"A false marking claim requires an intent to deceive the public and sounds in fraud," pursuant to Juniper Networks Inc. v. Shipley, a 2011 decision of the Federal Circuit. The plaintiff, Romag Fasteners, sued the defendants, Fossil Inc. and Macy's Inc., alleging patent infringement, in violation of 35 U.S.C. §271, and trademark infringement and unfair competition, in violation of the Lanham Act, 15 U.S.C. §§1141 and 1125. The plaintiff moved to amend its complaint and to allege that the defendants' conduct indicated the "intent of counterfeiting or imitating the mark of the patentee." A motion to amend is futile if the amended complaint is unable to survive a motion to dismiss. The 2nd Circuit requires that the plaintiff's complaint allege sufficient underlying facts to permit a court to infer that a defendant acted with a requisite state of mind. The District Court found that the proposed amendment was futile, because the plaintiff's amended complaint does not include enough facts to establish the defendants' conduct or mental state. Claims that the defendants' sales of allegedly unauthorized goods are "likely to cause confusion, mistake and/or deceive the consuming public" were insufficient. "For a §292 claim to survive," wrote the court, the plaintiff "must state facts which allege that Defendants were the actual persons making the false marking." The plaintiff failed to allege that the defendants were the actual persons making the false marking or that the defendants acted with the necessary state of mind, i.e., the intent to counterfeit. The court denied the plaintiff's motion to amend.

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