False Marking

IP entrepreneurs typically want to get, and should get, notification of their IP rights on their product, packaging, and marketing materials. The benefits are legion, from alerting people to the claim of right in the product, the product configuration, the product name, etc., to utilizing the advertising benefit of claiming a patented, trademark registered, or copyrighted creation. For patents, failure to properly mark can preclude the patent owner from getting any damages at all from an infringer. So to, the means for marking can be legion, from Patents: "pat. pending", "U.S. Pat. _", "U.S. Des. Pat. _", "U.S. Plant Pat. PP_", to Trademarks: (TM), (R), (SM), to Copyrights: (SR), (PA), (C), among others.

But marking has its flip side. To avoid a claim of false marking, there must be, as an absolute floor, a reasonable belief that the product marked as "patent pending" is actually the subject of a legitimate patent application, that a product marked as "U.S. Patent _" is actually covered by claims of a validly issued and unexpired patent, that a mark with the (R) subscript is actually registered by the U.S. Federal government, and not by a state or foreign country.

Where this floor is not met, the penalties can be stiff. For false marking of a patent, a Federal statute imposes a fine of $500 per product, and the suit can be brought by anyone, even if you don't have a dispute with them. False marking can also constitute unfair competition and violation of trade laws.

In short, marking laws can be complex. To do it properly, the IP entrepreneur must make sure to toe the mark.

Generic Trade Names and Trade Marks not protectable in Washington

The Washington Court of Appeals, Division II, ruled today in Custom Auto Interiors v. Custom RV Interiors that generic trade names and trade marks are not protectable. To the extent that the 1926 Electric Supply case held generic names were protectable, subsequent cases and legislation have rendered that position invalid. Custom Auto Interiors involved an interlocutory appeal of a preliminary injunction enjoning the defnendat, Custom RV Interiors from using the name Custom RV Interiors for its business of providing custom RV interiors. Custom Auto Interiors contended it had used the name Custom RV Interiors for over 15 years in the same locale for the serice of providing custom RV interiors, and that, generic or not, the potential for, or existence of confusion, rendered the name protectable, and the defendant's use of the name enjoinable. The trial court accepted this proposition. The defendant petition for review. Review was accepted and the trial court's injunction was reversed. The firm of Rylander & Associates PC (which this blogger manages), represented the defendant on appeal. This is also an important note for the small or start up business--the smaller party does not have to surrender in the face of an adverse decision