. Castworld Products, Inc., the court awarded
$2,000,000 in statutory damages because the defendant willfully imported 8,000,000
counterfeit cigarettes with a corresponding street value of millions of dollars. 219 F.R.D. 494,
501-02 (C.D.Ca. 2003)
55
Conversely, such a large award is less appropriate where there is limited evidence of
large-scale operations or profits. See Sennheiser Elec. Corp. v. Bielski, No. 11-7892, 2012 WL
2006011, *3 (C.D. Cal. June 4, 2012) (“Although Plaintiffs’ exact damages cannot be
determined because of Defendant's failure to take part in the present litigation, such a steep
award is clearly excessive, and does not bear a plausible relationship to Defendant's profits
from infringement.”); E.I. DuPont de Nemours and Co. v. Drabek, No. 12-10574, 2013 WL
4033630, *7 (C.D. Cal. May 3, 2013) (“Plaintiff has presented no evidence regarding the
extent of sales and no evidence that Defendant sold infringing products to a wide market.”).
Consequently, although Penn State need not prove its actual damages under 15 U.S.C.
§ 1117(c) & (d), the undersigned lacks even the most basic estimates as to an appropriate
amount of statutory damages. There is insufficient evidence that the scope of Parshall’s
operation matches that of past infringers against whom courts have imposed the maximum
statutory award. Therefore, in light of the limited evidence presented by Penn State, the
undersigned recommends that the request for statutory damages be held in abeyance, and that
Penn State be granted 14 days following the resolution of this Report and Recommendation
in which to file a supplementary motion for summary judgment solely on the issue of the
amount of statutory damages, and that motion be remanded to the undersigned for issuance
of a Report and Recommendation. That supplementary motion should provide a more
detailed basis for the damages, reflecting all of the available information relevant to the factos
discussed above, including any efforts by Penn State to obtain the information that have been
blocked by Parshall. See Delta Air Lines, Inc. v. Fly Tech, LLC, 2018 WL 1535231, *5 (D.N.J.
Mar. 29, 2018) (granting summary judgment and requesting plaintiff submit additional
56
evidence to aid the court in estimating an appropriate amount of statutory damages under 15
U.S.C. § 1117(c)).
3. Attorney’s Fees and Costs
Penn State argues that it should be awarded attorney’s fees due to Parshall’s willful
violations of the Lanham Act, including trademark infringement and counterfeiting. (Doc.
106, at 60). Specifically, Penn State asserts that an award of attorney’s fees is appropriate for
the following reasons: (1) “the blatant and willful nature” of Parshall’s actions; (2) “the ever-
moving target as to whether Mr. Parshall has obtained any profits given his continued
discovery failures;” and (3) “Parshall’s refusal to comply with discovery requests and constant
filing of meritless papers in this case has vastly increased Penn State’s attorneys’ fees above
what should be typical in a case like this.” (Doc. 106, at 60).
The Lanham Act provides that a court may award reasonable attorney's fees to the
prevailing party in exceptional cases. 15 U.S.C. § 1117(a). Although the statute does not
explicitly define “exceptional,” in general a “trademark case is exceptional for purposes of an
award of attorneys' fees when the infringement is malicious, fraudulent, deliberate or willful.”
Louis Vuitton, 211 F. Supp. 2d at 585 (citing Securacomm Consulting, Inc. v. Securacom, Inc., 224
F.3d 273, 280 (3d Cir. 2000)). In addition, “§ 1117(b) provides that the court shall award
attorneys' fees in cases where the defendant is found to have intentionally sold counterfeit
goods in violation of § 1114.” Microsoft Corp., 872 F. Supp. at 1341. An award of attorney's
fees may also include fees for investigators working under the direction of an attorney. Coach,
2012 WL 194092, at *9 (citing Chanel, 558 F.Supp.2d at 539).
Finally, “[t]he general rule in trademark cases is that a decree finding defendants have
committed intentional infringement carries costs.” Microsoft Corp., 872 F. Supp. at 1341. As
57
discussed above, the undersigned has already determined that Parshall's conduct was willful.
Therefore, it is respectfully recommended that Penn State’s reasonable attorneys’ fees and
costs be awarded.
V. RECOMMENDATION
For the foregoing reasons, it is respectfully recommended that Penn State’s motion for
summary judgment be GRANTED. (Doc. 105). In addition, it is recommended that Penn
State’s request for a permanent injunction, seizure of counterfeiting goods, and attorney’s fees
and costs be GRANTED. (Doc. 106, at 58-60). Further, it is recommended that Penn State
be granted 14 days following the resolution of this Report and Recommendation in which to
file a supplementary motion for summary judgment solely on the issue of the amount of
statutory damages, and that this matter be remanded to the undersigned for further
proceedings. Finally, in light of the recommendation that Penn State’s motion for summary
judgment be granted, it is recommended that Parshall’s motion for summary judgment be
DENIED AS MOOT. (Doc. 85).
Dated: February 17, 2022 s/ Karoline Mehalchick

KAROLINE MEHALCHICK
Chief United States Magistrate Judge
58
UNITED STATES DISTRICT COURT

