How should patent examiners handle trademarks or trade names in claims?

Patent examiners should carefully analyze claims containing trademarks or trade names. The MPEP 2173.05(u) provides the following guidance:

1. Determine if the trademark or trade name is used as a limitation to identify or describe a particular material or product.
2. If so, consider rejecting the claim under 35 U.S.C. 112(b) for indefiniteness.
3. If the trademark or trade name is not intended as a limitation, address why it’s in the claim and whether it causes confusion about the claim’s scope.
4. If the applicant replaces the trademark with a generic term, assess whether there’s sufficient support in the application for the generic term.

The MPEP states:

“If a trademark or trade name appears in a claim and is not intended as a limitation in the claim, the question of why it is in the claim should be addressed. If its presence in the claim causes confusion as to the scope of the claim, then the claim should be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”

This guidance helps examiners maintain claim clarity and ensure proper use of trademarks in patent applications.

To learn more:

• patent examination
• trademark analysis
• claim indefiniteness
• 35 U.S.C. 112(b)