The Dobrusin Law Firm - Intellectual Property

Strategic Intellectual Property Law

Month: March 2022

Show Your Work: What Is “Patent Marking” and Why Is It Important?

You put a lot of time, money, and effort into obtaining a patent and all the valuable rights and protections that come with registration. Those rights include the potential recovery of substantial damages from others who infringe on your patent. But if you fail to let the world know about your hard work by not properly marking your product or invention with the details of your patent registration, you could lose out on thousands or millions of dollars in compensation that would otherwise be available.

What Is Patent Marking?

Just as the registered trademark symbol ® and the copyright symbol © provide notice that the mark or creative work is protected under federal law, patents have their own marking rules. In its simplest sense, patent marking means displaying the patent number – or a URL for a website that contains the same information – on a patented product.

Why Is Patent Marking Important?

Proper patent marking serves as legal notice to potential infringers that a valid patent protects the product. If marking was proper, an infringer would have known or should have known about the existence of the patent as displayed on the product, and they could be held liable for damages that extend much farther back in time than they would without proper marking. In the absence of compliant patent marking, the clock would start ticking on damages only from the date the patent holder provides actual notice of infringement to the alleged infringer. Proper patent marking instead starts the period for which a patent holder can recover damages without actual notice of infringement. This could amount to as many as six years of damages.

Patent marking is not required under the law. But to avail yourself of the potential damages that arise from patent marking, it is essential that the marking complies with the requirements of Section 287(a) of the Patent Act. Improper patent marking will deprive you of recoverable damages, but it can also leave you exposed to liability for false marking if there is deceptive intent.

Marking Requirements Under The Patent Act

As provided in Section 287(a) of the Patent Act, anyone who makes, offers for sale, sells, or imports into the United States a patented product may give the public notice of the patent by marking it in one of three ways:

  • Affixing the word “patent” or the abbreviation “pat.” on the item, together with the patent number.
  • Affixing the word “patent” or the abbreviation “pat.” on the item together with the URL of a website accessible to the public free of charge that associates the patented article with the number of the patent (this is often referred to as “virtual marking”).
  • In cases where affixing such information cannot be done due to the character of the article (such as its size or materials), affixing a label containing that information to the item’s packaging. Marking in this manner is not proper if done for mere convenience or aesthetic reasons.

In the case of virtual marking, the listed website can’t just list a company’s patents or make associating a specific patent with a specific product a research project for visitors. The website must clearly correlate each product covered by at least one claim of a patent to that particular patent or patents.

What About “Patent Pending” Marking?

Plenty of patent applicants mark their good with “Patent Pending.” There is no requirement, detriment, or advantage to doing so. Unlike marking for issued patents, marking an item “Patent Pending” does not offer any additional protections or increase recoverable damages. But applicants should update their marking per the requirements set forth above once the patent issues.

Potential Liability For “False Marking”

Section 292 of the Patent Act allows the United States and anyone who has suffered a “competitive injury” to bring a claim against a patent holder for false marking. A claimant must show the patent does not cover the marked article and the patent owner marked the article with the intent to counterfeit or deceive the public.

There are many nuances to patent marking, and failing to “substantially comply” with the Patent Law’s requirements can make the marking worthless. If you have questions about or need assistance with patent marking, please contact the attorneys at The Dobrusin Law Firm.

Erin Klug and Rebecca Wilson Ranked Among the Top Trademark Practitioners in World Trademark Review

World Trademark Review (WTR) has recently published its annual guide, WTR 1000 2022, recognizing the top trademark professionals in key jurisdictions around the globe. This year, shareholders Erin Klug and Rebecca Wilson make their debuts on this prestigious list, joining an elite group of only 23 trademark attorneys achieving recognition in Michigan.

Erin is described as “a versatile IP attorney,” with one of her clients stating, “Whenever I have trademark, copyright, or patent work, I turn it over to her – I have total confidence in her ability and have never been disappointed. She’s not someone who couches everything in a bunch of disclaimers and conditions but gives practical and excellent advice.”

An accomplished patent, trademark, and copyright attorney, Erin counsels large corporations, innovative companies, and solo entrepreneurs regarding intellectual property opportunities and strategy. She guides clients in various industries through the application and registration processes and enforces those rights once granted. Whether Erin is working with entrepreneurs, in-house counsel, presidents and CEOs, marketing teams, or R&D departments and individual engineers, she is valued for being a smart lawyer who is an agile problem-solver and focused on realizing commercial goals.

In analyzing Becky’s stand-out skills, WTR says her “rich CV includes previous manufacturing and corporate roles, giving her a well-rounded view of the issues her IP clients face. Tenacious and commercial, she never lets anything stand in the way of robust rights protection.”

