This week we have a pair of IP cases about marking. First, a patent case, Lubby Holdings v Chung, where a vape device company should have marked its products with the patent number. Second, a trademark case, Piano Factory v Schiedmayer Celesta, in which a piano vendor marked its cheap pianos with a fancy name.

Patent Marking in Lubby Holdings v Chung

The Patent Act serves a mix of often conflicting public policies. Two of those public policies underlie the Patent Act’s marking duty. 35 U.S.C. § 287(a). The first public policy: copying is good because it helps lower prices for consumers. The second public policy: patent infringement is bad and should be avoided if possible. (Go to my bio page for a few articles about patent marking.) To reconcile these two competing policies, patentees are obligated to mark their products with their patent numbers. This also extends to licensees. The idea is that if someone wants to copy a patented product, they will see the patent number on it and therefore produce a product that does not infringe. This also spurs innovation — another public policy of the Patent Act.

In this case, the defendant infringed but the patent licensee did not mark. Damages were therefore limited per § 287(a).

Opinion link 19-2286.OPINION.9-1-2021_1827960.pdf (

False Trademarks in Piano Factory v Schiedmayer Celesta

This is a classic palming off case, performed on a fingerboard. Piano Factory was selling cheap pianos and added fancy name plates from a local trophy manufacturer. The name it used was from a 300 year old German maker of celestas — keyboard instruments which resemble small pianos and are played like pianos. The German celesta manufacturer didn’t sue, and instead successfully petitioned to cancel Piano Factory’s federal registration of their family name. We’ll discuss this approach, and why it might have been a mistake.

In the appeal, Piano Factory raised several issues. The most interesting issue is in Section II.D., starting at page, 22, concerning the rules of falsely suggesting a connection with another person or entity. Hardly a surprising outcome — the court was not persuaded that Schiedmayer is a common name. We’ll talk mostly about this issue. We won’t spend much time on the other issues, including a constitutional challenge based upon the Arthrex patent case, and laches.

Opinion link 20-1196.OPINION.9-1-2021_1827943.pdf (


We will discuss these decisions on September 13, 2021 during the regular meeting of SoCal IP Institute. Guest are welcome in person and via video conference beginning at 1:00 pm. Simply email elisham @ (remove the spaces which were added to to avoid spammers) to RSVP. This activity is approved for 1 hour of California MCLE credit.