MIDDLE DISTRICT OF PENNSYLVANIA
THE PENNSYLVANIA STATE

UNIVERSITY,
CIVIL ACTION NO. 4:19-CV-01299
Plaintiff,
(WILSON, J.)
v. (MEHALCHICK, M.J.)
PAUL L. PARSHALL,
Defendant.
NOTICE
NOTICE IS HEREBY GIVEN that the undersigned has entered the foregoing Report
and Recommendation dated February 17, 2022. Any party may obtain a review of the Report
and Recommendation pursuant to Rule 72.3, which provides:
Any party may object to a magistrate judge’s proposed findings,

recommendations or report addressing a motion or matter described in 28
U.S.C. § 636(b)(1)(B) or making a recommendation for the disposition of a
prisoner case or a habeas corpus petition within fourteen (14) days after being
served with a copy thereof. Such party shall file with the clerk of court, and
serve on the magistrate judge and all parties, written objections which shall
specifically identify the portions of the proposed findings, recommendations or
report to which objection is made and the basis for such objections. The briefing
requirements set forth in Local Rule 72.2 shall apply. A judge shall make a de
novo determination of those portions of the report or specified proposed findings
or recommendations to which objection is made and may accept, reject, or
modify, in whole or in part, the findings or recommendations made by the
magistrate judge. The judge, however, need conduct a new hearing only in his
or her discretion or where required by law, and may consider the record
developed before the magistrate judge, making his or her own determination
on the basis of that record. The judge may also receive further evidence, recall
witnesses or recommit the matter to the magistrate judge with instructions.
Dated: February 17, 2022 s/ Karoline Mehalchick

KAROLINE MEHALCHICK
Chief United States Magistrate Judge

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Case 4:19-cv-01299-JPW Document 133 Filed 02/17/22 Page 1 of 59

UNITED STATES DISTRICT COURT

THE PENNSYLVANIA STATE

REPORT AND RECOMMENDATION

I. BACKGROUND AND PROCEDURAL HISTORY

against Parshall in the amount of $9,493.00. (Doc. 66).

for interlocutory appeal. (Doc. 83).

Doc. 109; Doc. 110); see L.R. 7.6.

II. MOTION FOR SUMMARY JUDGMENT STANDARD

477 U.S. at 249.

III. STATEMENT OF FACTS

reasonable inferences drawn in his favor.

Penn State is a state-related institution of higher education and instrumentality of the

A. THE PENN STATE FAMILY OF MARKS

Registration Nos. 1308610, 1732445, 1870005, 4439041, 4561709, 4811121, 5052191,

B. THE NITTANY LIONS MARKS

Lion (collectively, “the NITTANY LIONS Marks”), continuously throughout Pennsylvania,

C. USE AND VALUE OF PENN STATE’S TRADEMARKS

107, ¶ 38; Doc. 109, ¶ 41).

publicly accessible at https://www.gopsusports.com, displays Penn State trademarks and

official online bookstore, publicly accessible at https://www.psu.bncollege.com, sells many

Doc. 109, ¶ 49).

D. PARSHALL’S “SPORTS BEER BREWING” BUSINESS AND USE OF INFRINGING MARKS

its website, publicly accessible at https://www.sportsbeerbrewing.com, which is owned and

Doc. 108-11, at 6-7).

Parshall uses trademarks referring to professional and collegiate sports programs,

(Doc. 107, ¶ 89; Doc. 108-5, at 4; Doc. 108-6, at 3).

(Doc. 107, ¶ 91; Doc. 108-7, at 2; Doc. 108-29).

register Parshall’s application on several grounds, including a likelihood of confusion with

Doc. 38, at 1).

On March 6, 2018, Penn State received correspondence from the Commonwealth of

Pennsylvania’s Governor’s Office of General Counsel, stating that Parshall’s trademark

website. (Doc. 107, ¶ 99; Doc. 108-15, at 2).

pennstatehappyvalleybeer.com, pennstatenittany.beer, and pennstatenittanycigars.com. (the

“Infringing Domains”). (Doc. 107, ¶ 111-12; Doc. 108-20, at 2-10).

On June 20, 2020, Parshall registered the domain <pennstatehappyvalleybeer.com>,

<pennstatenittany.beer>. (Doc. 107, ¶ 116; Doc. 108-20, at 3-6).

On August 14, 2020, Penn State commended a Uniform Dispute Resolution

Procedure (“UDRP”) action concerning the domains, https://www.

pennstatehappyvalleybeer.com and <pennstatenittany.beer>. (Doc. 107, ¶ 118; Doc. 108-22,

On October 6, 2020, Parshall registered the domain <pennstatenittanycigars.com>.

[<pennstatenittanycigars.com>] Domain Name in bad faith to create confusion with [Penn

arguments for why summary judgment should be granted.

A. TRADEMARK INFRINGEMENT, FALSE DESIGNATION OF ORIGIN, AND UNFAIR

Act—federal trademark infringement, 15 U.S.C. § 1114, and federal unfair competition, 15

U.S.C. § 1125(a)(1)(A)—are measured “by identical standards.” A & H Sportswear, Inc. v.

in commerce or in connection with the goods or services specified in the certificate.” 15

federal registrations that obtained incontestable status).

Inc., 437 F.Supp.2d 273, 285 (D.N.J. 2006)).

1. Similarity of Mark: Lapp Factor (1)

“average consumer, on encountering one mark in isolated circumstances of marketplace and

Checkpoint, 269 F.3d at 281 (citations omitted).

by unrelated entities, a likelihood of confusion is inevitable.”). The dominant portion of each

average consumer to disassociate the products. J. Thomas McCarthy, 3 McCarthy on

and the first Lapp factor weighs in favor of summary judgment.

2. Strength of Mark: Lapp Factor (2)

mark strength—which in turn determines the level of protection given—because “the

classification system's primary purpose is . . . to determine whether consumers are likely to