Intellectual Property Attorney

Don’t Forget About Intellectual Property Markings

One of the most frequently asked questions directed to intellectual property attorneys is: what are the legal marking requirements for patents,
trademarks and
copyrights? In this post, we will provide an overview of the legal marking requirements in the United States, the advantages of complying with these requirements and the disadvantages of ignoring them.

The bottom line is that the failure to use markings appropriately and correctly can (and probably will) negatively impact your intellectual property rights and the value of your patents, trademarks and copyrights.

Patent Marking

This time last year, federal courts were in the midst of a flood of actions alleging that defendants had engaged in “false marking” by marking products with expired patent numbers. At that time, any individual was permitted to bring a “qui tam” action under 35 U.S.C. § 292(a) alleging that products had been incorrectly marked with patent numbers. In most cases, plaintiffs scoured the marketplace for any product with an expired patent number and then sought salutatory fines — $500 per alleged violation. Hundreds of companies were sued and, in some cases, plaintiffs sought
billions in damages. The U.S. Government put a stop to these lawsuits when it passed the
America Invents Act last year. While the America Invents Act represented the first overhaul of the U.S. Patent System in decades, for purposes of this post, the Act limited the class of potential plaintiffs under 35 U.S.C. § 292(a). Now, only the United States is permitted to sue for statutory damages. Private individuals may only file suit if they have suffered a “competitive injury” as a result of the alleged false marking. Additionally, merely marking a product with an “expired patent” number is no longer a violation of 35 U.S.C. § 292(a).

Classic patent marking is a statement that the item in question is patented followed by an identification of the applicable patent number. For example, the typical patent notice takes this form: “U.S. Patent No. X,XXX,XXX.” During the pendency of the application in the United States Patent and Trademark Office, many patent applicants frequently use the designation “Pat. Pending” or “Patent Pending” on their products, packaging and advertising or promotional material.

The patent laws (35 U.S.C. § 287) provide that a patent owner may give notice to the public through the use of an appropriate patent notice that a product is patented. Failure to mark a product or its appropriate packaging may result in an inability to recover damages against an infringer absent proof that the patent owner had otherwise notified the infringer of such infringement and the infringer continued to infringe thereafter. Thus, failure to mark such a product or its appropriate packaging can result in the loss of the ability to recover damages against an infringer who immediately ceased selling the infringing products upon notification from the patent owner. There is an exception to the general marking rule with respect to “method” patents. Where a patent is exclusively covered by method claims no such marking is required. However, where the patent covers method and apparatus or device claims then marking is required.

While the patent laws afford specific advantages to patent owners who place patent notices on their products, there are no such advantages afforded to individuals who indicate that their products are covered by a pending patent application. Nevertheless, it is widely accepted that there is a commercial advantage that results from warning a competitor that a product is the subject of a patent application. The belief is that a competitor, who might otherwise be inclined to copy or knock-off the product, might be reluctant to copy a product which might be patented in the future. The hope is that the competitor will reason: “Why make a major investment in tooling and promotion only to be enjoined from selling the product when the patent issues?”

The America Invents Act also includes a provision for so-called “virtual marking.” Patent owners may satisfy the “notice” requirements of the patent laws by marking a product with the term “patent” or “pat.” together with a website address (or “URL”) “that associates the patented article with the number of the patent.” The implication of this marking rule is that patent owners can list patents and products on a website instead of marking the individual products.

Trademark Marking

The Lanham Act defines a trademark as “…any word, name, symbol, or device, or any combination thereof–(1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if the source is unknown.” 15 U.S.C. § 1127.

The difference between a trademark and a service mark resides in how the mark is being used. If the mark is used in conjunction with a particular product, e.g., a sweatshirt, it is a trademark. If, however, it is used in conjunction with a service, e.g., providing educational services, it is a service mark.

In most instances, the designations TM or SM are used prior to obtaining a federal registration for the mark. Frequently, trademark counsel will advise a client to use the designations TM or SM immediately upon commencement of the use of the mark. The designations are typically placed as a superscript at the upper right of the mark. There is no particular legal necessity to use the TM or SM designation with the mark other than to indicate to the public at large that the user considers the particular mark to be a trademark or service mark. Practically speaking, however, inclusion of a designation is highly recommended. For example, use of a designation can help persuade a federal court in subsequent enforcement action that the particular mark should be afforded protection. Conversely, if a designation is not used, the owner may have trouble explaining why there should be trademark protection when no notice had been given previously.

When the mark becomes registered with the United States Patent and Trademark Office, the designation TM or SM should be changed to ®. Just like TM and SM, the ® symbol should be placed as a superscript at the upper right of the mark. Some property owners prefer to use the designations “Registered in the U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & TM Off.” This is purely a matter of preference. The tag line “Registered Trademark” is not a statutory notice and may actually be misleading because it does not indicate where the mark was registered.

There is a significant legal reason for indicating that a mark is registered with the United States Patent and Trademark Office. 15 U.S.C. § 1111 provides that if a trademark owner commences suit against an infringer and has not indicated that it mark was registered, the owner is precluded from recovering profits and damages unless it can be established that the defendant had actual notice of the registration.

Copyright Marking

The Copyright Act defines copyright as: “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.” 17 U.S.C. § 102

In many licensing situations, copyright protection is used in conjunction with trademark protection to secure the broadest rights in a particular logo or symbol, (e.g., the UCLA Bruin, which can be protected under both the trademark and copyright laws) or to protect advertising or packaging copy. The copyright notice is usually included directly on the product or the hangtag or label and typically takes the form: © XYZ, INC. 2012. Instead of the © symbol the word “Copyright” or the abbreviation “Copr.” can be used.

Prior to 1989 when the U.S. enacted the Berne Convention Implementation Act, amending the 1976 Copyright Act to conform to most of the provisions of the Berne Convention, failure to include a copyright notice could be fatal to the owner’s rights. Since then, however, failure to include the notice can no longer result in a loss of rights in the U.S. It is nevertheless still good practice to include the traditional copyright notice where applicable because of the benefits provided by statute. The failure to use a copyright notice may allow infringers to rely upon an “innocent infringer” defense. This defense can prevent a copyright owner from collecting statutory or actual damages for acts of infringement that occurred prior to the infringer receiving actual notice of the copyright.

The inclusion of the appropriate legal notice is important to make sure that the public (and your competitors) are aware that your products and property are covered by copyright protection. Copyright notices should be placed in such a manner and location as to give reasonable notice of the claim of copyright. While you may be tempted to eliminate the legal notice to make advertising copy or product packaging look “cleaner,” you should resist that temptation.

Conduct Marking Reviews and Audits

Far too often individuals and companies do not have a cohesive, defined strategy to ensure intellectual property markings are used correctly. This can lead to irrevocable loss of rights and value. Moreover, intellectual property markings that are used falsely (such as, representing that a product is covered by the claims of a patent when it is not or representing that a trademark is registered when it is not) can result in liability.

We recommend conducting regular reviews and audits of all intellectual property, including markings. This is the only sound method to protect rights and value and prevent liability.

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