How can patent applicants address trademark issues in their claims?

Patent applicants can address trademark issues in their claims by following these steps:

1. Review claims for any trademarks or trade names used as limitations.
2. Replace trademarks with appropriate generic terms that accurately describe the material or product.
3. Ensure there is sufficient support in the application for any generic terms used to replace trademarks.
4. If a trademark must be mentioned, clearly indicate it’s not a limitation (e.g., “Product X (sold under the trademark Y)”).

The MPEP 2173.05(u) provides an example:

“Eli Lilly & Co. v. Apotex, Inc., 837 Fed. Appx. 780, 784-85, 2020 USPQ2d 11531 (Fed. Cir. 2020) (‘Following Patent Office procedure, the Examiner in this case rejected the claims of the ‘821 application as indefinite because they improperly used the trade name ‘ALIMTA.’ In response to the rejection, Lilly canceled its claims reciting the trade name and pursued claims using the generic name for the same substance, which mooted the rejection.’)”

This example illustrates how applicants can successfully address trademark issues by replacing them with generic terms.

To learn more:

• patent application
• trademark issues
• claim amendments
• generic terms
• indefiniteness