Is this patent infringement? 3 Answers as of March 11, 2011I invented, patented and manufactured a product. My patent is assigned to the company I am building. I wholesaled a small quantity of my product to a retail store that has a popular online shop. This company is using my product photos with their logo (instead of my trademark) and also altering the name of the product, without license from my company. Is this patent infringement? If not infringement, surely this can't be legal can it? Any advice would be appreciated.
Mark S. Hubert PC | Mark Hubert
Look up "The doctrine of first sale". Basically once you sell it to them they can resell it to whoever. Your rights to sell under patent infringement are extinguished. The fact that they are using a different trademark and essentially rebranding your product is a different issue. How were you damaged? If you think that you lost a sale to whoever buys the goods from them you are wrong. The end user got you product and you were paid for it. Since they did not use your trademark they did not tarnish or dilute your goodwill and reputation. How exactly were you hurt? What exactly are your damages? If the consumer likes the product the way that your retailer brands them then they make more sales and you make more sales.
Answer Applies to: Oregon
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
Once a patented product is sold, it is subject to the first-sale or patent exhaustion doctrine. That means that the patent owner may not restrict the downstream use of the patented product. The patent owner can, of course, restrict such sales under license or sale contracts. Removal or changing of a trademark on a product, whether or not it is a registered trademark, is called "passing off" and it is illegal. In general, these type of cases are quite complex and factually dependent. You should consult an attorney to find out if you have a case against the retail store.
Answer Applies to: California
Malhotra Law Firm, PLLC | Deepak Malhotra
No, it isn't patent infringement. A patent prevents a competitor from making, using, or selling, without permission, a product that meets the limitations of any one of the claims in the patent document. You could speak with a trademark lawyer as to whether or not it is "passing off."
Answer Applies to: Washington