Falsely Claiming Patent Protection May Violate the Lanham Act

Written by: Nathan D. Reeves & Ryan B. Freedman

CROCS, INC. v. EFFERVESCENT, INC.

Before Reyna, Cunningham and Albright. Appeal from the United States District Court for the District of Colorado.

Summary: A claim that an unpatented product feature is “patented,” “proprietary,” or “exclusive” may violate Section 43(a)(1)(B) of the Lanham Act.

Crocs brought suit against U.S.A. Dawgs, Inc. and several other competitor shoe distributors (collectively, “Dawgs”) for patent infringement. Dawgs filed a counterclaim against Crocs alleging false advertising violations of Section 43(a) of the Lanham Act. The counterclaim alleged that Crocs advertised its footwear products as being made of a “patented,” “proprietary,” and “exclusive” material called “Croslite” without possessing a patent directed to that material. Dawgs alleged that Crocs’ statements deceived consumers into believing that competitor footwear products were made of inferior material compared to Crocs’ products. Crocs moved for summary judgement that Dawgs’ counterclaim was legally barred and the district court granted Crocs’ motion. The district court concluded that the terms “patented,” “proprietary,” and “exclusive” were claims of inventorship or authorship and not claims regarding the nature, characteristics, or qualities of products as required by Section 43(a)(1)(B) of the Lanham Act. Dawgs appealed.

The Federal Circuit reversed. The Court first addressed Supreme Court and Federal Circuit caselaw that held that mere claims of authorship (such as claiming to be the creator of a product) or inventorship (such as claiming a product is “innovative”) do not violate Section 43(a)(1)(B). The Federal Circuit distinguished these prior cases because a claim that a product feature is “patented” is not necessarily a claim of authorship or inventorship. A claim that a product feature is “patented” may be a claim that the product is different in nature, characteristics, or qualities from competing products because the manufacturer has an exclusive right in the advertised feature. Accordingly, the Court reversed and remanded for further proceedings.

Editor: Sean Murray