The patented bow tie – false marking back in the spotlight

If you thought bow ties were only for the old fashioned or the eccentric, think again.  A U.S. lawyer, Raymond Stauffer, has brought the bow tie back into fashion in a ‘false-marking’ suit against Brooks Brothers, a well-known clothing company that also manufactures bow ties. 

Some of the Brooks Brothers bow ties were marked with patent numbers; however these patents expired in 1954 and 1955.  Some of these marked bow ties were then purchased by Mr Stauffer (who appears to bring his work home with him).  Mr Stauffer brought an action under 35 U.S.C. § 292 alleging that Brooks Brothers had falsely marked its bow ties.  False marking occurs where a person marks an unpatented product with a patent number or the word ‘patent’ for the purpose of deceiving the public.  The penalty for ‘false marking’ is a maximum of US$500 for every offence. 

In the District Court, Brooks Brothers had successfully argued that Mr Stauffer had not suffered any harm by the false marking and therefore he had no standing to bring the action against them.  However § 292 states that “any person may sue for the penalty…”.  This provision is an example of a qui tam provision, which allows anyone to pursue an action on behalf of the government as well as himself.  In these cases damages are split equally between the individual and the government.  The basis of a person’s standing is the government’s implicit partial assignment of its claim to “any person”.  Mr Stauffer appealed the District Court’s decision and the Court of Appeal for the Federal Circuit found that “because the government would have standing to enforce its own law, then Mr Stauffer, as the government’s assignee, also has standing to enforce § 292”.  The Court of Appeal therefore remanded the case back to the District Court to consider the merits of the case. 

If a finding of false marking of the bow ties is found, it could result in a financially crippling penalty against Brooks Brothers.  Previous decisions involving this penalty resulted in either a single fine for each decision to mark the goods (regardless of how many goods were sold) or a time based fine, determined by the number of days, weeks or months the goods were falsely marked.   However in December last year a U.S. court found that the US $500 penalty applies to each article sold.  On this interpretation, if 50,000 falsely marked bow ties were sold, the potential fine could be as high as US$25 million.        

This case is sure to encourage manufacturers to check patent markings on stock to ensure they too are not targeted by other vigilant and litigious citizens across America.

We will be sure to keep you updated on the further developments of this case.

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