Falsely Promoting Product as “Patented” may be Actionable under Lanham Act

This article, which originally appeared in World Trademark Review, discussed Crocs Inc v USA Dawgs Inc, a decision of the U.S. Court of Appeals for the Federal Circuit, regarding whether promotion of a product as “patented” is actionable as false advertising under the Lanham Act. The district court had granted summary judgment that the false advertising claim was not actionable, relying on Supreme Court precedent that promotional claims relating to authorship and inventorship do not relate to the quality of the promoted product. On appeal, the Federal Circuit reversed, distinguishing these precedents because the promotional claims made by Crocs went to the innovativeness of the product rather than the identity of the inventor. Significantly, the false advertising allegation was made as a counterclaim in response to Croc’s patent infringement suit against USA Dawgs. Thus, the case is a reminder for those asserting patent infringement to be aware not only of the risk of invalidity claims, but also less obvious counterclaims such as false advertising.