Archives for February 2013

Solving An Age-Old Problem: The Oreo Separator Machine

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Johnny Manziel – On the ball both on the field and off.

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Infringing on Johnny Manzel's unregistered mark?

Infringing on Johnny Manziel’s unregistered mark?

Johnny Manziel – Texan A&M football phenom quarterback and Heisman trophy winner – took a t-shirt salesman to court last week to protect his trademark rights to JOHNNY FOOTBALL.

As reported by ESPN, Eric Vaughan was (and apparently still is) selling T-shirts that read “Keep Calm and Johnny Football.”  Although the case would be fairly vanilla if Manziel owned the registered mark, Manziel’s mark is still in process with the USPTO. So how can he still sue to stop Vaughan? The answer: common law rights.

Common law rights to a mark automatically attach once the mark is used in commerce, giving the user territorial priority trademark rights even without requiring a certain level of notoriety (not really the case here as most sports fans throughout the country know who Johnny Football is). This earlier use establishes a right of priority even over a earlier filed U.S. application to register a similar mark (assuming no earlier use by that applicant) and as a corollary, allows the prior user to prevent the subsequent user from using the similar mark (with certain exceptions).

Johnny’s right to sue Vaughan is also codified in 15 U.S.C. §1125(a) (Lanham Act §43(a) which allows for suits against people who use “in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which–(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person…”

Thus, Johnny is in good shape.

Virtual Marking – the AIA Keeps it Simple

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Physical Marking of Patented Product with Patent Number no longer required.

Physical Marking of Patented Product with Patent Number no longer required.

The America Invents Act (AIA) has made the marking of products with an appropriate patent number easier.

Marking a product with a patent number or with “Patent Pending” is generally useful as a deterrent and is suggested under the patent laws (see 35 U.S.C. § 287) so as to ensure a full collection of damages in the case of infringement.  In days past, all products had to be marked with the patent number (with some exceptions).  This didn’t sit well with all patentees, as some products are very small, thus making marking difficult, and other products are designed for aesthetic appeal (ever seen a patent number on an iPhone? Yet Apple has over 1200 patents directed to mobile technologies) and a patent mark would detract from this appeal.

The AIA set out to alleviate these concerns by allowing a patentee to “virtually” (meaning using the internet) mark a product with a patent number.[1]


The details of the virtual marking requirements of AIA are as follows:

  • On your patented article:
    • Affix the word ‘patent’ or the abbreviation ‘pat.’; and
    • An internet address
  • Then, on the internet:
    • Provide a webpage that is accessible to the public without charge; and
    • Associate your patented article with the patent number.

Clearly this has advantages besides just aesthetics.

For example, if a single patent covers your product when you begin manufacturing, but another patent issues later, using the website option allows you to update the patent information without having to modify a mold or the product’s packaging. Thus, with this change there is no longer a requirement to mark a product under the former marking scheme if you prefer not to do so (although the old way is still available).  Under the new law, which took effect September 16, 2011, you can choose to:

a) mark your products with “Pat.” (or equivalent) and the patent number,

b) mark your products with “Pat.” (or equivalent) and an internet address that associates the product with the patent number, or

c) use a label on the product or packaging for the product that includes “Pat.” (or equivalent) and the patent number or internet address when it is not possible to mark the product.

Importantly, marking should only occur if the patent actually covers the product.  In order for this condition to be met, the claims of your patent must “read” on the product, i.e., all of the elements of the claim must be found in the product.  (Don’t get confused, it’s not the other way around, not every piece/part of the product need be found in the claims).

Some companies that have implemented landing pages for patent numbers can be found here.


[1] The full text of 35 U.S.C. § 287 reads: “(a) Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.