Assouline & Berlowe
Pearson on Patents & Trademarks
Tips to Increase the Value of Your Intellectual Property
September 28, 2010 - Vol 1, Issue 2
In This Issue
False Marking Claims Affirmed
Proper Patent Marking
Proper TM Marking
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Did I forget to tell you about liability for patent false marking?  I often get so focused on registering patents and trademarks that I do not stress the importance of proper patent marking.  Falsely marking a product can lead to liability of $500 per item!
For details about false marking and proper marking, check out my Marking/False Marking White Paper
False Marking Lawsuit Upheld against Brooks Brothers 
BowtieAs you can see, I like to wear Brooks Brothers brand bow ties.  These ties were the subject of a recent false marking case: Stauffer v. Brooks Brothers.  
In the case, the Federal circuit affirmed a member of the public's (i.e. qui tam) right to sue for $500 per item for an item that was intentionally faslely marked.  The bow ties were marked with an expired patent number.
False Marking is particularly dangerous for the following reasons:
  • A member from the public not specifically harmed can bring the law suit
  • The plaintiff's bar is aggressively seeking cases
  • The damages can be $500 per item.
 Typical false marking situations:

  • Expired patent number remaining on product
  • Claims of patent do not cover the actual product
  • No patent applicaiton filed, yet product marked "patent pending".
For a non-legal explanation, check out the Wall Street Journal article.
For a law professor's analysis, read the Patently-O Blog.
For guidance on proper marking and false marking, read my Marking/False-Marking White Paper
Proper Patent Marking
US PatentThe proper way to mark a patented product is to place a notice directly on a product with the notice:
  • Patent No. X,XXX,XXX
Be careful that the product falls within the patent's claims and that the patent has not expired.
The proper way to mark a product that is the subject of a patent application is the follwoing:
  • Patent Pending
For details about proper marking and how to avoid false marking, download my Patent Marking White Paper
Proper Trademark Notice
(R)Registered Trademarks should be marked . Non-registerd marks must not be marked
or "Registered Trademark" or "U.S. Reg "
Non-registered trademarks can be marked "TM" and service marks marked with "SM".
For more details on trademark marking, download my Marking/False-Marking White Paper.
For Patent Pending, Pick Pearson!
Registered Patent Attorney
Board Certified Intellectual Property Attorney