A patent attorney's pro se attempt to sue Brooks Brothers for falsely claiming it still holds patents on adjustable bow ties has been thrown out.
Raymond E. Stauffer, who owns 30 bow ties, took the unusual step of filing a qui tam action against the venerable clothier in the Southern District of New York, alleging what he said was the deceptive practice of marking its bow ties with patents that expired more than 50 years ago.
A qui tam action is typically one in which a private party alleges fraud on behalf of the government.
But Judge Sidney H. Stein said Stauffer's claim must be dismissed for lack of standing because he had made an insufficient showing that the U.S. government had been injured.
In Stauffer v. Brooks Brothers Inc., 08-cv-10369, Stauffer was seeking a $500 penalty for every one of the "Original Adjustolox Ties" sold by Brooks Brothers.
The company, which has manufactured and sold men's and women's clothing since 1818, offers more than 120 bow ties. They differ in design, fabric and style, but all of them are adjustable with the Adjustolox -- a sliding metal device that allows the wearer to loosen or tighten the tie so it fits comfortably.
Stauffer, a patent attorney with Carella, Byrne, Bain, Gilfillan, Cecchi, Stewart & Olstein in Roseland, N.J., was shopping at the Brooks Brothers store in the Short Hills Mall when he noticed the patent numbers on the ties. He conducted some research and found that one of the patents, which covered an "Adjustable Necktie," was granted in 1937 and expired in 1954. The second, covering a "Facing Band and Multiple Band Strip," was granted in 1938 and expired in 1955.
"It's on the back of the label -- you don't really know until you look them up," Stauffer said in an interview.
The claim was brought under 35 U.S.C. §292, which bars someone from marking an "unpatented article" for the purpose of deceiving the public. Section §292 allows that "any person" may sue for damages, and if they prevail, they receive half the damages, with the other half going to the United States.
Stauffer said in his complaint that the embroidered mark "has the potential to discourage or deter" potential competitors "from commercializing a competing bow tie."
Brooks Brothers and its parent corporation, Retail Brand Alliance Inc., argued that Stauffer lacked standing to bring the suit.
The company said §292 was not a qui tam provision because it only authorizes competitors to bring suit. In the alternative, the company said Stauffer had failed to allege injury in fact.
Judge Stein first ruled that §292 is, in fact, a qui tam provision, something he said "has been repeatedly referred to and treated as such by both the Supreme Court and the Second Circuit."
"Accordingly, while defendants are indisputably correct that the vast majority of §292 claims are brought by competitors rather than consumers, there is nothing in the text of the statute that compels such a result," he said.
While a plaintiff in a qui tam action is vindicating the interests of the United States and need show no injury to himself, Judge Stein said, the plaintiff must still show that the government itself "suffered an injury in fact causally connected to the defendant that is likely to be redressed by the court."
In most cases, he said, the injury to the United States is obvious, but it is less so in the case of false patent markings, where "the actionable injury in fact that the government is able to assign would have to be an injury to it or to the public stemming from fraudulent or deceptive false marking."
Here, Judge Stein found that Stauffer's "conclusory statements" on harm to the economy and the market in his 41-page complaint were "insufficient to establish anything more than the sort of 'conjectural or hypothetical' harm that the Supreme Court instructs is insufficient."
The complaint, he said, "fails to allege with any specificity an actual injury to any individual competitor, to the market for bow ties, or to any aspect of the United States economy."
Stauffer said he is considering his appellate options.
Brooks Brothers was represented by Neil Friedman of intellectual property boutique Baker & Rannells.
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