Analyzing the Crocs, Inc. v. Effervescent, Inc. Decision: False Patent Marking May Violate the Lanham Act

By Nicole Maxwell

What is a Patent Marker?

A patent owner can notify the public that a product is patented by marking the products with the word “patent” and its patent number.[1] If patent owners do not patent mark their products, owners may not be able to recover damages if another party copies the product in a manner that is covered by the patent.

Entities that use a patent marker when the product is not patented may be subject to legal penalties. Entities may mark their products as “patent pending” to notify the public that they have filed a patent application, but it will not have legal patent protection until the USPTO grants patent registration.

The Lanham Act: False Advertising

The Lanham Act is a federal law that defines a trademark and protects trademark owners. The Lanham Act specifically protects owners from trademark infringement, trademark dilution, unfair competition, and false advertising.

The false advertising provision of the Lanham Act provides elements a plaintiff must meet to bring a claim for false advertising. A plaintiff must show: “the defendant made false or misleading statements as to their own products (or another’s); actual deception occurred, or at least a tendency to deceive a substantial portion of the intended audience; the deception is material in that it is likely to influence purchasing decisions; the advertised goods travel in interstate commerce; and there was a likelihood of injury to the plaintiff.”[2]

False Patent Marking Claims

Entities sometimes claim that their products or features of their products are patented in an attempt to protect their designs, even when they have not filed for a patent or the USPTO has not approved the patent application.[3] For example, in Crocs, Inc. v. Effervescent, Inc.[4], Crocs falsely claimed a piece of their shoes are patented. The plaintiff, Dawgs, alleged that Crocs violated the false advertising provision in the Lanham Act. Crocs moved for summary judgment that Dawgs’ counterclaim under the Lanham Act failed as a matter of law because the terms “patent” and “proprietary” relate to patent and copyright claims, and not trademark claims.

However, the Federal Circuit found that Dawgs’ correctly linked Crocs’ misrepresentations in commercial advertisements to the nature, characteristics, and qualities of Crocs’ shoes, which meets the required elements of a trademark claim under the Lanham Act.

What does this mean for IP Law?

The Federal Circuit has nationwide jurisdiction over patent cases.[5] As a result of the Crocs ruling, parties may assert claims for false advertising under the Lanham Act when a seller makes false patent marking claims. If a party can prove the language used in the false patent marking claims links to the “nature, characteristics, and qualities” of the product, the patent marking claims may meet the elements of false advertising under the Lanham Act.

Sellers should be sure to make factual and accurate claims when describing the patented portion of the products to avoid violating the Lanham Act. Sellers should only use a patent marker on a product that has a valid patent registration with the USPTO. If an entity is awaiting patent approval, the company can mark a product as “patent pending” or “patent applied for” but cannot mark it as a “patent” without violating the law.

[1] https://www.uspto.gov/patents/basics/manage#marking

[2] https://www.law.cornell.edu/wex/false_advertising

[3] https://patentlyo.com/patent/2024/10/patent-marking-claims.html

[4] https://cafc.uscourts.gov/opinions-orders/22-2160.OPINION.10-3-2024_2395329.pdf

[5] https://cafc.uscourts.gov/home/the-court/about-the-court/court-jurisdiction/#:~:text=It%20has%20nationwide%20jurisdiction%20in,public%20safety%20officers'%20benefits%20claims.