Patent and Trademark Marking – Do You Comply?

If your company is in the business of manufacturing patented products, or if you use trademarks in your business (registered or not), this article is for you.

Under the U.S. Code, patentees and persons making, offering for sale or selling patented products may "mark" their products with the word "patent" or the abbreviation "pat." together with the patent number to place the public on notice that the product is patented. This is typically done because if an alleged infringer is not put on notice that the product was covered under a patent (by marking the product or otherwise), damages accruing prior to notification of infringement, either by service of a cease and desist letter or filing a lawsuit, cannot be recovered in an action for patent infringement.

If a product is falsely marked, any person may sue under the U.S. Code for false marking and obtain up to $500 for each false marking offense, with half of the proceeds going to the plaintiff and the other half of the proceeds going to the federal government. False marking has typically been interpreted as marking a product as being patented when it never was, or marking the product with the words "patent pending" or "patent applied for" when no patent application was ever filed. False marking has not been considered actionable if a product was marked with an expired patent - until now.

In the case of Matthew Pequignot v. Solo Cup Company, the U.S. District Court for the Eastern District of Columbia stated without question that "marking an article with an expired patent number is a false marking under 35 U.S.C. § 292(a)." In that case, the plaintiff sued under § 292(a) alleging that Solo manufactures 24 products marked with expired patent numbers, seeking $500 for each false marking offense. In a Memorandum Opinion, the court determined that the scope of an "unpatented article" under § 292(a) extends to articles "for which a once valid patent has expired," denying Solo's motion to dismiss the case for failure to state a claim. No additional rulings on this case have been made.

Given this court's view of "false marking," if your company marks its products with patent numbers, you may wish to consider reviewing your product line to ensure that your products are properly marked and to remove markings from products with expired patents and abandoned patent applications.

With regard to trademarks, a trademark owner should use the proper symbol in connection with the mark in order to place others on notice regarding the trademark owner's proprietary rights in the mark. If the trademark owner does not own a federal trademark registration for the mark, the ™ designation should be placed immediately adjacent to the trademark to give the public notice of your claim of trademark rights. Conversely, if the trademark owner does own a federal trademark registration, the ® designation should be used rather than the ™ designation.

With regard to federal trademark registrations, use of the ® designation is not mandatory. However, if a trademark owner fails to use the ® designation in connection with its registered mark, it cannot collect profits or damages from an infringer in an infringement action unless the trademark owner can prove that the infringer had actual notice of the trademark owner's registration.

However, trademark owners should be careful to avoid using the ® designation improperly. Use of the ® designation in connection with an unregistered mark could, in trademark litigation, be considered to be fraud on the public or unclean hands. Accordingly, if a trademark owner were to misuse the ® designation, a court could hold such misuse to be a basis for denying relief in an infringement action relating to the mark.

If you are unsure if your business is properly marking its products and/or is properly using its trademarks, please feel free to contact Michael Swift, Jay Taylor, Bradley Stohry or Mark Reichel.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice.  The reader must consult with legal counsel to determine how laws or decisions discussed herein apply to the reader's specific circumstances.