Helping clients understand how to build, protect, and enforce their brands is what Becky does best. Possessing a keen understanding of the efforts required to create a successful business, Becky devotes her practice to copyright protections and the prosecution of trademarks from inception to registration. Her clientele is diverse and includes the automotive industry, clothing designers, tequila manufacturers, small breweries, cannabis companies, skincare companies, logistics companies, start-ups, and medical device companies.

The only rankings directory focused exclusively on the trademark practice, WTR 1000 is the definitive resource for legal trademark expertise. With independent researchers conducting hundreds of interviews with trademark specialists in over 50 key jurisdictions, WTR 1000 identifies firms and individuals setting industry benchmarks for trademark legal services. The list comprises the firms and individuals to whom trademark professionals turn when seeking local and international legal partners.

Federal v. State Trademark Registration: What’s the Difference and Which One Is Right for Your Brand?

A trademark – whether a name, logo, packaging design, tagline, or slogan – is at the center of any company’s branding efforts and can be one of its most valuable assets. Like any important asset, a trademark warrants protection to preserve its value and keep others from diminishing or exploiting it for their own purposes. That is why trademark registration is essential for any business trying to establish itself and its brand.

But there is more than one way to register a trademark. While most people are familiar with federal trademark registration through the U.S. Patent and Trademark Office (USPTO), that is not the only game in town. You can also register your trademark with the state where your company is located and using the mark. For example, businesses that use their mark in commerce in Michigan can obtain a state registration from the Corporations Division of the state’s Department of Licensing and Regulatory Affairs.

Federal trademark registration and state registration are not mutually exclusive, though obtaining a federal registration usually deletes the need for a state one. But federal registration and state-level registration are not created equal. There are significant differences in the protections afforded by each type of registration and the complexity and costs involved in applying for registration.

So, what are the differences between federal and state trademark registration, and which one is right for your business and mark?

Advantages of Federal Trademark Registration

If you want the strongest, broadest protection for your mark and may use it outside your immediate geographic area, there is no substitute for registering your trademark with the USPTO.

There are several advantages to federal registration that a state registration cannot provide. Perhaps the most fundamental distinction between the two is that a federal registration protects your rights and your trademark throughout the entire United States (including its territories and possessions), while a state registration provides no protection beyond its borders.

Additional benefits of federal trademark registration include:

  • Deterrence of infringement. A federally-registered trademark is listed in the USPTO’s database of registered and pending trademarks. It provides the public, including people or companies looking to use or register a similar mark, notice of the mark’s registration, the goods and services with which it is used, and the dates the owner applied for and received trademark registration. Seeing a registered mark can deter other parties from using a confusingly similar mark that may lead to an infringement claim.
  • Presumption of ownership. Federal registration creates a legal presumption of ownership of the mark and the right to use it. If those rights become an issue in litigation, the registration certificate proves ownership without needing to present other evidence to support the claim.
  • Filing before actual use of the mark. A federal trademark application can be filed even before the mark is used in commerce. Filing on an “intent to use” basis allows an owner to get the ball rolling on registering their mark and securing an earlier filing date.
  • Foreign registration. While a federal registration is no guarantee of registration in another country, it can be the basis of seeking such protection.
  • Access to federal court. Federal registration allows an owner to pursue infringement and other claims in federal court.
  • Use of federal trademark symbol. The owner of a federally registered mark can use the federal trademark registration symbol, ®, with the mark, which may deter others from using the trademark or one too similar to it.

 State Trademark Registration

Registering a trademark with a state creates rights and protections in that state only. The mark will not be protected if the owner uses it in other states where it isn’t registered. Like most states and unlike the USPTO, Michigan requires an applicant to demonstrate actual use in commerce when applying, and a state registration does not confer the right to use the ® symbol. It cannot form the basis of a foreign registration, and it does not secure access to federal court.

Why Apply for a State Trademark Registration?

 For companies that do not currently or have no intention of using their mark outside their immediate area, federal registration may not be necessary or available. The requirements for federal registration and its application process are much more complex and stringent than for state registration. This includes demonstrating the mark’s current or future “use in commerce,” which means, among other things, using the mark across state lines. Additionally, the fees for applying for federal registration are significantly higher than for state registration. Federal registration fees (not including any attorney’s fees incurred preparing and prosecuting the application) run between $250-$750, while applying for a mark in Michigan costs $50.

The best way to determine which trademark registration path is best for your business is to meet with an experienced trademark attorney. If you have questions about how and where to register your mark, please contact the trademark attorneys at The Dobrusin Law Firm for assistance.

Contact Information

The Dobrusin Law Firm
29 W. Lawrence St.
Suite 210
Pontiac, MI 48342

Phone: 248-292-2920
Fax: 248-292-2910
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